Federal Circuit resolves challenges to USPTO patent prosecution rules

On 20th March 2009 the Federal Circuit released its hotly anticipated decision in Tafas v Doll (formerly Tafas v Dudas), in which patent applicants and numerous amici challenged new rules promulgated by the US Patent and Trademark Office (PTO) for patent prosecution. In April 2008 the district court granted summary judgment for the challengers and enjoined implementation of the rules, holding that the USPTO had exceeded its authority in adopting them. At issue were: 

  • Rule 78, which denied third (or subsequent) continuations the priority date of the parent unless the applicant showed why the amendment, argument or evidence sought to be presented could not have been submitted earlier; 
  • Rule 114, which limited applicants to one request for continued examination per family unless the applicant showed that the amendment, argument or evidence at issue could not have been submitted before the close of the prosecution in the previous application; and 
  • Rules 75 and 265, which required applicants presenting more than five independent claims or 25 claims in total to conduct a pre-examination search and submit an examination support document stating how the claims were patentable over the most relevant prior art.

The issue on appeal was whether the rules were procedural or substantive, with the USPTO generally permitted to promulgate rules governing the procedure for the submission and examination of patent applications, but not authorised by Congress to adopt rules in the area of substantive patent law.

In a two-to-one decision the Federal Circuit held that Rules 75, 114, and 265 were within the USPTO’s procedural rule-making authority and reversed the district court’s grant of summary judgment with respect to them. The court also found that Rule 78 was procedural in nature, but struck it down because its attempt to limit applicants’ rights to claim priority for certain continuations was inconsistent with the statute (35 USC § 120).

The panel’s decision is not necessarily the end of the matter at the Federal Circuit. In addition to the two parties challenging the rules, no fewer than 12 professional organisations, corporations and academics participated in the appeal as amicus curie, indicating the high level of interest that the USPTO’s rules and the challenges to them have received among the patent community. As the decision was favourable to the challengers in part and favourable to the USPTO in part, both sides could ask the full court to re-hear the appeal en banc. Further review could also be sought at the Supreme Court.

The Federal Circuit’s decision also does not mean the end of the challenge at district court level. The Federal Circuit remanded the case for further proceedings at the district court, including possible consideration of whether the rules were otherwise in conflict with the patent statutes and the USPTO’s compliance with the notice and comment requirements of the Administrative Procedure Act in its promulgation of the rules.

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