U.S. District Court Declares USPTO's 'Final Rules on Claims & Continuations' to be 'Void'

Time to Read: 2 minutes Practices: Intellectual Property

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Today, the United States District Court for the Eastern District of Virginia rejected, at least temporarily, the United States Patent and Trademark Office’s (USPTO’s) attempt to change many of its longstanding rules governing the filing and prosecution of patent applications.

In Tafas v. Dudas et al. and Smithkline Beecham Corp. et al. v. Dudas et al., the court granted summary judgment, declaring the United States Patent and Trademark Office’s (USPTO’s) “Final Rules on Claims & Continuations” (“Final Rules”) to be substantive rather than procedural, and therefore beyond the rulemaking authority of the USPTO. Accordingly, the Court found the promulgation of the rules to be in violation of the Administrative Procedure Act and the rules themselves “void” under 5 U.S.C. § 706(2).

The proposed rules would have brought about several changes in the prosecution of patent applications, such as restricting the number of claims that may be filed in a patent application, limiting the number of continuing applications that may be filed from an original patent application, constraining how and when the priority of earlier applications can be claimed, and requiring applicants to identify the priority date for each claim in a continuation-in-part application, to identify to the USPTO all commonly assigned patents and applications that have at least one common inventor and that have a filing or priority date within two months of one another, and to conduct a patentability search and to demonstrate how the claims are patentable.

The Court’s written opinion sets forth the bases for its determination that the changes made in the Final Rules were substantive. The Court declined to address any of the other issues that the parties had raised.

The USPTO may appeal today’s decision or it may attempt to promulgate revised rules consistent with the Court’s decision. Alternatively, the USPTO may seek legislation to implement the changes that would have been made by the Final Rules or to authorize the USPTO to make such rule changes. Until the USPTO is successful in one of those venues, the application rules, as they existed before the Final Rules, remain in effect.

Today’s decision may also have an effect on the USPTO’s pending proposal to change the rules on the citation of prior art during examination of an application. That proposal (“the IDS Rules”) was believed ready to go into effect imminently, and would shift the burden to the applicant to demonstrate patentability if the applicant calls more than a specific number of prior art documents to the attention of the Examiner. The Court opined, however, that it was the USPTO that had the burden of initially demonstrating unpatentability.

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