The dust has settled a bit on the Federal Circuit’s terrible decision in Tafas v. Doll. As some others have noted, this decision came as quite a shock to the patent community because the PTO took a thrashing at oral argument.
As previously reported, the good news is that the PTO cannot yet implement any of these rules because the district court’s injunction remains in place, the Federal Circuit finally struck down the limitation on the number of continuations that may be filed, and the case has been remanded for the district court to consider a host of other arguments raised by the plaintiffs to challenge the rules.
The effect of upholding the claim limitation and RCE limitation rules is somewhat muted by the fact that applicants can still file an unlimited number of continuing applications to add additional claims of varying scope, at least for now. Judge Bryson’s concurrence seems to be an advisory opinion to the PTO to instruct them on how to craft a rule against serial continuations that will not conflict with the statute. And while RCEs are often a better choice for applicants, filing a new continuation is a second best alternative.
But, the implications of the court’s opinion go further. Even though the court stated that the PTO does not have substantive rule-making authority, it significantly broadened the type of rules that are considered procedural. If these rules are not substantive, what rules would be? As Judge Rader points out in his dissent, the PTO could issue a new rule that applications be limited to 5 pages in length. Under the majority’s opinion, this rule would also not be substantive. Are only rules that conflict with the Patent Act substantive? The PTO’s rule-making authority seems to have been greatly broadened.
The part of the court’s opinion regarding Examination Support Documents (ESD) is also very troubling. The court did not seem to grasp the implications of requiring applicants to conduct a search and to comment on the references that they must cite to the examiner. This type of requirement would create so much litigation material for potential defendants that it would be much more difficult to enforce such a patent. The Bush Administration was lobbying Congress for inclusion of an ESD requirement in the patent reform bills in the last several congresses. For now, the requirement has been dropped from the currently pending bills. This opinion seems to signal that the PTO could implement this requirement by rule at any time. This may be the scariest part of the court’s opinion.
En Banc/Supreme Court Review?
It isn’t yet clear if the plaintiffs will request review by the entire court or the Supreme Court or whether they will simply continue the fight at the district court. The case is certainly of sufficient importance to warrant further review by the entire court. Given the posture of the case, however, with so many unresolved issues that need to be decided by the district court, the case may not be ripe for such review at this time. The court may also not wish to expend additional judicial resources on the case given that we do not know whether a new PTO Director would support these rules. I believe en banc review to be doubtful at this time. Unfortunately, that means that Judge Prost’s opinion will continue to haunt us into the future on other issues.
I think the best we can hope for right now is for the case to remain tied up at the district court for some time and then for the new PTO Director to take a closer look at the rules and actually listen to the patent community on their effect. A fresh approach to the PTO’s leadership is certainly needed.
In the meantime, let’s hope the PTO doesn’t take this as carte blanche to enact additional onerous rules that would significantly alter patent practice and weaken our patent system.