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March 25, 2009


"[T]he CAFC 'concluded that the Final Rules were all within the agency's rulemaking authority,'"

Umm, I think the CAFC did no such thing (and other sound heads at the PTO will abandon the rules and try again):

"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."

NIPRA Anonymous:

To the extent that the appeal concerned the validity of Rules 75, 78, 114, and 256 (which, in my opinion, constitute a significant portion of the claims and continuations rules package), the USPTO's statement is, unfortunately, not too far off base. Frankly, their language need only be modified to read:

The Court concluded that [[the]] Final Rules _75, 78, 114, and 256_ were all within the _scope of the_ agency’s rulemaking authority.

Judge Prost wrote:

[T]he Final Rules 75, 78, 114, and 265 are procedural rules that are within the scope of the USPTO’s rulemaking authority.



I think your edit changed the entire meaning of the phrase: the PTO could use your help. But I disagree.

Rule 78 relates to continuations, about which she (the court) held, "that Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid."

Putting two and two together, Judge Prost's (and your?) logical premises would lead to the untenable conclusion:

Procedural rules inconsistent with law are with the scope of the PTO's rulemaking authority.

Yes, procedural rules are within the PTO's scope of rulemaking authority: we knew that before the decision! That's 35 USC 2(b)(2)(A).

But rules "inconsistent with law" are not within the PTO's scope of rulemaking authority. That's 35 USC 2(b)(2), of which 35 USC 2(b)(2)(A) is a subsection; it therefore limits (and trumps) 35 USC 2(b)(2)(A).


I understand your point, but at the end of the day, don't you take the CAFC's opinion to mean that if Rule 78 had been drafted differently (so as to not explicitly conflict with the statute language) the rules would have been within the "procedural" purview of the Patent Office's rulemaking authority?

If you look at Don's earlier post summarizing the decision, he noted Bryson's rather unsettling concurrence regarding Rule 78.

[From Don's post] - Judge Bryson helpfully provides the USPTO with a roadmap for modifying Rule 78 to render it consistent with 35 U.S.C. § 120 -- at least as far as he is concerned. Stating that "the most difficult question in this case . . . is whether Final Rule 78 is a valid regulation in light of 35 U.S.C. § 120," Judge Bryson notes that while he agrees that the rule is invalid, he thinks "it is important to emphasize the narrow scope of the court's decision." Stating that "a rule limiting the number of continuances co-pending with the first-filed application is necessarily contrary to the statute and invalid," Judge Bryson argues that this "does not answer the question whether the rule is invalid as applied to serial continuances." While he acknowledges that "[f]or the last 40 years, . . . section 120 has been understood to confer upon patent applicants the right to file any number of successive continuation applications after the first application has been abandoned or issued as a patent," he contends that "[i]t would not be unreasonable, however, to construe the phrase 'an application similarly entitled' [in § 120] to mean an application that satisfies all the preceding requirements set forth in section 120, including the requirement of co-pendency with the initial application." Judge Bryson notes that while the majority properly struck down Rule 78, that does not mean "a revised rule that addressed only serial continuances and limited such continuances to only two -- the first co-pending with the original application and the second co-pending with the first -- would be struck down as reflecting an impermissible interpretation of section 120." Thus, in view of Judge Bryson's analysis, the USPTO could impose a two-continuation limitation -- or whatever limit the Office deemed necessary to resolve its backlog -- on any continuation that was not filed while the original application was still pending. In other words, for applicants wishing to file continuations serially, the 2+1 rule (two continuations + one RCE) would merely become the 3+1 rule. -- [end]

Certainly not "a warm fuzzie."


Yes, I agree with your premise: that's what the case apparently holds - and it's quite the opposite of a warm fuzzie. But when you examine the logic behind the premise (and behind the case), it doesn't add up: the logical reasoning is simply flawed at the most basic level, which doesn't reflect well on the court. I am not trying to minimize the trouble created by the clear dicta which, on its face, contradicts the Rule 78 holding.

I suspect (hope) that having gotten the court's blessing on such procedural rules, the PTO will abandon these rules and try again: there are people in the Office who realize the rules were poorly drafted and implemented. (Judge Prost apparently realized that too, as evidenced in her concluding roadmap.)

I applaud and heartily recommend the tenor and tone of the discussions above. If only others would aproach such issues with the same openess and collegiality.


The headline for post on the PTO web site about the Tafas v. Doll case was pretty disingenuous. And the PTO better be careful in crowing about this initial decision by the Federal Circuit. Does Doll and Company really want Cacheris to delve into the unsavory aspects of how these Rules were enacted as brought out in the Polestar Capitial amicus briefs?


The headline for the post on the PTO web site about the Tafas v. Doll case was somewhat disingenuous. And if I were the PTO, I wouldn't be crowing to much about this initial decision from the Federal Circuit. Do Doll and Company really want Cacheris to delve into the unsavory aspects of how this rules package was enacted, as brought out by the Polestar Capital amicus briefs?

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