Dr. Triantafyllos Tafas, represented by Kelley, Frye and Warren LLP filed a declaratory judgment action in the Eastern District of Virginia, arguing that the new continuation rules are null and void, and is also seeking a preliminary and permanent injunction prohibiting the USPTO from putting the new rules changes into effect.

Dr. Tafas is an inventor on more than seventeen (17) patents pending and on eight (8) U.S. issued patents. He is also Chief Technology Officer (CTO) and co-founder at Ikonisys.

The complaint alleges that the USPTO exceeded its Congressionally-delegated rulemaking authority and that the new rule changes specifically violate Section 120, 132, and 365 of the Patent Act. It is further asserted that USPTO failed to comply with the Administrative Procedure Act in promulgating the new rule changes. The suit also alleges that the USPTO has engaged in retroactive rulemaking and has failed to consider USPTO-induced reasons for multiple continuation filings.

From the complaint, Dr. Tafas seeks:

(1) to prevent Defendants from implementing Sections 1.75 and 1.78 of certain new federal regulations published by the USPTO at 72 Fed. Reg. No. 161 on August 21, 2007 (with an effective date of November 1, 2007) entitled “Changes to Practice for Continuing Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications; Final Rule” (to be codified at 37 CFR Part 1 and sometimes collectively referred to herein as the “Revised Rules”);

(2) to have the Revised Rules declared null, void and without legal effect as being beyond the rule making power of the USPTO and inconsistent with various federal statutes and Article I, Section 8, Cl. 8 and the Fifth Amendment to the United States Constitution; and

(3) for the issuance of a Writ of Mandamus requiring Defendants to comply with the requirements of the Administrative Procedure Act, 5 U.S.C. §§1 et seq. (the “APA”) in promulgating any further rules in the future concerning the subject matter of the Revised Rules.

Dr. Tafas is looking for a preliminary injunction preventing the Revised Rules from taking effect because they substantially change the regulatory landscape under which inventors, like Dr. Tafas, have traditionally operated and, once effective, will frustrate the purposes of the U.S. Patent laws by preventing Dr. Tafas and other similarly situated inventors from realizing the full economic potential of their work.

Dr. Tafas believes that the Revised Rules should be preliminarily and permanently enjoined and declared null and void because, among other things, they violate: (1) Sections 2, 120, 131, 132 and 365 of the Patent Act (35 U.S.C. §§ 1 et seq.) by exceeding the rule making authority delegated to the Defendants by Congress; (2) Sections 553(c) and 706(2) of the APA (5 U.S.C. §§ 553(c) and 706(2)) by, among other things, purporting to enact rules with retroactive effect; failing to consider all the relevant matter presented as required by 5 U.S.C. § 553(c); and, by promulgating rules that are arbitrary, capricious, an abuse of discretion, otherwise not in accordance with law, contrary to Plaintiffs constitutional rights and in excess of the USPTO’s statutory jurisdiction and authority; and (3) Article I, Section 8, Cl. 8 and the Takings Clause of the Fifth Amendment of the United States Constitution.

Read a copy of the complaint here (link)

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12 Comments

  1. [...] Patent Baristas: Inventor Challenges Patent Office Rules in Virginia [...]

  2. [...] I can’t help but wonder how long it will take for this legislation to become a part of the arguments advanced in the pending lawsuit challenging the propriety of the USPTO’s new continuation rules.  For example, if the “clarification” requires an additional procedural hurdle, does the USPTO have the authority without this Act?  Also, if the Act fails to pass the Senate, does that failure indicate Congress’ unwillingness to affirm this power of the USPTO?  Also, what later versions of this provision may alter the scope or interpretation of Congress’ intent with respect to this specific regulatory authority?  We’ll keep you up to date on the Patent Reform Act, what effect if any it has on this lawsuit, and other developments that look interesting or noteworthy. [...]

  3. [...] Tafas v. Dudas case to enjoin enactment of the USPTO’s new rules, “Changes to Practice for Continued [...]

  4. [...] Claims Limit Rule, the Proposed IDS Rule, and the Final Continuations and Claims Limits Rule.  See Tafas v. Dudas case to enjoin enactment of the USPTO’s new [...]

  5. [...] the Final Continuations and Claims Limits Rule, more evidence seems to keep coming to light.  See Tafas v. Dudas case to enjoin enactment of the USPTO’s new [...]

  6. [...] Dr. Triantafyllos Tafas’ lawsuit, arguing that the proposed U.S. Patent Office continuation rules are void for exceeding its authority, won a permanent injunction prohibiting the USPTO from putting the new rules changes into effect (Final Rules; 72 Federal Register 161 at 46716).  Triantyfyllos Tafas v. John Dudas and the United States Patent and Trademark Office. [...]

  7. [...] Earlier, Dr. Triantafyllos Tafas’ lawsuit, arguing that the proposed U.S. Patent Office continuation rules are void for exceeding its authority, won a permanent injunction prohibiting the USPTO from putting the new rules changes into effect (Final Rules; 72 Federal Register 161 at 46716).  Triantyfyllos Tafas v. John Dudas and the United States Patent and Trademark Office. [...]

  8. [...] in the Claims and Continuations Final Rule were permanently enjoined by the district court in Tafas v. Dudas. That decision is currently on appeal to the U.S. Court of Appeals for the Federal Circuit.  The [...]

  9. [...] As an example of what to expect, Gene calls for the USPTO to withdraw its appeal of the permanent injunction enacted by a district court prohibiting the USPTO from putting the new rule changes into effect (Tafas v. Dudas). [...]

  10. [...] Earlier, Dr. Triantafyllos Tafas’ lawsuit, arguing that the proposed U.S. Patent Office continuation rules are void for exceeding its authority, won a permanent injunction prohibiting the USPTO from putting the new rules changes into effect (Final Rules; 72 Federal Register 161 at 46716).  Tafas v. Dudas and the United States Patent and Trademark Office. [...]

  11. [...] Well, oral arguments were held yesterday at the U.S. Court of Appeals for the Federal Circuit to hear the matter of the Tafas v. Dudas (US Patent Office), an appeal of the claims and continuations rules promulgated by the USPTO which were preliminarily enjoined and ultimately permanently enjoined by the District Court effect (Final Rules; 72 Federal Register 161 at 46716).  See Tafas v. Dudas and the United States Patent and Trademark Office. [...]

  12. [...] the original case, the district court first determined that that the USPTO did not have substantive rule-making [...]