Federal Circuit Strikes Down USPTO's Rule Placing Limits on Continuations, but Substantially Broadens the USPTO's Rulemaking Authority


A recent decision by a three judge panel of the Federal Circuit Court of Appeals, Tafas v. Doll, makes it more likely that the USPTO will enjoy expanded authority to implement new rules that restrict patent applicants' rights before the Patent Office as it struck down only one proposed new USPTO rule that placed a limit on how many continuation patent applications may be filed as a matter of right. The proposed new rules which the Federal Circuit declined to block are those which (1) limit the number of claims in a patent application to no more than 25 total claims, of which no more than 5 can be independent, unless the applicant conducts a preexamination search and provides the USPTO with an Examination Support Document (ESD), and (2) limit the number of RCEs that may be filed by an applicant as a matter of right.

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