Tafas v. Doll: No Change to Patent Practice...Yet
On March 20, 2009, the Federal Circuit issued a decision in the controversial Tafas v. Doll case concerning the United States Patent and Trademark Office’s (USPTO) proposed rule changes for patent prosecution. In its decision, the Federal Circuit struck down a proposed rule which would have limited the number of continuation applications an inventor can file. But with respect to three other rules at issue, the Federal Circuit remanded the case back to the District Court for the Eastern District of Virginia to decide whether those proposed rules may be implemented.
In January 2006, the USPTO began the process of revising its rules in an effort to streamline patent prosecution. Arguing that these proposed rules are outside of the scope of the USPTO’s rulemaking authority, an individual inventor named Triantafyllos Tafas and the pharmaceutical company GlaxoSmithKline sued to prevent implementation of the proposed rules. The District Court agreed with the Plaintiffs, issued an injunction prohibiting the USPTO from implementing the proposed rules, and granted summary judgment in favor of the Plaintiffs. The USPTO appealed the District Court’s summary judgment. The rules at issue are:
New Rule 78 (continuations): would require an applicant filing more than two continuations to file a special petition with a “showing to the satisfaction of the Director that the amendment, argument, or evidence could not have been submitted during the prosecution of the prior-filed application.” Absent such a showing, additional applications are precluded from receiving the priority date of the parent applications.
New Rule 114 (RCEs): would impose a limit of one Request for Continued Examination (RCE) per application family as a matter of right and requiring the same showing (of
Rule 78) for additional RCEs.
New Rule 75 (Claims) and New Rule 265 (Claims): would require an onerous examination support document (ESD) for any application that includes more than five independent
claims or more than twenty-five total claims. This ESD must include the results of an inventor based prior art search and a list of the most relevant prior art searches, as well as the identity of limitations disclosed by each
reference, an explanation of how each independent claim is patentable over the references, and, finally, a showing where each limitation is disclosed in the specification.
In its March 20, 2009 decision, the Federal Circuit affirmed the District Court’s summary judgment that Rule 78 was outside the USPTO’s rule making authority, stating that the rule conflicted with existing patent law. Thus, the longstanding practice involving continuation applications remains unchanged. With respect to the other three rules, the District Court’s judgment was vacated and remanded to the District Court for further consideration.
The effect the Federal Circuit’s decision will have on patent prosecution remains to be seen. First, it is possible that the entire Federal Circuit may review this decision en banc in the near future. Further appellate review by the Supreme Court is also possible in the near future. Second, when and if this case goes back to the District Court, the District Court has a number of issues to address, which may spur still additional appellate review down the road. If the courts ultimately find the remaining three rules valid, patent prosecution may significantly change. Alternatively, the Obama administration may propose additional rules of its own, or it may decide to amend the existing proposed rules—or withdraw them altogether. For the short term, however, it appears that patent prosecution will continue largely unchanged.