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Federal Circuit Affirms USPTOs Procedural Rulemaking Authority, but the Long Battle is Far from Being Over

March 26, 2009

By Steven P. Arnheim, N. Thane Bauz, Michael D. Bednarek, Shanée Y. W. Nelson, Amy E. Simpson and Gabriel S. Sukman

Introduction

In a split decision of what has proven to be a closely watched legal debate, the Federal Circuit issued its opinion in Tafas v. Doll, 2008-1352 (Fed. Cir. Mar. 20, 2009), affirming the United States Patent and Trademark Offices (USPTO) primary argument that its regulatory scheme constituted procedural rulemaking, not substantive change. While the 2-1 panel invalidated the USPTOs Final Rule 78, which would have limited the number of continuations an applicant is allowed as a matter of right, the Federal Circuit upheld the USPTOs limitations for Requests for Continued Examination that an applicant is allowed as a matter of right and upheld the new requirement of an Examination Support Document for all applications submitting more than five independent claims or a total of 25 claims.