SKGF_Advisory_Federal Circuit Issues Decision in TAFAS v. Doll_2009
March 20, 2009
Federal Circuit Issues
Decision in TAFAS v. DOLL
The United Stated Court of Appeals for the Federal Circuit issued its opinion today in Tafas
v. Doll. This case was an appeal by the United States Patent and Trademark Ofﬁce of a
U.S. District Court decision which had invalidated and permanently enjoined USPTO rules
regarding claims, continuation applications, and Requests for Continuing Examination (RCEs)
on the grounds that the rules package was substantive and therefore outside of the USPTO’s
rulemaking authority. The Federal Circuit, instead, concluded that the rules package was
procedural and within the USPTO’s authority. Nonetheless, the Federal Circuit found that the
revisions to 37 C.F.R. § 1.78, limiting the number of continuation ﬁlings allowed as a matter
of right to two, was inconsistent with the statutory mandate of 35 U.S.C. §120, which states
that later ﬁled applications “shall have” the beneﬁt of the priority date of an earlier ﬁled
application provided certain conditions are met. However, with respect to the the rules
limiting the number of claims and the number of RCEs that can be ﬁled, the District Court’s
decision invalidating these rules was vacated and remanded for further consideration.
WHAT HAPPENS NOW?
While this might well spell trouble for patent prosecution in the future, nothing happens for
the time being. At the very least the USPTO would have to republish the rules package
in the Federal Register and set a new date for implementation. The rules, however, were
implemented in 2007 to reduce the enormous backlog of applications at the USPTO. In the
meantime, the current economic crisis has reduced the USPTO’s workload and fee income
to the extent that they have a hiring freeze in place. Reimplementing these rules might
only exacerbate the problem. So maybe the PTO will not reimplement them right now.
In addition, the validity of the rules on claims and RCEs was not afﬁ rmed by the Federal Circuit;
instead, the Federal Circuit vacated the District Court’s grant of Summary Judgment that these
rules were invalid, and remanded to the District Court for further proceedings. In doing so, Judge
Prost summarized additional issues for the court to consider, including whether the rules were
arbitrary and capricious, whether the rules conﬂ ict with the patent statutes in other ways not
considered by the Federal Circuit, and whether the rules were impermissibly vague or retroactive.
Finally, the opinion issued today was issued by a three-judge panel. Of the three, only two,
Judges Prost and Bryson, joined in the decision, and they disagreed on certain aspects
of the analysis. The third, Judge Rader, while agreeing that the revisions to rule 78 were
invalid, dissented to the rest of the decision, arguing that the rules were substantive, and
thus beyond the USPTO’s authority. The parties to the appeal now have the opportunity to
petition to have the case heard en banc, i.e., by the entire panel of Federal Circuit judges. If
such a petition were to be granted, today’s three judge panel decision might be overturned.
SUMMARY OF THE RULES TO BE RECONSIDERED ON REMAND
Limits to RCE Practice - The rulemaking as published in August of 2007 would have
amended 37 C.F.R. § 1,114 to limit the ﬁling of requests for continued prosecution (RCE),
as of right, to one per application family. For currently ﬁled applications, if an RCE had
already been ﬁled in the series, then that would have been the one RCE that would be
allowed under the new rules. Thus the rules were retroactive in that regard. Further RCEs
would have required a showing that the subsequent continuation application was being
ﬁled “to obtain consideration of an amendment, argument, or evidence that could not
have been submitted during the prosecution of the prior-ﬁled application.” Since this
rule was promulgated to work in concert with the now-invalid rules limiting continuations,
even if the USPTO attempts to reinstate the revised Rule 114, it would have to be amended
to comport with an applicant’s right to ﬁle an unlimited number of continuations.
Limits to the Number of Claims - The rulemaking as published in August of 2007 would
have limited the number of claims that could be pending in nonprovisional applications
to 5 total independent claims and 25 claims total. Filing of claims in excess of this
number would have required the applicant to ﬁle an “Examination Support Document”
documenting that a search had been completed and explaining how the claims were
patentable over the art. Importantly, this limitation in claim number would not only
apply to a single application. Under Rule 75, commonly-owned copending applications
containing claims found to be patentably indistinct by the USPTO would collectively only
be permitted to contain 5 independent and 25 total claims. Further, absent a showing
why two or more applications should exist, the rules would provide the USPTO with the
authority to require elimination of the indistinct claims from all but one application.
WHAT IS SKGF DOING?
In the coming days SKGF will be conducting a detailed analysis of today’s
decision, and will be providing you with additional advisories. We will also
monitor subsequent proceedings at the USPTO, the District Court, and the
Federal Circuit, and will provide updates should new developments occur.
MIND + MUSCLE
Sterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue, NW Washington, DC 20005 www.skgf.com