The saga [1]of the PTO’s rulemaking authority continued on March 20, 2009 when the Federal Circuit issued its 55 page decision in Tafas v. Doll [2] holding that aside from the rule limiting continuations, the other rule changes were procedural in nature and the PTO does have the rule-making authority to implement the rules limiting the number of claims in each application, providing for Requests for Continued Examination (RCEs) and requiring Examination Support Documents (ESDs).
What happens next is unclear, but the impact of these changes to the rules could be staggering – especially to the life sciences community and its ability to obtain patents to protect innovation in a potentially new patent regime.
[3]American Conference Webinar Series is now set to present a webinar entitled “Tafas v. Doll – Dissecting the Decision and Preparing for Resurgence of USPTO Rules Limiting Patent Claims [4].”
This 90 minute webinar, presented Wednesday, May 20, 2009, at 1:00 p.m. to 2:30 p.m. Eastern, is set to provide an in-depth analysis of the recent decision, expert discussion of the next steps of the case, and what you can and should be doing now to prepare for these potential groundbreaking changes to patent protection.
Points of discussion will include:
- Background of the case and brief analysis of the proposed final rules: 78, 114, 75 & 265
- Analyzing the details, reasoning and nuances of the decision, including:
- Distinguishing between substantive versus procedural rules
- Explaining the conflict between Section 120 of the Patent Act and Final Rule 78 limiting continuations
- Contrasting the court’s reasoning for holding Rule 78 invalid while upholding the rules regarding claims, ESDs, and RCEs
- Examining the criteria discussed for the lower court to consider upon remand
- Evaluating possible statutory reasons for why Rule 75 could also be under attack
- What happens next and where do we go from here?
- Impact of the rules for patent claim drafting, filing applications, and potential litigation consequences
- Practical tips for practitioners on what you should be doing now with your patent applications and portfolio