The Federal Circuit will hear oral argument in Tafas v. Dudas on Friday, December 5. The case is extremely important for patent applicants.
In August 2007, the US Patent and Trademark Office issued final rules that would limit the number of continuation applications and the number of claims that patent applicants could file in their applications. The plaintiffs challenged the rules and Senior Judge James Cacheris granted summary judgment in their favor in April 2008. Judge Cacheris ruled that the PTO did not have the authority to pass these rules because they were substantive in nature as they affected the existing rights of patent owners and patent applicants. The PTO appealed this decision.
As for how the Federal Circuit will rule in this case, I would hope that the court will affirm Judge Cacheris. It is, however, difficult to tell what they might do. Surely, the court will recognize the importance of the case given that numerous amici have filed briefs, mostly in support of the plaintiffs, but a couple also support the PTO’s position. It is unlikely that any Federal Circuit opinion would be issued before about February, but given the importance of the case, it could be sooner (or later).
If these rules are allowed to take affect, they will require serious changes to current patent application and prosecution practices. The rules could also have serious consequences for patent applications that have been previously filed, and even for patents that have already issued.
Stay tuned . . .
UPDATE: The panel for the argument this morning includes Judges Rader, Bryson, and Prost. More later . . .
January 7, 2009 at 2:19 pm |
[...] critcized as being responsible for many of the PTO woes that have been detailed in this blog: here, here, and [...]