Federal Circuit Upholds PTO’s Rule-Making Authority in Final Rules Dispute

Holding:

In a split decision, the U.S. Court of Appeals for the Federal Circuit has upheld the authority of the U.S. Patent and Trademark Office (“USPTO”) to issue the highly contested Final Rules relating to claims and continuation examination. The Federal Circuit ruled that the USPTO did not exceed its authority when it issued the Final Rules, and that most of its sections are consistent with the Patent Act. Specifically, the Federal Circuit concluded that Final Rule 114 (requests for continued examination), Final Rule 75 (claims), and Final Rule 265 (examination support documents) are consistent with the Patent Act, but that Final Rule 78 (continuations) violates the Patent Act. The Federal Circuit remanded several issues to the district court. In this regard, the Federal Circuit vacated-in-part and affirmed-in-part the decision of the U.S. District Court for the Eastern District of Virginia that these rules exceeded the agency’s rule-making authority,

Detailed Summary:

In January 2006, the USPTO initiated two related notice and comment rulemaking proceedings. After receiving and considering the public comments, the USPTO issued the new rules on August 21, 2007, with an effective date of November 1, 2007. Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, 72 Fed. Reg. 46,716 (Aug. 21, 2007). Four of the new rules (collectively, the “Final Rules”) are at issue in this appeal.

Two of the new rules, Final Rule 78 and Final Rule 114, pertain to continuation applications and requests for continued examination…

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