Tafas IV, coming this Fall to consider limits on contuations, etc.

On July 6, 2009, the Court of Appeals for the Federal Circuit (CAFC) vacated a panel’s March 20, 2009, decision upholding the part of a permanent injunction stopping the United States Patent and Trademark Office (PTO) from enforcing a regulation limiting the number of continuing applications per patent family but reversing the part of the injunction concerning regulations limiting the number of both Requests for Continued Examination (RCEs) per family and claims.  Tafas v. Doll, 559 F.3d 1343 (Fed. Cir. 2009) (“Tafas III”); Tafas v. Doll, No. 2008-1352 (Fed. Cir. Jul. 6, 2009).  The appeal will be heard en banc, and briefing should be completed around September 1, 2009.

Most of us recall that settled practice has been in limbo since January 2006, when the PTO initiated two related rulemaking proceedings proposing, among other things, to effectively limit the number of continuing applications, the number of RCEs, and the number of claims that may be filed without a showing of cause or additional requirements.  70 Fed. Reg. 48 (Jan. 3, 2006); 70 Fed. Reg. 61 (Jan. 3, 2006).  After comment periods, the PTO published new rules effective on November 1, 2007. 72 Fed. Reg. 46,716 (Aug. 21, 2007). These rules were challenged under the administrative procedures act.  On October 31, 2007, the eve of the effective date, the district court preliminarily enjoined enforcement of the Final Rules, Tafas v. Dudas, 511 F. Supp. 2d 652 (E.D. Va. 2007) (“Tafas I”), and, on April 1, 2008, it permanently enjoined enforcement after granting a motion for summary judgment that the Final Rules are invalid as impermissibly substantive. Tafas v. Dudas, 541 F. Supp. 2d 805, 814 (E.D. Va. 2008) (“Tafas II”).

The en banc rehearing will consider on the entire appeal, as opposed to a particular issue.  So, the decision will most certainly address the PTO’s argument that it has substantive rule making authority from 35 U.S.C. § 2(b)(2) and that each of the Final Rules are not substantive but procedural and entitled to Chevron deference.  The former argument was rejected by all panel members, while the latter argument was accepted by two judges for two of the three sets of rules, but failed to provide a bright-line test for determining whether or not a rule is substantive or procedural. 

Keep this decision on your radar.