Impact Looms Large in Federal Circuit Decision: USPTO and Patentees Still Locked in Showdown Following Tafas v. Doll


On March 20, 2009, the Federal Circuit issued its decision on the USPTO's attempted implementation of four new rules on continuation applications, number of claims, and requests for continued examination (“RCE”). In Tafas v. Doll,[1] the panel found that the new rules are procedural rules that are within the scope of the USPTO's rulemaking authority. The panel also affirmed the district court's decision that the rule on continuation applications (Final Rule 78) was invalid on the ground that it was inconsistent with 35 U.S.C. § 120, but vacated the district court's invalidation of the remaining rules, and remanded the case for further proceedings. The Federal Circuit did not address whether the new rules are on their face or as applied in specific circumstances arbitrary and capricious, impermissibly vague or retroactive, or in conflict with the Patent Act on grounds other than those addressed in the decision and whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553. The district court may address these issues on remand. On balance, the ruling potentially gives the USPTO the type of authority to make rules it has been seeking -- the agency arguing that it needs these changes to streamline its processes and reduce its backlog of applications.

Please see full update for more information.

LOADING PDF: If there are any problems, click here to download the file.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP | Attorney Advertising

Written by:


Morrison & Foerster LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.