Federal Circuit Issues Decision in Tafas v. Doll

    By Donald Zuhn --

In a 55-page opinion issued earlier today, the Federal Circuit determined that the four rules at issue in Tafas v. Dudas are procedural, but that Rule 78 is inconsistent with 35 U.S.C. § 120 (i.e., that portion of the rule which limits the number of continuation applications), and therefore, affirmed-in-part, vacated-in-part, and remanded.  Judge Prost authored the opinion for the panel, with Judge Bryson filing a concurring opinion and Judge Rader filing an opinion concurring in part and dissenting in part.  Judge Prost concluded that:

[T]he Final Rules 75, 78, 114, and 265 are procedural rules that are within the scope of the USPTO’s rulemaking authority.  However, we find that Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid.  Accordingly, we affirm the district court's grant of summary judgment that Final Rule 78 is invalid, vacate its grant of summary judgment with respect to Final Rules 75, 114, and 265, and remand for further proceedings consistent with this opinion.

Because of the complexity of this case and the numerous arguments presented on appeal and before the district court, we think it is important to expressly summarize what we believe remains for the district court on remand.  This opinion does not decide any of the following issues:  whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive.

Patent Docs will provide a more comprehensive analysis of the decision in a subsequent post.

Comments

[EG]

Don,

After reading Prost's and Bryson's opinions, may be I should believe now that the "moon is made of green cheese." Prost's and Bryson's opinions are astounding, disappointing and naive in the extreme. How in the world can they give "deference" to rules as "substantive" and as warped as these, including the incredible (and unlawful) gamesmanship by the USPTO that was exposed by David Boundy, Ron Katzelson, and others? Judge Rader is the only one on this panel that understands what is going on here with these God-forsaken Rules, and why they are beyond the authority of the PTO to enact.

We can only hope and pray that the Federal Circuit will take this panel decision up en banc and affirm what Judge Cacheris correctly found were "substantive" rules beyond the authority of the PTO to enact. Frankly, Prost's and Bryson's opinions have badly shaken my confidence in the Federal Circuit to put any proper restraints on the PTO's misapplication and misuse of its rule-making authority. We may be heading for the "Dark Ages" in patent prosecution in the PTO.

[Patent and Trademark Attorney]

This is far from over. What a waste of government money fighting this and even making these rules. An applicant has 20 years from his filing date. If it takes longer due to continuations, he loses part of this term and he pays a fee for the continuations. Likewise, if an applicant has more than 25 claims (actually more than 20), he pays for each additional claim. The USPTO has structured it in such a way that their examiners don't get more time to review the claims when there are more, but they charge the applicant for these claims. This is already an inequity and they are solving it by harming the applicant further rather than making USPTO procedures fair, e.g. get what you pay for.

[Donald Zuhn]

EG & P&TA:

While I have not had an opportunity to review the entire opinion yet, a few things may be worth noting:

First, the outcome could have been worse, as the CAFC could have reversed on the continuations limit. Out of all of the rules in the claims and continuations package, that one would have caused the most problems for patent practitioners and applicants (in fact, without a limit on continuations, applicants can file multiple applications to remain under a claims limit, or file a continuation instead of an RCE to steer clear of filing an ESD).

Second, Acting Director Doll made it clear at the deferred examination roundtable that application filings and revenue were significantly down as a result of the recession. Thus, it is possible that the Office may decline to pursue the matter further (whether at the district court level or by re-writing a rules package to avoid the issues raised in Judge Prost's opinion).

Third, the work of David Boundy, Richard Belzner, and Ron Katznelson (and others) may not have been for naught, as it's my understanding that the claims and continuations rules (or some revised version) would still have to overcome new challenges at OMB (particularly with respect to rules such as new Rule 1.78(f)).

Finally, with the change in administrations, we do not yet know where an Obama Administration would come down on this issue (it is important to note that while Obama advisor Arti Rai signed an amicus brief in support of the USPTO in Tafas, she has also stated that the claims and continuations rules may not the best way to tackle the backlog problem).

Don

[EG]

Don,

Thanks for your points. May be I'll wake up and the "nightmare" of this decision will go away. But I'm still concerned that Prost's and Bryson's naive and astounding logic could be used by the PTO to just as easily turn the ESDs into mandatory Applicant Quality Submissions (AQSs) (the "Documents of Doom") that would be required for all patent applications filed. What's in this decision to stop the PTO from doing that, and thus turning the PTO into "patent prosecution hell"? And having Doll, who championed this nonsense, as acting Director gives me very little comfort right now that the PTO would hesitate to create this "hell."

[anonymously yours]

Dole is a bozo not worthy of his position.

So, times are hard now, eh buddy? You want help fron US??!!

I say we petition congress for the removal of all these gd bums! I have nothing, NOTHING but contempt for them.