Patent Law Alert: Federal Circuit Grants En Banc hearing in Tafas v. Doll


7/9/2009
In the USPTO's attempts to issue new rules intended to streamline the filing and prosecution of U.S. patents presumably to reduce the backlog of patent applications at the Office, on July 6, 2009 the Court of Appeals for the Federal Circuit granted an en banc hearing in the case challenging the USPTO's authority to promulgate such rules. This decision to grant en banc hearing follows the prior decision of March 2009 which had multiple rulings:
  1. by a 2-1 decision (reversing the district court) that the USPTO rules relating to limiting patent claiming practices, namely that applications are limited to five independent claims and 25 total claims (or require a filing of an examination support document by applicants who wished to exceed those limits) and providing limitations on Requests for Continued Examination (RCEs), were procedural in nature and the USPTO had the authority to issue such rules;

  2. by a 3-0 decision, affirming the district court's ruling that the USPTO rules imposing limitations on continuation practice was substantive in nature and inconsistent with 35 U.S.C. §120.
In the meantime, the new USPTO remain on hold pending any en banc decision by the federal Circuit.

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