Patent Claim & Continuation Rules Challenge Lives On: Federal Circuit issues opinion in Tafas v Doll
Mar 20, 2009
Many of you may recall that we previously alerted you to the USPTO’s publication of Final Rules relating to its Rules of Practice at the end of 2007 (the “Final Rules”). These rules relate to practically limiting the number of claims, continuations, and RCEs that could be filed in a patent application or a “family” of closely related applications. Additionally, the USPTO drafted the rules to apply to all pending and future applications, effectively making them retroactive.
Originally published on August 21, 2007, the Final Rules had an original effective date of November 1, 2007, but were suspended by a preliminary injunction granted at the eleventh hour by the U.S. District Court for the Eastern District of Virginia. The same court then ruled in favor of a permanent injunction on April 1, 2008 (Tafas v. Dudas), thus prohibiting the USPTO from implementing these rules. The USPTO subsequently appealed the decision to the Federal Circuit.
The Federal Circuit issued its opinion in the appeal this morning, leaving the Final Rules down, but not out. In brief, the Federal Circuit disagreed with the district court’s conclusion on the substantive nature of the rules, finding instead that the Final Rules are procedural. The court stated that the Final Rules do not, on their face, “foreclose effective opportunity” to present patent applications for examination and further noted that a “procedural rule does not become substantive simply because it requires the applicant to exert more effort to comply, so long as the effort required is not so great that it effectively forecloses the possibility of compliance.”
The Federal Circuit’s findings on the big three topics of the Final Rules are summarized below:
Final Rule 78 - Limits on Continuations
The Federal Circuit agreed that the USPTO could not implement the limitation on the filing of continuation applications.
The court found the rules relating to limitations on the filing of continuation applications to be procedural, but also in violation of the unambiguous language of Section 120 of the Patent Laws. Thus, judgment by the district court on these rules was affirmed.
Final Rule 114 - Limits on RCEs
Although still up in the air, the Federal Circuit’s ruling indicated that limiting the filing of RCEs is within the power of the USPTO.
The court found the rules relating to limitations on the filing of RCEs to be procedural for the same reasons as for Rule 78, but without the statutory violation (as RCEs are not implicated by Section 120). Thus, the judgment by the district court on these rules was vacated and remanded, with the court also stating that such limitations can be properly applied on a “per family” basis.
Final Rule 75 - Limitations on Claims (5/25) & Final Rule 265 - Examination Support Document (ESD)
As with Final Rule 114, the Federal Circuit’s ruling indicated that limitations on claims is within the power of the USPTO.
The court found that the rules relating to limitations on the number of claims that can be presented in an application absent an ESD (maximum of 5 independent claims and 25 total claims) to be procedural and does not amount to a hard limit on the number of claims that an applicant can present. Because the court found that claims in excess of 5/25 can be submitted, even if such submission requires significant additional work by the applicant in the form of an ESD, then the rules remain procedural and within the USPTO’s authority.
The status of these Final Rules does not end here, however. The Federal Circuit was careful to note that today’s opinion does not decide many issues that must now be addressed by the district court on remand, including whether any of the Final Rules are “arbitrary and capricious;” whether they conflict with the Patent Act in ways not addressed in the opinion; whether they violated proper rulemaking procedure; and whether they are impermissibly vague or retroactive.
We will of course continue to monitor the status of the Final Rules and provide you with updates as changes are made that may affect your pending or future applications. If you have any questions about how today’s decision, or any possible future changes to the status of these rules, may impact your patent rights, please call us for more information or to schedule an appointment.