Case:
Tafas v. Doll, No. 2008-1352 (Fed. Cir. Mar. 20, 2009).
Ruling:
The USPTO’s Final Rules 75, 78, 114, and 265 are procedural rules that are within the scope of the USPTO’s rulemaking authority. Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid.
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.
Short Explanation of New Rules (note: quotation from the decision):
Final Rule 78 governs the availability of continuation and continuation-in-part applications. Under the rule, an applicant is entitled to file two continuation applications as a matter of right. 37 C.F.R. § 1.78(d)(1)(i). If an applicant wishes to pursue more than two continuation applications, he must file a petition “showing that the amendment, argument, or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application.” Id. § 1.78(d)(1)(vi).
Final Rule 114 provides for similar treatment of RCEs. Under the rule, an applicant is allowed one RCE as a matter of right. Id. § 1.114(f). For each additional RCE, the applicant must file a petition “showing that the amendment, argument, or evidence sought to be entered could not have been submitted prior to the close of prosecution in the application.” Id. § 1.114(g).
Final Rule 75 requires an applicant who submits either more than five independent claims or twenty-five total claims to provide the examiner with information in an examination support document (“ESD”). 37 C.F.R. § 1.75(b)(1).
The requirements for ESDs are set forth in Final Rule 265. To comply with Final Rule 265, an applicant must conduct a preexamination prior art search, provide a list of the most relevant references, identify which limitations are disclosed by each reference, explain how each independent claim is patentable over the references, and show where in the specification each limitation is disclosed in accordance with 35 U.S.C. § 112, 1.
Subscribe to:
Post Comments (Atom)
This is far from over. What a waste of government money fighting this and even making these rules. An applicant has 20 years from his filing date. If it takes longer due to continuations, he loses part of this term and he pays a fee for the continuations. Likewise, if an applicant has more than 25 claims (actually more than 20), he pays for each additional claim. The USPTO has structured it in such a way that their examiners don't get more time to review the claims when there are more, but they charge the applicant for these claims. This is already an inequity and they are solving it by harming the applicant further rather than making USPTO procedures fair, e.g. get what you pay for.
ReplyDelete