Rules Challenger Amends Complaint and Withdraws PI Motion

Tafas v. Dudas, No. 07-CV-846 (E.D. Va.) (filed Aug. 22, 2007)

    By Robert Dailey --

Triantafyllos Tafas has amended his complaint challenging the new USPTO rules set to take effect November 1, 2007.  In addition, Tafas has withdrawn his motion for a preliminary injunction (PI) enjoining the PTO from implementing the new rules.  His notice withdrawing the PI motion states that he is withdrawing the motion because it relied on his previous complaint.  But he has yet to file a new PI motion based on the newly filed amended complaint.

The amended complaint largely repeats the claims of the original complaint.  In the previous complaint, though, Tafas had been rather vague about the manner in which the new rules violate the Patent Act and the Administrative Procedure Act (APA).  The amended complaint fleshes out these statutory claims with greater specificity.  As discussed in a previous post, Tafas is most likely to prevail, if at all, on these statutory arguments.

Tafas has added one additional statutory argument based on the Regulatory Flexibility Act (RFA).  Under the RFA, when a federal agency issues new rules that could affect small entities, "the agency shall prepare and make available for public comment an initial regulatory flexibility analysis" in relation to the proposed rule.  See 5 U.S.C. § 603(a).  The agency must then prepare a final flexibility analysis when the final rules issue.  Id. at § 604.  The RFA permits the agency to avoid these requirements only "if the head of the agency certifies that the rule will not, if promulgated, have a significant economic impact on a substantial number of small entities."  Id. § 605(b).  In this instance, the PTO simply claimed the exception for itself without listening to the chorus of small entities decrying the innovation-squelching effects of the new rules.

Tafas appears to have a strong argument under the RFA.  This complements his solid arguments under the APA.  Of course, what Congress gives (via the APA or the RFA), it can take away through patent reform.

We will keep watching the progress of this case and provide periodic updates as they become available.

• Tafas' amended complaint can be viewed here.

• Tafas' withdrawal of motion for a preliminary injunction can be viewed here.

For additional information on this case, please see:

• "Inventor Sues PTO to Prevent New Continuation Rules from Taking Effect," August 30, 2007

Comments

[Anonymous]

Tafas' amended complaint is almost as bad a botch job as the original.

They got the address for service wrong.

The Regulatory Flexibility Act only applies to rules when "required by [5 U.S.C. § 553] or any other law to publish a general notice of proposed rulemaking." Voluntary notice and comment has apparently never been adjudicated, but probably does not suffice. Tafas' amended complaint fails to even plead this element of the RegFlex claim.

In some jurisdictions, mere certification that a rule would not, if promulgated, have a significant economic impact on a substantial number of small entities is sufficient to comply with RegFlex. The PTO did that.

If this is the best lawyering that can be brought to bear, we all better get used to these rules.

[patent leather]

Hey leave the good doctor and his attorneys alone. I don't see any of the big biotechs (with all their $$) taking any legal action. Someone had to do something.