Patent Law

On Tafas v. Dudas: selected excerpts

By Lawrence B. Ebert, Esq.

As the Court described in Part I of this Opinion, under
the existing patent system an applicant may file an unlimited
number of continuation or continuation-in-part applications,
RCEs, and claims. As to continuation and continuation-in-part
applications, Section 120 provides that such applications ?shall
have? the benefit of the priority date of the initial
application. 35 U.S.C. § 120. The CCPA has interpreted this
language to mean that ?there is no statutory basis for fixing an
arbitrary limit to the number of [continuing] applications? that
may be filed and that retain the benefit of the priority date.
In re Henriksen, 399 F.2d 253, 254 (C.C.P.A. 1968); see also In
re Hogan, 559 F.2d 595, 604 n.13 (C.C.P.A. 1977)(finding that ?a
limit upon continuing applications is a matter of policy for the
Congress?). Though Final Rule 78 does not completely prohibit
applicants from filing more than two continuation or
continuation-in-part applications, because the USPTO intends to
deny additional applications in almost all circumstances, see 72
Fed. Reg. at 46769-77, the ?could not have been submitted?
standard of the petition and showing requirement effectively
imposes a hard limit on additional applications.

Of limitation on RCEs:

Second, and most importantly, the words ?shall? and the
phrase ?at the request of the applicant? in Section 132(b) are
best read as evidence that Congress intended to allow for an
unlimited number of RCEs and intended to commit the invocation of
the continued examination process to the discretion of the
applicant, not the USPTO.

Of the ESD, the Tafas decision notes:

Thus, by requiring applicants like
GSK and Tafas to perform prior art searches and by shifting the
examination burden away from the USPTO, the ESD requirement
manifestly changes existing law and alters applicants? rights
under Sections 102, 103, and 131. Applicants must now undertake
new substantive responsibilities if they wish to file more than
five independent or twenty-five total claims, which represents a
significant departure from Section 112's rule of unlimited ?
though not unduly multiple ? claims. For these reasons, the
Court finds that Final Rules 75 and 265 are substantive rules.

See also Patent Arcade, linked through Wikio:

Today the U.S. District Court for the Eastern District of Virginia granted Tafas' and Smithkline Beecham's Motions for Summary Judgment, effectively holding that the USPTO's proposed 5/25 and 2+1 rules regarding claims and continuation practice are illegal, and therefore null and void.

BIO wrote:

Biotechnology Industry Organization (BIO) President and CEO Jim Greenwood issued the following statement regarding the order issued today by the U.S. District Court for the Eastern District of Virginia which permanently enjoins the U.S. Patent and Trademark Office (PTO) from putting its new claims and continuation rules into effect (SmithKline Beecham Corporation et al. v. Jon W. Dudas and the United States Patent and Trademark Office):

"Today's ruling enjoining the PTO from implementing its controversial rules on continuations and claims is a sound decision that reflects the concerns we expressed in our amicus brief. The rules enjoined today, if permitted to go into effect, would have inhibited the ability of biotechnology innovators to obtain adequate patent protection on their technologies, significantly decreasing their ability to attract the financing necessary to bring innovative, life-enhancing and life-saving products to market.

"Today's order underscores the need to develop a viable and workable solution to the legitimate workload challenge at the PTO. We stand ready to work with the PTO to develop an approach that fairly allocates responsibility for patent quality between patent applicants and patent examiners and enhances the strength and integrity of the American patent system, while not stifling innovation or placing a disproportionate burden on any one industry."

Full post as published by IPBiz on April 01, 2008 (boomark / email).