Today the U.S. District Court for the Eastern District of Virginia made permanent its injunction against the USPTO’s rule changes that sought to limit patent claims and continuations.
The court found that the rules exceeded the USPTO’s rulemaking authority because they were substantive rules, rather than merely procedural rules. Finding that the USPTO has no subtantive rulemaking authority, the court’s opinion then explained that the rules are substantive because, among other things:
the limits on continuations change existing law (i.e., Section 120 of the Patent Act says that certain applications shall have priority benefit — and there is no numeric limit in the statute)
the requirement that certain applicants submit examination support documents (ESDs) shifts the examination burden to applicants.
The court’s finding about examination support documents raises an interesting question: can the USPTO make its proposed information disclosure statement rules final, since those also contain requirements similar to the ESD requirements?
NOTE: In March 2009, the U.S. Court of Appeals for the Federal Circuit reversed the district court decision and remanded certain portions of the rules to the district court for further consideration. Details are available here.