Patent Law

Dudas/USPTO smoked in Tafas case on continuation application rules

By Lawrence B. Ebert, Esq.

GSK, Tafas, and the USPTO make numerous arguments for
summary judgment in their favor. After thorough examination of
the parties? briefs, the arguments of roughly two dozen amici
curiae, and the extensive administrative record, the Court finds
that the Final Rules are substantive in nature and exceed the
scope of the USPTO?s rulemaking authority under 35 U.S.C. §
2(b)(2). Consequently, the Court will grant summary judgment to
GSK and Tafas and void the Final Rules as ?otherwise not in
accordance with law? and ?in excess of statutory jurisdiction
[and] authority.? 5 U.S.C. § 706(2).

The BLT blog wrote:

If you see patent lawyers dancing in the streets today, resist the urge to hit the emergency speed dial on your Blackberry. They?re not crazy, just excitable.

A federal judge on the U.S. District Court for the Eastern District of Virginia [Cacheris] today {April 1] struck down a set of controversial rules the U.S. Patent and Trade Office implemented late last year to reduce its backlog.

IPBiz notes the many unfavorable comments made about the rules, and the predictions of many (including LBE) that the
rules would NOT withstand judicial scrutiny. They didn't.

For example:

One may question whether a limitation on the number of continuing applications
an applicant may file, even in the context of a required evidentiary showing, is
within the power of the USPTO in view of the wording of 35 USC 120.
Although I won't pursue that, I suspect there could be a legal challenge to the
proposal of January 2006.

See also

Further comments on Feb. 8 arguments in Tafas v. Dudas

The 26 page memorandum opinion concluded:

For the reasons stated above, the Court will grant
GSK?s and Tafas?s Motions for Summary Judgment, deny the USPTO?s
Motion for Summary Judgment, and deny as moot the USPTO?s Motion
to Strike.
An appropriate Order will issue.

The Fire of Genius blog (Professor Joseph Scott Miller of Lewis & Clark) had written of arguments against the USPTO rules on continuing applications:

(2) The regulatory / Patent Office power arguments aren?t as silly, but they?re close. In my view, here?s what anyone who wants to knock out the new regulations on the ground that they?re beyond the Patent Office?s longstanding, sweeping power to ?establish regulations, not inconsistent with law, which shall govern the conduct of proceedings in the Office,? 35 U.S.C. section 2(b)(2)(A), needs to be able to explain: As a matter of regulatory power, how are the continuation rules any different from, e.g., the rule that the application be presented in English (37 C.F.R. section 1.52(b)(1)(ii))? Or, for that matter, that it be presented on a particular type of paper (37 C.F.R. section 1.52(a)(1))? And it?s not enough to shout, as the complainers typically do, that section 120 provides for continuation applications. A continuation application filed in Finnish, or in white print on black paper, won?t be accepted. Why should the third, or fourth, or fifth continuation application be accepted, without any explanation from the applicant about why the claim amendments and/or supporting arguments couldn?t have been presented earlier? How are the new rules different, given that ? like the rule requiring an English-language disclosure ? these rules are reasonably (if not perfectly) designed to help the Patent Office do its job of evaluating whether a given claim passes muster under the Act (including the written description requirement of section 112!)? Unless someone has a cogent answer to this question (and I haven?t heard one yet), the Patent Office rules strike me as an eminently reasonable, lawful exercise of the Office?s regulatory power to create an effective examination process at the Office.

[IPBiz notes: one does hope that the April 1 memo is not an April Fool's joke!]

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