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Federal Circuit Renders Decision in Tafas Case
Michael I. Markowitz - 3/23/2009

The United States Court of Appeals for the Federal Circuit, on March 20, 2009, affirmed in part and vacated in part an April 1, 2008 decision of the United States District Court for the Eastern District of Virginia.  The district court decision granted summary judgment that Rule 78 limiting the number of continuation applications to be filed as a matter of right, Rule 114 limiting the number of requests for continued examinations to be filed as a matter of right, Rule 75 limiting the number of claims in an application without the applicant being required to submit an examination support document (ESD), and Rule 265 setting forth the requirements for the ESD were beyond the scope of the rulemaking authority of the United States Patent and Trademark Office (USPTO) and were thus invalid.  The Federal Circuit affirmed insofar as it found that Rule 78 is inconsistent with statute, 35 U.S.C. section 120, and therefore is invalid.  The court, however, vacated the district court's grant of summary judgment that Rules 75, 114, and 265 were beyond the scope of the USPTO's rulemaking authority and thus invalid.  Finally, the Federal Circuit remanded the case for further proceedings consistent with its opinion, indicating that its opinion did not "decide any of the following issues: whether any of the Final Rules, either on its face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. ยง553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive", (slip opinion, page 31, lines 8-14).

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