CAFC hands down its opinion in Tafas v. Doll rulemaking case

Tafas et al. v. Doll was handed down from the US Court of Appeals for the Federal Circuit (CAFC) yesterday (to read this file, you will need Adobe’s Acrobat Reader).

This case came about when the USPTO decided a couple of years ago that it wants the patent applicant to take on the burden of patent searching, and threw in some rules limiting the number of total claims, the number of independent claims, and the number of requests for continuing examination that the patentee could make. This was interpreted by the bar as being about the USPTO being understaffed and overworked and trying to dig out from under its enormous backlog of patent applications.

Dr. Tafas, along with GlaxoSmithKline, took exception to the new rules and sued the USPTO in an action that claimed that the new rules went way, way beyond the USPTO’s rulemaking authority as granted by Congress. The case was heard in the US District Court for the Eastern District of Virginia (EDVA), which agreed with Tafas and enjoined the USPTO from enforcing its new rules on October 31, 2007 — the day before the new rules were to go into effect. The district court agreed with Tafas et al. that the Final Rules were “substantive rules that change existing law and alter the rights of applicants such as Tafas et al. under the Patent Act” and issued a summary judgment in favor of Tafas et al. The USPTO appealed the summary judgment to the CAFC, which holds exclusive jurisdiction over patent cases among the circuit appellate courts. Lots and lots of interested parties filed amicus briefs arguing one side or the other of this issue that is being carefully watched by patent practitioners.

Today, the CAFC handed down its decision on the appeal. They affirmed the EDVA’s rejection of Final Rule 78, which deals with the number of continuation applications that an applicant can file based on one parent application, but they overturned the lower court on the other rules and remanded the case to the EDVA for further proceedings.

This case is not over, but a couple of questions that have affected patent practice for the last two years have been answered.

  • Patent applicants are still entitled to file the number of requests for continued examination, without limitation, that are needed to prosecute the patent application to issuance or final, dead rejection;
  • Patent applicants must show valid reason for having more than 25 claims in a patent application, and more than three independent claims based on the prior art;
  • Patent applicants must now provide a search of the patent and non-patent literature with each patent application; and
  • Patent applicants must provide a detailed write-up in the specification explaining why the applicant believes the invention is patentable in the light of the prior art.

The new rules, that will doubtless go into effect soon, will change patent practice, in some cases dramatically but in other cases not so dramatically. It will be interesting to see how the case itself plays out.

The search requirement is interesting, to say the least, especially since under the new rules the applicant is now required to provide the USPTO with a detailed reasoning as to how the invention is patentable over the prior art (that’ll be interesting…). Until now, the USPTO has been responsible for the searching of literature that pertains to a patent application. Now, however, the patent applicant is required to help the USPTO along by providing a search and an analysis of that search in the patent application.

This is not as much of a boon to the patent searching industry as it may appear at first glance to be; patent searching is something that most sensible patent applicants do anyway, since it makes absolutely no sense to submit a patent application only to have the examiner find a prior-art reference that stands squarely in the way of the applied-for patent. A search avoids that, and has been common practice before the new rule went into effect. The difference now is that we must tell our clients that searching is required before a patent application can be submitted under this Tafas case.

This places a burden of requirement on applicants where none existed before (although common sense dictates that a patent search be done).

I’m watching to see how the rest of this case plays out. Meanwhile, watch out, World; here come the new rules!