I knew it was bad news when I saw that Judge Rader did not write the opinion, but rather concurred in part and dissented in part. But, as I predicted, the Federal Circuit issued its decision while I am in Chicago teaching the PLI Patent Bar Review Course and unable to devote real time to writing about the GlaxoSmithKline and Tafas challenge to the claims and continuations rules. Suffice it to say that I am surprised by the decision. It seems that the only thing that the Patent Office couldn’t do was limit the number of continuations that can be filed. They can, however, limit the number of claims to 5 independent claims and 25 total claims unless an Examination Support Document is filed. The Patent Office can also limit the number of Requests for Continued Examination (RCEs). In the long run, I am not sure what benefit the rules will be to the Patent Office without a limitation on continuations. It seems that what will happen is that there will be a move toward smaller, more focused patent applications. This will lead to many more applications, with the applications having fewer claims so as to not require an ESD. I am not sure that is what the Patent Office wanted. Additionally, many of the best arguments were simply not considered by the panel. So the district court will once again ahve to take up this matter and determin, for example, whether the rules are arbitrary and capricious and whether the retroactivity is impermissible. So the fight will seemingly continue, at least back to the district court or maybe even to a rehearing en banc or to the Supreme Court.
I will, of course, have much more to say about this case when I get some time to digest the opinion, but in the meantime, here is what the Federal Circuit, per judge Prost, concluded:
For the foregoing reasons, we conclude that the Final Rules 75, 78, 114, and 265 are procedural rules that are within the scope of the USPTO’s rulemaking authority. However, we find that Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid. Accordingly, we affirm the district court’s grant of summary judgment that Final Rule 78 is invalid, vacate its grant of summary judgment with respect to Final Rules 75, 114, and 265, and remand for further proceedings consistent with this opinion.
Because of the complexity of this case and the numerous arguments presented on appeal and before the district court, we think it is important to expressly summarize what we believe remains for the district court on remand. 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.
For the full text of the decisionis at:
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
B.S. in Electrical Engineering, Rutgers University
Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide