By Marcia Coyle
The U.S. Court of Appeals for the Federal Circuit has agreed to rehear en banc the closely-watched Tafas v. Doll, a hard-fought battle over patent regulations that would restrict sharply the number of continuations, claims, and requests for continued examination that patent applicants may file.
In March, a three-judge panel largely reversed a district court decision setting aside the controversial regulations. The conflict stems from rules that the U.S. Patent and Trademark Office tried to implement in 2007. The rules would have limited patent applications to five unique claims and 25 total claims per invention. There has been no limit historically. The rules also would have restricted the number of requests to reconsider a decision to reject a patent application, as well as the number of continuations, or chances to amend a patent application already in process.
The patent community reacted strongly to the rules when they were approved. Some critics claimed the rules favored large, established companies with developed patent portfolios and harmed smaller companies. They also argued that the rules would greatly harm the biotech and pharmaceutical industries which need large numbers of patent claims and where long periods associated with drug discovery and clinical trials frequently require applicants to file a number of continuing applications to protect their innovations and evolving understanding of new compounds.
The USPTO countered that the rules would help to improve patent quality and, at the same time, help to reduce its enormous backlog of applications. The district court held that the four rules exceeded the agency’s rulemaking authority, which is procedural only and not substantive. Although the three-judge panel in March agreed that the USPTO only had procedural authority, it held that all four rules were procedural, but one of them, which limited continuations, conflicted with patent law and was invalid.
In its en banc order today, the Federal Circuit vacated the panel decision, set up a briefing schedule and said it would announce an oral argument at a later date.
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