In 2007, the United States Patent and Trademark Office (PTO) issued several new rules relating to patent applications that caused a strong uproar within the patent community. The four rules at issue relate to the filing of continuation applications (Final Rule 78), requests for continuing examination (Final Rule 114), the number of permissible claims (Final Rule 75), and examination support documents (Final Rule 265). The United States District Court for the Eastern District of Virginia (District Court) enjoined the PTO from enforcing these new rules on the grounds that the rules exceeded the scope of the PTO's rulemaking authority. The PTO appealed the ruling.
Today, the Court of Appeals for the Federal Circuit (Federal Circuit) issued its much anticipated opinion, holding that the proposed Final Rules are procedural not substantive rules and found that the PTO's interpretation of statutory provisions related to its exercise of delegated authority is entitled to deference. Even according such deference, the Federal Circuit invalidated Final Rule 78 as being inconsistent with 35 U.S.C. § 120 of the Patent Act. The Federal Circuit disagreed with the District Court's analysis of the consistency of Final Rules 114, 75, and 265 with the Patent Act but remanded the case for consideration of whether any of the Final Rules are arbitrary and capricious, conflict with the Patent Act in ways not addressed in the Federal Circuit decision, are subject to notice and comment, or are impermissibly vague or impermissibly retroactive.
The "bottom line" is that after two years of uncertainty, the fate of most of these rules is still undecided.
Diane Burke
Huntington Center
41 South High St., Suite 2200
Columbus, Ohio 43215
Phone (614) 221-5100
Fax (614) 221-0952
diane.burke@steptoe-johnson
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