The PTO issued a press release yesterday that Director Kappos has signed a new Final Rule rescinding the proposed continuation and claim limit rules that have given the PTO such a black eye over the last several years.
The PTO will file a motion to dismiss the appeal in Tafas v. Kappos and a motion to vacate the district court’s decision. GlaxoSmithKline, one of the plaintiffs in the case, has agreed to join the PTO’s motions. Patently-O is reporting that the other plaintiff, Tafas, has not agreed to the motion to vacate the district court opinion. He believes that the district court opinion will provide good limits on the PTO’s future substantive rulemaking authority.
Hal Wegner is reporting that the rules were actually killed a long time ago by the Office of Management and Budget (OMB). OMB reviews newly proposed rules by federal agencies to determine the paperwork burden to comply with the rules. David Boundy, one of the architects of the campaign against the claims and continuations rules, asserted via e-mail, OMB directed the PTO to withdraw the new rules no later than January 2008. The PTO appears to have acquiesced to this directive by mid-April 2008. This was during the time that Judge Cacheris was considering the parties’ cross-motions for summary judgment. There is no record that Judge Cacheris or the Federal Circuit were ever informed of this OMB directive. OMB’s final determination of the paperwork burdens of the rules was issued July 1, 2009. The Federal Circuit does not appear to have been apprised of this development either.
Thus, even if the PTO had won all of its appeals and been permitted by the courts to implement the new rules, Boundy alleges, it would have been prohibited by law from implementing them.
Whether the district court opinion should be vacated is an interesting question. On the one hand, that opinion was part of the risk undertaken by the PTO when it chose to litigate the highly unpopular rules package. On the other hand, vacating the opinion puts us right back where we started had the rules not been proposed. What a huge waste of PTO and government resources!
The OMB issues have been circulating for a while, but nothing more official has been said about them. If Boundy is correct, this is a serious misuse of the judicial system by the PTO. Arguably, the case was moot as of January 2008. Certainly, Judge Cacheris and the Federal Circuit should have been apprised of these issues. Notably, this all took place before Director Kappos took the helm at the PTO. Thus, if true, the fault would lie with the previous administration.