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.

Dr. Tafas had complained that the USPTO exceeded its Congressionally-delegated rulemaking authority and that the new rule changes specifically violate the Patent Act.  He was joined by SmithKline Beecham in claiming that the Final Rules, which change the patent system by modifying several long-established rules governing patent examination by the USPTO, are unlawful agency action under Section 706(2) of the Administrative Procedure Act (APA).

The District Court found that the Final Rules were substantive in nature and exceed the scope of the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2). Consequently, the Court granted summary judgment to GSK and Tafas and voided the Final Rules as otherwise not in accordance with law and in excess of statutory jurisdiction and authority.

As we’ve said before, like the villain in a B-movie horror flick, expect the Patent Office to keep coming back.  Now, the USPTO has filed it’s appeal brief with the US Court of Appeals for the Federal Circuit.  The Office has asked the Court to consider the following questions:

  1. Whether the USPTO’s revised rules of practice for patent cases are within the scope of the Office’s statutory rulemaking authority.
  2. Whether the revised rules conflict with the Patent Act.
  3. Whether the USPTO must provide public notice and comment for rules that are not subject to notice and comment under the Administrative Procedure Act.

Showing that the Patent Office sees applicants as the source of all their problems, they claim that:

[U]nlimited recourse to continuation applications and RCEs has led to misuse and abuse.  Some applicants “rely on an unlimited number of continued examination filings to correct deficiencies in the claims and disclosure” that could have been avoided by greater diligence and care in the preparation of the initial applications.

The Office’s arguments for authority come down to:

  1. The Final Rules are within the scope of the USPTO’s rulemaking authority under the Patent Act. The Act’s primary grant of rulemaking authority, Section 2(b)(2), authorizes the Office to issue rules that “govern the conduct of proceedings in the Office,” “facilitate and expedite the processing of patent applications,” and “govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office.”
  2. In the course of its ultra vires analysis, the district court held that the Final Rules are inconsistent with other provisions of the Patent Act.  That holding is likewise incorrect. The court mischaracterized the effects of the Final Rules, misconstrued the statutory provisions, misunderstood the judicial precedents concerning those provisions, and failed to give the USPTO’s construction of the provisions the deference required by Chevron.

Read the entire brief here (Dudas Appeal Brief)

More here:

No Joke, Court Smacks Down New Patent Rules
Patent Rule Injunction, Court To Sleep On It
Examination Support Document (ESD) Could Add $26,000 to Patent Costs
Is the Public Interest Really Upheld by the New USPTO Rules?
Court Blocks New USPTO Rules on Continuations and Claims — For Now
Patent Wars Episode II: GSK Strikes Back

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  2. “Some applicants “rely on an unlimited number of continued examination filings to correct deficiencies in the claims and disclosure” that could have been avoided by greater diligence and care in the preparation of the initial applications.”

    Yes the patent office expects applicants to be perfect and clairvoyant, while allowing itself to talk as long as it likes to do things and to rely on an unlimited number of prosecution reopenings to correct deficiencies that could have been avoided by greater diligence in the initial and subsequent searches and care in the preparation of office actions.

    Even the rules themselves have been slapped together without sufficient diligence and care. Take proposed rule 75 for example. Under that rule, an applicant can, and is expected to, avoid the preparation and filing of the onerous “Examination Support Document” by filing an application with 5 or fewer independent claims and fewer than 25 total claims. It also requires that if and ESD is filed, it may only be filed before the first office action.

    So, if an applicant files an application with 3 independent claims, 2 of which having 6 dependent claims and one of which having 5 dependent claims (3/20, well withing 5/25), and the examiner finds that the independent claims are just a tad too broad, but finds each of the dependent claims to be allowable if placed in independent form, rule 75 operates to prevent the applicant from canceling the rejected claims and accepting the allowed subject matter.

    Doing so would create an application with 17 independent claims, which violates 5/25.

    Did they mean to force applicants to forfeit allowed subject matter, or was it the result of over zealousness, thoughtlessness and carelessness?

  3. […] Office Appeal of Continuation Rules Is the USPTO Trying to Put Itself In A Better Light On Appeal? Tafas v. Dudas: The Continuation Wars Posted December 6th, 2008 by Stephen Albainy-Jenei in Patent Reform, Prosecution, USPTO | […]