Tafas v. Dudas: PTO’s Proposed Rules on Patent Continuations and Claims Are Struck Down

In a closely-watched decision that strikes at the heart of current efforts to “reform” current patent prosecution rules, the Federal District Court for the Eastern District of Virginia has ruled that the PTO’s proposed rules limiting the ability of patent applicants to file patent claims, RCEs (“Request for Continued Examination”) and continuations are invalid.  The gist of the court’s opinion was that since the PTO’s proposed rule changes were “substantive” in nature, the PTO as an administrative agency has no authority under its enabling statute to enact rules which are anything more than “procedural.”

The PTO’s proposed rules were prompted by the dramatic increase in patent filings over the last several years.  Had the PTO’s proposed rules become operative, the PTO’s workload would have arguably decreased because of the reduction of claims, continuations and RCEs that the PTO would need to review. (An obvious response to this view is that perhaps the PTO needs to be more fully funded by Congress…)

Numerous interested parties in the IP community – particularly companies engaged in drug and biotech patent activities – chafed at the proposed new rules, as the rules would have severely limited the ability of patentees to fully and accurately disclose new inventions. 

For better or for worse, the fight over the PTO’s proposed rules may not be over – the district court’s decision did not say that the proposed rules were invalid per se, but rather stated that the PTO as an administrative agency lacks the requisite authority to issue substantive rules such as those at issue.  It remains to be seen whether Congress will enter the fray on the specific issue of the proposed rules, particularly since patent reform legislation is now pending on Capitol Hill.

Readers can access the district court’s opinion at http://www.filewrapper.com/PDFs/20071031opiniongrantinginjunction.pdf. For those new to the world of patent prosecution, the beginning of the opinion provides a useful overview of the patent filing process.