In a ruling welcomed by many applicants and patent prosecutors, the U.S. District Court in Alexandria, Virginia has declared "null and void" a group of "Final Rules" proposed last year by the U.S. Patent and Trademark Office (USPTO). The rules would have restricted patent applicants ability to file continuing applications and imposed a burdensome requirement for explanation of prior art on many applicants. Granting motions for summary judgment by plaintiffs Glaxo SmithKline (GSK) and Triantafyllos Tafas, the April 1, 2008 order by Court held that the proposed rules were "not in accordance with law" and "in excess of statutory jurisdiction [and] authority." Triantafyllos Tafas v. Dudas; Smithkline Beecham Corp. v. Dudas, Case Nos. 1:07cv846; 1:07cv1008 (E.D.Va, April 1, 2008)(Cacheris, Dist. J.).
The Court explained that the rules "are substantive in nature and exceed the scope of the PTOs rulemaking authority under 35 U.S.C. 2(b)(2)." The Court cited Federal Circuit case law in concluding that the PTOs authority to engage in rule-making was limited to procedural matters, noting that since 2005, "Congress has debated and considered whether it should grant the USPTO substantive rulemaking authority but has declined to do so."
The "5/25" rule would have limited the number of claims that could be filed without a detailed discussion of prior art. In finding that rule substantive, the Court relied on the express language of Section 112 and case law precedent that an inventor "has the right to ... express the same invention in more than one claim." The Court concluded that the PTOs requirement for an Examination Support Document (ESD) in applications that exceeded the "5/25" rule would change existing law and alter the rights of applicants by shifting the examination burden away from the USPTO and to applicants. The Court pointed out that Federal Circuit case law imposes no duty on applicants to conduct a prior art search. Concluding that the proposed restriction on continuing applications was also substantive, the Court again concluded that imposing a limit on continuing applications is a matter of policy for Congress. With regard to the proposed limitation on a single Request for Continued Examination (RCE) in an application family, the Court found this rule contrary to the "plain language of the statute" as well as the USPTOs own statements when the RCE provisions were enacted in 2000.
Practice Note: The USPTO has 60 days to file an appeal of the decision, which would be headed to the Federal Circuit.
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