Jump to Navigation


No Joke - District Court Voids USPTO's Rule Changes

Intellectual Property Update

April 2, 2008

Status Quo!  This was the outcome following yesterday's ruling by U.S. District Court in Tafas, Smith Beecham Corp. et al. v. Dudas, No. 07-cv-846 (E.D. Va Apr. 1, 2008). 

On August 21, 2007, the United States Patent and Trademark Office issued a final notice of its changes to the rules governing the number of continuation applications and the number of claims that a patent applicant may file. 

The "Continuation Rule" (72 Fed. Reg. 46837-38) would have restricted the number of continuation or continuation-in-part applications to two for each application.  If applicant wished to file an additional continuation or continuation-in-part application, the rule required proof that the new continuation application could not have been submitted before.

The "RCE Rule" (72 Fed. Reg. 46839-41) would have restricted the number of request for continued examinations (RCE) to be filed to one per patent family.

The "5/25 Rule" (72 Fed. Reg. 46836-37) would have restricted patent applicants to no more than 5 independent claims and no more that a total of 25 claims for each application filed.  If the applicant wished to file more claims, for each additional claim above the 5/25 limit, applicant had to submit a thorough prior art search and

35 U.S.C. § 2(b)(2) imparts the USPTO with rulemaking authority.  Such rules, however, must not be substantive in nature but instead must be in accordance with the law.
The Court noted that the USPTO could apply the doctrine of prosecution laches to combat unreasonable delay tactics by applicants.  Instead, the Continuation Rule would have reduced the previously unlimited number of continuation applications currently available to an applicant to two without showing cause as to why more were needed.  This, according to the Court, significantly alters applicant's existing rights under 35 U.S.C. § 120 and as such the Continuation Rule is a substantive rule.

As for the RCE Rule, the Court first noted the plain language of the rule that directed the USPTO to "provide for the continued examination of each application."  35 U.S.C. § 132 (a) (emphasis supplied).  Secondly, the Court noted that the language of Section 132 (b) ("shall" and "at the request of the applicant") is further evidence of legislative intent to permit unlimited RCE filings.  As such, the Court concluded that the RCE Rule is a substantive rule.

The Court noted that since 1938 appellate courts have held that it is the USPTO's burden to demonstrate unpatentability by performing the prior art searches and evaluating the application in the context of the uncovered prior art.  According to the Court, the 5/25 Rule is substantive because by requiring applicant to conduct a search of the prior art and to indicate precisely why the claims are novel over the prior art, the USPTO is "shifting the examination burden away from the USPTO and onto applicants." (Tafas at 23).

The plaintiffs raised grounds in their case against the USPTO's rule changes but the Court refused to address these "because the Court believes that one who judges least judges best, it will not reach the other issues raised by the parties, resting instead on the determination of a single dispositive issue." (Tafas at 11).