US Federal Court of Appeals Approves USPTO's Patent Rules

In a split decision in Tafas v Doll, the US Court of Appeals for the Federal Circuit has concluded that most of the rules issued in 2007 by the United States Patent and Trademark Office (USPTO) relating to the practice for patent applications (see E-TIPS® Vol 6, No 5, August 29, 2007 "USPTO Makes Changes to the Patent Application Rules") were made within the USPTO's rulemaking authority. The four rules at issue would limit the number of continuing applications and requests for continued examination (RCEs) an applicant has as of right for each application, and would require a pre-examination search of prior art for applications containing more than five independent claims or 25 claims in total. SmithKline Beecham Corporation initially challenged the rules before the Federal Court in the Eastern District of Virginia and obtained a preliminary injunction to enjoin the USPTO from implementing the rules (see E-TIPS® Vol 6, No 10, November 7, 2007 "USPTO Temporarily Blocked From Implementing New Patent Rules"), then succeeded in persuading the Court that the rules were invalid as being substantive and contrary to existing law. The USPTO appealed the ruling, arguing that the rules were procedural, and thus within its authority. The majority of the Court of Appeals sided with the USPTO. However, the rule that would disentitle the applicant from a priority date where more than the allowed two continuation applications were filed was found to be invalid. The remaining three rules were remanded to the District Court to determine a number of outstanding issues. For the decision of the US Court of Appeals in Tafas v Doll, visit: http://www.cafc.uscourts.gov/opinions/08-1352.pdf For a Legal Times article on the case, see: http://www.law.com/jsp/article.jsp?id=1202429261253 Summary by: Cheryl Cheung