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.

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