CAFC: Tafas v. Doll decision out today

by Brian Fletcher on March 20, 2009

Summary:  Continuation limit contrary to patent act; all other rules, including RCE and ESD, are not –> based only on arguments presented (see below)


Final Rules are procedural rules that are within the scope of the USPTO’s rulemaking authority:


– 75  (limits an application to five independent claims or twenty-five claims total)


– 78  (restricts to two the number of continuation applications entitled to an earlier priority date, unless the applicant files a petition showing that the amendment, argument, or evidence could not have been submitted during the prosecution of the prior-filed application)


– 114  (imposing a limit of one request for continued examination (“RCE”) per application family)


– 265  (requirement to file an Examination Support Document (“ESD”))


“However, we find that Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid.  Accordingly, we affirm the district court’s grant of summary judgment that Final Rule 78 is invalid, vacate its grant of summary judgment with respect to Final Rules 75, 114, and 265, and remand for further proceedings consistent with this opinion.”


“Because of the complexity of this case and the numerous arguments presented on appeal and before the district court, we think it is important to expressly summarize what we believe remains for the district court on remand. This opinion does not decide any of the following issues: 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.”


Judge Bryson concurrence – opinion does not decide whether limit on serially-filed continuations would be consistent with patent act


Judge Rader dissents, would strike down all proposed rules as substantive limitations: “Final Rules drastically change the existing law and alter an inventor’s rights and obligations under the Patent Act”



Patent and Trademark Attorney March 20, 2009 at 3:42 pm

This is far from over. What a waste of government money fighting this and even making these rules. An applicant has 20 years from his filing date. If it takes longer due to continuations, he loses part of this term and he pays a fee for the continuations. Likewise, if an applicant has more than 25 claims (actually more than 20), he pays for each additional claim. The USPTO has structured it in such a way that their examiners don’t get more time to review the claims when there are more, but they charge the applicant for these claims. This is already an inequity and they are solving it by harming the applicant further rather than making USPTO procedures fair, e.g. get what you pay for.

Brian Fletcher March 24, 2009 at 5:27 pm

Great points, and we’ll see what the PTO does now in view of fewer filings due to the economy, KSR, etc. Thank you for contributing to our new blog. Please stay in touch.

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