Continuation rules appeal decided; continuation limit invalid; RCE limit and ESD requirements valid

March 20, 2009
Post by Blog Staff

This morning the Federal Circuit released its opinion in Tafas v. Doll (formerly Tafas v. Dudas), the case addressing the validity of the USPTO's claim and continuation rules. The court holds all of the rules at issue are procedural rather than substantive, reversing the district court on this issue. In spite of this conclusion, the court holds the limit on continuation applications conflicts with 35 U.S.C. § 120, and is therefore invalid. The remaining rules, however, do not conflict with the patent statutes (or at least they do not conflict for the reasons provided by the district court).

The Federal Circuit provided a summary of its disposition and the issues to be addressed on remand:

For the foregoing reasons, we conclude that the Final Rules 75, 78, 114, and 265 are procedural rules that are within the scope of the USPTO’s rulemaking authority. However, we find that Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid. Accordingly, we affirm the district court’s grant of summary judgment that Final Rule 78 is invalid, vacate its grant of summary judgment with respect to Final Rules 75, 114, and 265, and remand for further proceedings consistent with this opinion.

Because of the complexity of this case and the numerous arguments presented on appeal and before the district court, we think it is important to expressly summarize what we believe remains for the district court on remand. This opinion does not decide any of the following issues: whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive.

To read the full decision, click here. Judge Prost wrote the majority opinion; Judge Bryson wrote a concurrence, and Judge Rader dissented.

Update (3/24): The USPTO has released a brief statement on the issue (emphasis added):

On March 20, 2009, the Federal Circuit issued a decision addressing (i) whether the Claims and Continuation Final Rules fall within the scope of the USPTO’s rulemaking authority and (ii) whether the Final Rules are contrary to the Patent Act. The Court concluded that the Final Rules were all within the agency’s rulemaking authority. The Court also concluded that Final Rule 114 (requests for continued examination), Final Rule 75 (claims), and Final Rule 265 (examination support documents) are consistent with the Patent Act, but that Final Rule 78 (continuations) violates the Patent Act. The Court remanded several issues to the district court. The litigation remains pending. The Final Rules will not be implemented at this time.

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