USPTO Enjoined from Implementing Proposed Rules on Claims, Continuing and Related Applications, and Final Action Practice

In Tafas v. Dudas (April 1, 2008), the United States Patent and Trademark Office was permanently enjoined from from enacting its proposed “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications,” 72 Fed. Reg. 46,716-843 (Aug. 21, 2007; the “Final Rules”). According to Judge Cacheris,

GSK, Tafas, and the USPTO make numerous arguments for summary judgment in their favor. After thorough examination of the parties’ briefs, the arguments of roughly two dozen amici curiae, and the extensive administrative record, the Court finds that the Final Rules are substantive in nature and exceed the scope of the USPTO’s rulemaking authority under 35 U.S.C. §2(b)(2). Consequently, the Court will grant summary judgment to GSK and Tafas and void the Final Rules as “otherwise not inaccordance with law” and “in excess of statutory jurisdiction[and] authority.” 5 U.S.C. § 706(2). In addition, because the Court believes that one who judges least judges best, it will notreach the other issues raised by the parties, resting instead onthe determination of a single dispositive issue.

. . . Despite the USPTO’s arguments, the Court finds that the Final Rules are neither procedural rules nor rules relating to application processing that have substantive collateral consequences, but substantiver ules that change existing law and alter the rights of applicants such as GSK and Tafas under the Patent Act. The 2+1 Rule and the5/25 Rule, which limit continuing applications, RCEs, and claims, and the ESD requirement, which shifts the examination burden onto applicants, constitute a drastic departure from the terms of the Patent Act as they are presently understood. By so departing, the Final Rules effect changes in GSK’s and Tafas’s existing rights and obligations. The Court will now explain why the provisions of the Patent Act compel this conclusion.

. . . Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because [all of] the Final Rules are substantive in
nature, the Court finds that the Final Rules are void as “otherwise not
in accordance with law” and “in excess of statutory jurisdiction [and]
authority.” 5 U.S.C. § 706(2).