Patent Law

Jay Sandvos of Bromberg & Sunstein LLP provides the following March 20, 2009 Intellectual Property Update:

A panel of the United States Court of Appeals for the Federal Circuit today issued a major decision, Tafas v. Doll, which addresses whether the United States Patent and Trademark Office (PTO) may implement new rules that erect significant new obstacles for patent applicants.

The Federal Circuit affirmed a lower court?s ruling that the PTO lacked authority to impose limits on the number of continuation applications an applicant may file.  However, the court allowed the PTO to limit the uses of Requests for Continued Examination (RCEs). An RCE is a procedural device that allows further prosecution of a patent application.

The Federal Circuit also held that the PTO can impose cumbersome procedures when a patent application exceeds a threshold number of claims.

But this decision does not settle the matter, as it may yet be reviewed by either the entire Federal Circuit or by the Supreme Court.  Even those rules which the PTO has been authorized to adopt are subject to further consideration by the original lower court, and to further review by the Federal Circuit.

Moreover, since the change of administration in Washington, DC, it is unclear how much appetite the PTO retains for continuing to fight for these controversial rules. As a result, the ultimate fate of these rules remains uncertain.

We expect to expand upon out analysis of this decision in a future IP Update.