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April 2, 2008

District Court Enjoins New Patent Rules in Light of Interpretation of PTO Rulemaking Authority

The Eastern District of Virginia has issued a summary judgment ruling permanently enjoining the US Patent Office from putting its proposed new limitations on the number of claims, requests for continued examinations, and continuations in effect.  Dennis Crouch has posted the opinion in Tafas v. Dudas, here.

In the patent world, the PTO's proposed new rules -- which would have limited applicants in various ways that had not been done before -- had caused a firestorm of criticism.  I won't bore you with those details, but the statutory interpretation issues in the case are more broadly interesting, I would think.

The first issue.  The first issue the court faced was whether 35 USC 2(b)(2) vested the PTO with substantive rulemaking power.  That statute empowers the PTO to "establish regulations, not inconsistent with law" to "govern the conduct of proceedings in the office."  The court followed Federal Circuit case law and held that this granted only procedural, not substantive, rulemaking power, and, more interestingly, held that despite the fact that the PTO was required to follow 5 USC 553's notice and comment provision -- which applies only to substantive rulemaking did not mean the power was substantive; rather, it required the PTO to publish for notice and comment its procedural rule changes and enactments.  The court, finally, found support for its reading of this section in the fact that Congress has debated giving the PTO substantive rulemaking power.

Once the court reached that conclusion, the rest was fairly easy, I think, and noncontroversial:  because the PTO lacked substantive rulemaking power, it could not make substantive declarations about the scope of the Patent Act, only procedural ones.  Thus, if the proposed rules were substantive, they were invalid.

The court then analyzed each of the changes and found they clearly fell on the "substantive" side of this dichotomy.  Now, each of these is very patent-specific, and though interesting to me, I doubt of much import to most of you. Read the opinion, above, if you're a patent jock. 

Dennis Crouch reports rumors that the PTO is planning to appeal, so stay tuned.

April 2, 2008 in Current Affairs | Permalink


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