Patent Law

No ruling in Tafas v. Dudas on Feb. 8

By Lawrence B. Ebert, Esq.

According to John White, Judge Cacheris said that "there is a lot of paper to consider" and that he would render his decision as soon as possible, schedule permitting.

(...)

Bob Spar was also in the courtroom along side John White and Bob agrees with John that the main issue seems to be whether the PTO has substantive rulemaking authority. Bob said that GSK argued that if the court finds the rules to be substantive then they are void and no deference should be given to the Office. GSK did apparently acknowledge, however, that Chevron deference would be appropriate if the rules are procedural.

IPBiz notes that in Chevron v. NRDC, 467 US 837, the issue was: what standard of review should be applied by a court to a government agency's own reading of a statute that gives that agency its authority to act.

As one would learn from Cass Sunstein at the University of Chicago School of Law (or from Wikipedia), the Chevron case gave rise to the "Chevron two-step":

(1) Whether the statute is ambiguous or there is a gap that Congress intended the agency to fill. If the intent of Congress is clear, that is the end of the matter.

(2) If the statute is ambiguous, whether the agency's interpretation of a statute is reasonable or permissible. If an agency's interpretation is reasonable, then the court will defer to the agency's reading of the statute.

One certainly can believe that Congress, in 35 USC 120, expressed no limitation on the number of continuing applications. There being no limit expressed, one also can easily believe that there is no gap that Congress intended the USPTO to fill. That would be the end of the case (at the first Chevron step), and the USPTO loses.

The issue of substantive rulemaking authority has come up in ADA/ADEA cases. It's simply unclear how one can assert a grant of substantive rulemaking for the USPTO.

See also: http://ipbiz.blogspot.com/2008/02/feb-8-oral-arguments-in-tafas-v-dudas.html

Also:
administrative law outline

Full post as published by IPBiz on February 08, 2008 (boomark / email).