Steve Kunin from Oblon, Spivak Comments on Tafas rehearing

July 7, 2009 – Firm News

"Thank you for permitting me to provide comments on the decision by the Federal Circuit to grant rehearing en banc in Tafas v. Doll. I am encouraged by the decision by the Federal Circuit. It represents an opportunity for judges who share Judge Rader's views that the PTO rulemaking in toto was prohibitively substantive and in many respects in contravention of statutory and judge made law to weigh-in in on this critically important determination of the scope and extent of permissible PTO rulemaking authority. Particularly, there is a significant split among the judges as to what constitutes substantive rulemaking and whether the PTO's attempt to limit continuations, RCE and claims falls outside the scope of its authority. While the rules in many respects appear to be procedural in nature their affect on the rights of applicants and patentees is far from de minimus."

Kunin, a partner at Oblon, Spivak, is the former Deputy Commissioner for Patent Examination Policy with the U.S. Patent and Trademark Office.