District Court Voids USPTO’s Final Rules  

April 01, 2008

On April 1, 2008, the court granted plaintiffs’ Motions For Summary Judgment in a lawsuit against the U.S. Patent and Trademark Office (USPTO), thereby preventing the USPTO from enacting the “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications” (the “Final Rules”). Judge James C. Cacheris of the United States District Court for the Eastern District of Virginia found that the “2+1 Rule,” which limits the number of continuation applications and requests for continued examination, and the “5/25 Rule,” which permits an applicant to present no more than five independent claims and twenty-five total claims for examination without providing an examination support document (“ESD”), exceed the scope of the USPTO’s rulemaking authority under 35 U.S.C. Section 2(b)(2). The court held that Section 2(b)(2) permits the PTO to promulgate procedural rules but not substantive rules. The court then reasoned that the “2+1 Rule” and the “5/25 Rule” are substantive rules and, therefore, the Final Rules are substantive in nature. Consequently, the court held that the Final Rules are void. 

The case is Tafas v. Dudas, et al. consolidated with Smithkline Beecham Corporation, et al. v. Dudas, et al., case numbers 1:07cv846 (JCC) and 1:07cv1008 (JCC), respectively, in the United States District Court for the Eastern District of Virginia.

View PDF version of this OnPoint.

Subscribe to Dechert Updates