Tafas v. Doll (En Banc Suggestion)

Tafas v. Doll (En Banc Suggestion)

Both Tafas and GlaxoSmithKline (GSK) have filed petitions for en banc rehearing asking the Federal Circuit to stop the US Patent & Trademark Office (PTO) from implementing any of its proposed rules on continuations and claims.

The proposed rules can be split into two major categories: Rule 75 (requiring applicants to submit Examination Support Documents (ESD) to accompany any application that includes more than five independent or 25 total claims); Rule 78 (limiting applicants to two continuation applications absent a showing of need for more).

In a split decision, the Federal Circuit held that the limitations on continuations improperly conflict with 35 U.S.C. § 120, but that the remaining limits are "within the scope of the USPTO's rulemaking authority." (Limitations on RCEs do not create a problem).

In the motion for en banc rehearing, GSK raises the the questions of:

  1. Whether the Panel majority erred in rejecting the test for determining whether a Patent and Trademark Office ("PTO") rule is "substantive," as set forth in the controlling precedent of Chrysler, supra; Animal Legal Defense Fund, supra; and Cooper Technologies, supra.
  2. Whether the Panel majority erred in holding that the challenged Final Rules, 72 Fed. Reg. 46,716 (Aug. 21, 2007), fall within the PTO's limited, non-substantive rulemaking authority.

Tafas raises similar questions of whether the Federal Circuit:

  1. misapplied significant binding Supreme Court and Federal Circuit precedent concerning the correct standard for classifying administrative rules as "substantive" versus "non-substantive";
  2. failed, contrary to Supreme Court and Federal Circuit precedent, to fully consider evidence that the Final Rules significantly and adversely affect individual rights and obligations under the law;
  3. failed to correctly address, as required by Supreme Court precedent, the threshold question of whether the PTO has the jurisdictional authority under 35 U.S.C. § 2(b)(2) to enact the Final Rules; and
  4. misapplied Chevron deference to its improper determination that Final Rules 75, 265 and 114 were not "inconsistent with existing law".

The federal circuit majority opinion by Judge Prost included a dissent by Judge Rader (arguing that the rules are substantive) and a concurring opinion by Judge Bryson (arguing that the conflict with Section 120 only applies to continuations that are co-pending with the first-filed application).

The diversity of opinion here gives this case an excellent chance at being heard by the full 12-member court. The important administrative law issues will also be appealing to the Supreme Court when it comes time to petition for certiorari.

32 thoughts on “Tafas v. Doll (En Banc Suggestion)

  1. Divsionals are not defined (currently) as being filed in response to a restriction requirement. It’s just that “voluntary” divisions do not get the protection of 35 USC 121. Filing a voluntary divisional (without more) isn’t inequitable conduct.

    The proposed/enjoined continuation rules do define a divisional to be a subset of the applications filed in response to a restriction requirement. In that case perhaps filing a divisional you are not entitled to is inequitable conduct.

  2. Mooney, point taken. “Deemed void” was not a good choice of words. “Invalid.”

    What the divisional gets is 1) the parent’s filing date and 2) immunity from a double patenting attack with respect to claims that were non-elected claims in the parent. Are these important benefits? Of course, otherwise one would just file another application with no reference to the parent.

    They could both arise on litigation. If someone asserts claims from a divisional patent against my client, and the divisional’s parent never had a final restriction, I would be looking very seriously at invalidity based on double patenting or intervening art. Maybe even inequitable conduct if the lawyer filed a divisional application his client wasn’t entitled to because there was no proper underlying restriction.

    It’s foggy at best, but in the fog is where you want to be most cautious.

    My other sniveling shtick with divisionals is whether you can add new matter to them. But that’s one for another day.

  3. QD “I’m concerned that in litigation the divisional could be deemed void because it was not filed in response to a FINAL restriction, as per 803.01.”

    Deemed void? What is the effect of a void divisional on patent validity or enforcement? I have never seen or heard this issue being raised in any context.

  4. I don’t see anything in section 121 requiring that the restriction requirement be made final.

    BTW, traversing a restriction requirement is not an argument, or admission, that the inventions are not patentably distinct.

  5. “does a restriction requirement that has been properly traversed but never made final trigger the right to file a divisional”?

    Very interesting question. Anyone have any thoughts?

  6. Anon Exmr & 6, thanks for the thoughts. It’s happened a couple of times now. We properly traverse the restriction and get nothing back. Examiner finds no art on the elected claims, calls and says we’re allowing elected claims and canceling non-elected. I say, hang on a sec’, you haven’t entered a final restriction or responded to my traverse. Exmr says, who cares, we gave you some claims. {It really pssses me off when an examiner says they’re “giving” me something. It is a very, very poor attitude.)

    OK, so if I file a divisional and then pay the issue fee, I’m concerned that in litigation the divisional could be deemed void because it was not filed in response to a FINAL restriction, as per 803.01. If I was attacking a divisional patent, I’d sure argue that.

    821.01 says after traverse restriction SHOULD be made final. Various regs on divisional are just as vague, referring to a divisional filed after final restriction.

    So the legal question boils down to: does a restriction requirement that has been properly traversed but never made final trigger the right to file a divisional? I don’t think so because the applicant has said “that restriction ain’t right,” and that’s where the record stands. Nor do I think it’s proper for examiner to cancel claims solely on the grounds of a traversed restriction where the traverse has not been answered on the record.

    Maybe I’m just overly-sensitive, but seems like the t’s should be crossed and the i’s dotted.

  7. Anon exmr is correct below. However, if you had that thing happen where you traverse and they just cancel your claims and proceed to issue then you may could even appeal. This being since it isn’t really a matter of a restriction because obviously the restriction was never made final, it’s a matter of claims just being straight up cancelled. If your clock runs down, do what you gotta do man.

  8. The only signature required as far as I know is a Primary Examiner’s.
    Situation 1 – Applicant traversed and gave reasons why restriction was improper.
    If the Applicant properly traversed in response to the restriction requirement and the Examiner determined the elected claims were allowable he/she should have given Applicant 1 month or 30 days in response to a letter to cancel the noted claims or take other appropriate action (37 CFR 1.144). Failure by Applicant to take action during the period would be treated as a nod to cancel the noted claims by Examiner’s Amendment and pass the case to issue (MPEP form para 8-03 is used).
    Situation 2 – Applicant traversed and did not give reasons why restriction was improper.
    Applicant’s election would be acknowledged but because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)). With no traversal and application in condition for allowance except for the presence of non-elected claims, Examiner would cancel the claims and issue the case (MPEP form paragraphs 8-25-02 and 8-27 are used).
    If in the first situation the Examiner went right to cancellation and issue before a 30 day letter the matter would be petitionable but I’ve personally never seen Examiner’s do this. They usually call and talk to the Attorney about agreeing to cancel

  9. Nested replies are good to group mini-topics within threads, but are difficult to find new comments. I am not going to search a multi-page thread to find where the new comments are, looking at the time stamps. Perhaps a fading highlight can be used behind the newer posts?

  10. I’m borrowing your pic, since we’re on the same side and whatnot. Plus it’s a frickin’ awesome pic.

    If you have problems with this, you may file a petition.

  11. Mr. Beam, by that logic, no petition for rehearing will ever be granted, since all Federal Circuit judges review every precedential opinion before it is issued, and non-precedential opinions practically never get en banc review. Of course, as with any other case, the chance of en banc review remains slim just because en banc is hard to get.

  12. What a cute blog…

    To Mr. Beam, not sure that merely approving an opinion means the petition will be summarily denied. Due to its importance, IMO the case will be reheard.

    Like the Supreme Court in Bilski, the en banc panel should (and probably will) follow Rader’s dissent. A fresh wind of sanity will blow across the patent landscape, and, once again, our profession will bear the sweet satisfying fruit of professional fulfillment arising from sensible application of the law.

  13. Curious, I was wondering if any others here are having the problem I’m having with the rash of restrictions. The examiner allows the elected claims, cancels the non-elected claims with an examiner’s amendment, and no one enters a final restriction requirement. Then the examiner and supervisor refuse to return calls for months while the issue fee clock runs.

    My understanding is that a final restriction requirement signed by a supervisor is required before a petition or divisional can be filed.

  14. Apart from all that though, I do like the typo in the mention of Judge Rader. Is it by any chance a Freudian slip?

  15. Very much a substantive change, unless of course you don’t prosecute patents.

    How about this “non-substantive change” – get rid of Rule 56.

  16. Rule 75 prevents you from taking dependent claims that the examiner indicates are allowable (if there are more than 5 of them).

    That’s gotta be substantive, don’t it?

  17. Why would the full CAFC [or the Sup. Ct.] want to now tackle and reverse their recent panel decision on this bar-sensitive issue, when the subject draconian rule proposals are presently withdrawn, and there is a good chance that a new and genuinely qualified PTO Director [and hopefully also a less patent-bar-input-rejecting and PTO-experienceless G.C.] will propose much less punitive and severely limiting new rules [and also hopefully seek better solutions to PTO problems] which will not get such legal challenges?

  18. At a minimum, I think the en banc court will need to clarify the panel opinion with regard to ESDs. The panel seems to treat ESDs as procedural and within USPTO power in-and-of-themselves, without the 25-claim aspect. This implies the USPTO could apply the ESD rule to EVERY application, regardless of claim count or anything else. That can’t be right, amiright?

  19. The PTO has been very aggressively issuing restriction/election requirements the past year or so, usually resulting in the PTO essentially having to examine only one or maybe two independent claims per application. Thus, they essentially got their way without the hassle and expense of ESD’s.

  20. It’s a frakin kitchen sink argument, none of which makes any coherent sense. Especially after the judiciary already laid out in clear and convincing terms why they held the way they did.

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