As an update to my earlier post, GSK has also filed a petition for rehearing en banc. Thanks to Hal Wegner for supplying this.
In its brief, GSK argues that the panel’s decision conflicts with the Supreme Court’s test for determining whether rules are procedural or substantive. Substantive rules are those that are a “legislative-type” and that “affect[] individual rights and obligations.”
GSK also argued that the majority opinion and the concurring opinion by Judge Bryson are in conflict with each other. Thus, the PTO and the public do not know the appropriate test to apply. Judge Prost’s opinion noted that the rules are procedural because they do not “forclose effective opportunity” to file patent applications. Judge Bryson did not address the procedural/substantive dichotomy, but instead reviewed each rule to determine whether they were within the congressional delegation of power to the PTO. The dissent follows the Supreme Court test for procedure/substance.
Finally, GSK argues that the rules have a significant impact on inventors’ rights and obligations. GSK details each rule and how the panel does not understand the impact of the rule on individuals. The panel was too quick to dismiss the implications of the rules and their drastic effects.
Interestingly, GSK provides no argument on the court’s Chevron deference analysis.
