Decision Reached in Case that Challenged Patent Rulemaking Authority by USPTO

0 Comments Written by on March 25, 2009 | Posted in IP Licensing Litigation, Patent Cases of Interest

The Federal Circuit has reached a decision in Tafas v. Doll, which is a case that challenged the rulemaking authority of the USPTO. As I explained at the California Biotech Law Blog, the particular patent rules at issue are Rules 75, 78, 114, and 265, which are as follows:

Final Rule 78: This rule provided that an applicant is entitled to file two continuation applications, but to file any additional applications, the applicant is required to make a showing as to why the amendment, argument, or evidence could not have been submitted in a prior continuation application.

Final Rule 114: This rule provided than an applicant is entitled to file on request for continued examination per application family, but to file any additional requests, the applicant is required to make a showing as to why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application.

Final Rule 75: This rule provided an applicant who submits either more than five independent claims or twenty-five total claims must provide the examiner with an examination support document.

Final Rule 265: This rule set forth the requirements for the examination support document, which were as follows: (i) conducting a preexamination prior art search, (ii) providing a list of the most relevant references, (iii) identifying which limitations are disclosed by each reference, (iv) explaining how each independent claim is patentable over the references, and (v) showing where in the specification each limitation is disclosed.

The Federal Circuit found that the USPTO’s exercise of rulemaking authority in adopting these rules was within its scope of authority. However, the Court found that one of the rules, Rule 78, conflicts with 35 U.S.C. Section 120, and is therefore invalid. A determination on the validity of the other rules was left to the lower court, to which the case has been remanded.

As a patent licensing attorney who does not prosecute patents, I must admit that my reaction to this decision has been a bit muted in comparison to the reactions of some of my patent prosecutor colleagues in the blogosphere. However, what should be interesting in this case to anyone who deals with patents at all is that the Court upheld the ability of the USPTO to place some fairly notable limits on patent prosecution in the name of making the USPTO more efficient. If the USPTO has the legal right to curtail patent prosecution rights in this manner, where does the USPTO’s delegated authority stop? Obviously, we do not currently have an answer to that question.

For additional analysis of this case, please check out my full blogposting at the California Biotech Law Blog: Federal Circuit Rules on Case Involving New USPTO Patent Rules.

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