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


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.

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