Patent Law Alert: Court Voids the New USPTO Rules Package About Continuations and Claiming
4/2/2008

On April 1, 2008, the U.S. District Court for the Eastern District of Virginia granted summary judgment against the U.S. Patent and Trademark Office (the "USPTO"), ruling that the proposed USPTO rules package was void and not in accordance with law because the rules were substantive in nature and exceeded the agency's rulemaking authority. Among other aspects, the rules had attempted to (1) limit the number of claims allowed per patent application and (2) limit the number of continuation applications that an applicant could file per invention. In its ruling, the Court stated:

Thus, by requiring applicants . . . to perform prior art searches and by shifting the examination burden away from the USPTO, the ESD [examination support document including a patent search and patentability analysis] requirement manifestly changes existing law and alters applicants' rights under Sections 102, 103, and 131 [of the Patent Act]. Applicants must now undertake new substantive responsibilities if they wish to file more than five independent or twenty-five total claims, which represents a significant departure from Section 112's rule of unlimited — though not unduly multiple — claims. For these reasons, the Court finds that Final Rules 75 and 265 are substantive rules.

Because the USPTO's rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as "otherwise not in accordance with law" and "in excess of statutory jurisdiction [and] authority." 5 U.S.C. § 706(2).

Tafas v. Dudas, No. 1:07-cv-00846-JCC-TRJ, slip op at 25 (E.D. Va. Apr. 1, 2008).

The USPTO had attempted to institute these new rules to reduce the backlog of pending patent applications by lessening the USPTO's prosecution burden and improving prosecution speed of patent applications. The rules attempted to shift some of the prosecution burden to patent applicants and also attempted to limit the number of patent claims and continuation applications that an applicant could file.

The Court has thus maintained the status quo for patent prosecution procedures. Although, for all intents and purposes, a permanent injunction will be issued enjoining the USPTO from enacting this rules package, the USPTO will likely make further attempts to adjust patent rules through its own rulemaking authority or via Congress. Indeed, there is already patent reform legislation before Congress. And the USPTO could appeal the decision. Therefore patent applicants would be wise to plan for future rule changes that could affect ongoing patent prosecution strategies.

If you have questions regarding the foregoing or any other aspect of the Court's decision, please contact one of the Stoel Rives patent attorneys.

John A. Rafter, Jr.
jarafter@stoel.com
(503) 224-3380

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