Tafas v. Doll Opinion Issued

March 20, 2009 – Firm News


The Federal Circuit on March 20, 2009 issued its opinion regarding the “New Rules” promulgated in August, 2007 when it decided the United States Patent and Trademark Office’s appeal of the District Court’s decision in Tafas v. Doll. The decision did not address all of the new rules, but specifically discussed only four of them, Rule 75, 78, 114, and 265. The court agreed with the district court that Rule 78 impermissibly attempted to restrict applicants’ right to file continuation applications under 35 USC § 120. Thus, Rule 78 was held to be invalid. On the other hand, Final Rule 114, which restricts the number of RCE’s which may be filed to two, was held to be proper and within the scope of the Patent Office’s authority. Similarly, the court determined that Final Rules 75 and 265 were properly promulgated and that the Patent Office can require the applicant to file an Examination Support Document (ESD), as the Federal Circuit had already upheld the Patent Office’s authority to require “such information as may be reasonably necessary to properly examine or treat the matter.” 37 CFR §1.105.

Final Rule 78
With respect to the limitation on the number of continuation applications which can be filed, the court determined that the Final Rule 78 violates the statutory provisions of 35 USC § 120, which, the court views as providing for unlimited continuations. However, the Federal Circuit reminded the USPTO of its ability to reject continuation applications for delay in prosecution – prosecution laches – citing Symbol Technologies Inc. v. Lemelson Medical, 277 F.3d 1362 (Fed. Cir. 2002). This is an open invitation to the Patent Office to resurrect its old practice dating back to the 1950’s and earlier of rejecting applications based on prosecution laches.

Perhaps of most interest was Judge Bryson’s concurring opinion since he raised the possibility of revisiting the decision of the Court of Customs and Patent Appeals In re Hendrickson, 154 USPQ 53 (1966), which reversed a USPTO decision holding that the 35 USC § 120 required that the continuation application and the original application be co-pending which would limit an applicant to two continuations. Judge Bryson was of the opinion that the statutory language is ambiguous and that the Patent Office decision in Ex Parte Hendrickson may in fact have been correct.

Final Rule 114
Final Rule 114 simply places a limit on the number of RCE’s which can be filed. The Federal Circuit determined that 35 USC § 132 did not require that its provisions regarding the continuation of prosecution be applied on a per application basis. The court then deferred to the USPTO’s interpretation of the statute and concluded that the Final Rule 114 can be applied on a per family basis. The impact of the RCE provision is of course ameliorated by the finding that Final Rule 78 was improper since an applicant can still file a standard continuation, albeit more expensive than an RCE.

Final Rule 75 and 265

The court first noted that these rules do not place a limit on the number of claims which may be filed. Instead, the court noted that these rules provided for an Examination Support Document (ESD) which requires an applicant having 25 or more claims or five or more independent claims in a single application or two or more “related” applications to conduct a broad search to provide detailed reasons why each independent claim is patentable. Tafas and GSK argued that these rules were improper since the Federal Circuit had, in inequitable conduct cases, held that there was no obligation on the part of an applicant to conduct the prior art search. Tafas and GSK argued that this meant that the Patent Office was precluded from mediating a prior art search. In response, the Federal Circuit stated:

We agree with the USPTO that these cases do not speak as to whether the USPTO may impose such a duty by regulation. Indeed, this court has already upheld the USPTO’s authority to require from applicants ‘such information as may be reasonably necessary to properly examine or treat the matter.’ 37 CFR § 1.105.

The Federal Circuit then went on to hold:

On this record, we see no persuasive reason to prohibit the USPTO from requesting the information required by Final Rule 265, even if the applicant must take action to acquire that information.

Thus, the Federal Circuit has determined that the USPTO can require on the Examination Support Document under the circumstances detailed in the rules.

The Remand

The Federal Circuit did not, however, give the USPTO the authority to immediately institute the rules. Instead, the Final Rules were remanded to the district court to determine:

Whether any of the Final Rules, either on their face or as applied in new 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 rule making is subject to notice and comment rule making under 5 USC § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive.

Until these matters are resolved, the rules will remain on hold.

The Future

Tafas and GSK may request a re-hearing or re-hearing en banc which would delay the remand to the district court by several months and, if a re-hearing en banc is granted, by a significant period of time, perhaps as much as a year. It is only after these proceedings are concluded that the remand to the Eastern District of Virginia would occur. During this entire period, the rules remain on hold. There remains the possibility of a petition for certiorari to the Supreme Court given the strong dissent by Judge Rader over whether or not these rules are procedural or substantive. Finally, after the Eastern District of Virginia has made its determination on the remand, further appeals could occur. What is clear is that a substantial period of time will pass before the Patent Office is in a position to decide whether it can to put the Final Rules into effect or not.

One other fact to which is unknown is what action the new Director of the Patent Office will take once he is appointed. A new Director could determine that the Final Rules should be withdrawn and that the process should begin again. Should this occur, then that would moot any further court actions with respect to these Final Rules. The Obama administration has not made public as to who it intends to nominate to be the new Director.


This firm recommends that its clients take no action at this time as it will be a significant period of time before the Final Rules are imposed, if ever. Oblon, Spivak will in fact be monitoring the developments both in the courts and in the Patent Office and will provide updates as events unfold.