Federal Circuit Reverses Course On 2007 Patent Rules

On March 20, 2009, the United States Court of Appeals for the Federal Circuit, in Tafas v. Doll, affirmed in part, vacated in part and remanded a 2008 Eastern District of Virginia ruling that invalidated the United States Patent and Trademark Office's (USPTO) 2007 patent rules on limiting the number of continuation applications, claims and requests for continued examination. Preliminarily, the Federal Circuit found the 2007 patent rules to be procedural rather than substantive, and, thus, the USPTO had the ability to issue the rules. Thereafter, the Federal Circuit addressed each of the proposed 2007 patent rules, affirming the finding that the rule relating to the number of continuation applications is invalid, but vacating and remanding the findings as to the rules relating to the number of claims and the number of requests for continued examination. Importantly, in affirming the invalidity of the rule limiting the number of continuation applications, the Federal