Federal Circuit largely backs USPTO limits on patent claims and RCEs; strikes down limits on continuations

On Friday, the Federal Circuit issued an opinion that may disappoint those who opposed the USPTO’s proposed limits on claims and continuations in U.S. patent applications.  In Tafas v. Doll, the Court overturned a 2008 ruling that held that the rules were substantive and thus not within the USPTO’s procedural rulemaking authority. 

[UPDATE:  On October 8, 2009, the USPTO announced that it was rescinding the proposed rules.]

The USPTO originally proposed the rules in 2007, and a summary of the proposal is available in a previous post on this site.   In a 2008 opinion, the Eastern District of Virginia enjoined the rules on the basis that they were substantive, and not merely procedural, because they altered rights given to applicants under the Patent Act. 

On appeal, the Federal Circuit disagreed.  Finding that the proposed rules do not “foreclose effective opportunity” to obtain a patent, the Federal Circuit stated that:

We do not believe that requiring applicants to raise all then-available amendments, arguments and evidence by the second continuation application or the first RCE is so significant a burden that applicants will be effectively foreclosed from obtaining the patent rights to which they are entitled.

The Federal Circuit also found that the proposed limit of 5 independent / 25 total claims does not foreclose all rights, even though it may impose a significant burden on patent applicants.

Despite the reversal, the Federal Circuit’s decision maintains a ban on the USPTO’s proposed limit on continuation applications.  Holding that an arbitrary limit on continuations is inconsistent with Section 120 of the Patent Act, the court found that the USPTO had no authority to issue such a rule.  

The proposed rules also sought to limit the number of claims in patent applications by requiring applicants to submit a detailed Examination Support Document for application families containing more than 5 independent/25 total claims, and they sought to limit requests for continued examination (RCEs) by requiring applicants to submit all available evidence and arguments with the first RCE.   The court remanded these portions of the proposed rules to the district court for determination of whether the sections were arbitrary and capricious or otherwise invalid.  However, the Federal Circuit’s opinion includes a long discussion of each of those sections, and it sends a strong signal that the Federal Circuit — at least for now — considers those sections to be consistent with the Patent Act.

The Federal Circuit’s opinion gives the USPTO a major boost if the new USPTO administration decides to move forward with any portion of the proposed rules.  Whether a new adminstration actually intends to do so remains to be seen, although Patently-O reports that the USPTO has issued a statement indicating that it is “pleased” with the Federal Circuit’s decision.


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