Sunday, March 22, 2009

Tafas v Doll (formerly Tafas v Dudas)

In 2006, the USPTO attempted to implement rules that would limit the number of continuing applications, requests for continued examinations and claims an applicant could file as of right. Further these new rules had proposed that for applications with more than 25 claims or more than 5 independent claims, an applicant would have to provide an Examination Support Document. These rules were to go into effect in 2007. However, shortly before they were to be implemented, a temporary restraining order and preliminary injunction were granted on October 31, 2007 by Judge Cacheris of the E.D. Va. (Tafas v Dudas, 511 F. Supp. 2d 652, 2007 WL 3196683, E.D. Va., October 31, 2007). GSK and Tafas subsequently moved for summary judgment. On April 1, 2008, the motion for summary judgment was granted (Tafas v Dudas, 541 F.Supp.2d 805, 86 U.S.P.Q.2d 1623 (E.D. Va., April 1, 2008). The court held that the USPTO’s proposed limitations to the number of RCEs, continuation applications and claims per patent to be improper extensions of USPTO’s authority since these rules were substantive not procedural. The decision was appealed to the CAFC. On Friday, March 20, 2009, a panel from the CAFC (Judges Prost, Bryson and Rader) affirmed in part and vacated in part the lower court decision. The court held that the rule limiting the number of continuations that could be filed (Rule 78) conflicts with 35 USC 120 and is thus invalid. However, the Court found that the other provisions of the proposed rules were procedural, not substantive and within the scope of the USPTO's rulemaking authority. The case has been remanded back to the District Court to address the following issues as summarized by Judge Prost at the end of the decision: " whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive". This case continues.