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Federal Circuit upholds US patent rules changing application process

By Bernard Hibbitts (editor) and University of Pittsburgh School of Law students.

[JURIST] The US Court of Appeals for the Federal Circuit on Friday upheld as procedural three rules promulgated by the US Patent and Trademark Office (USPTO) that significantly alter the patent application process, overturning a fourth rule. The four rules, which would have retroactively limited the number of claims that can be included in a patent application and the number of times a continuation application can be filed for a given invention, were struck down by the US District Court for Eastern District of Virginia in April on the grounds that they altered the substantive rights of the intellectual property applicants set forth under the US Patent Act. The circuit court relied on the framework set forth by the US Supreme Court in Chevron USA v. Natural Resources Defense Council to establish that deference is extended to the USPTO in its interpretation of the Patent Act for the purposes of determining procedural standards. The court then upheld Rules 17, 114, and 265, classifying the rules as procedural:While we do not purport to set forth a definitive rule for distinguishing between substance and procedure in this case, we conclude that the Final Rules challenged in this case are procedural. In essence, they govern the timing of and materials that must be submitted with patent applications. The Final Rules may "alter the manner in which the parties present ... their viewpoints" to the USPTO, but they do not, on their face, "foreclose effective opportunity" to present patent applications for examination.The three affirmed rules were remanded in order to determine whether they are impermissibly vague. Rule 78, which the court ruled was also procedural, was struck down because it was found to be contrary to section 120 of the Patent Act. The district court preliminarily enjoined the rules in October 2007, finding that the rules were substantive, rather than procedural, and thus beyond the scope of the USPTO's authority to promulgate. Since the preliminary injunction was issued, USPTO employees have continued to process and examine patent applications under the old rules and procedures. The lawsuit challenging the new rules was brought by pharmaceutical company GlaxoSmithKline, which has approximately 100 applications pending at the USPTO. Supporting the company was the American Intellectual Property Law Association (AIPLA).

Full post as published by JURIST - The Paper Chase on March 23, 2009 (boomark / email).