USPTO Rules Are Void For Being Contrary to Law, VA District Court Declares

Holding:

In this action challenging the United States Patent and Trademark Office’s (“USPTO”) changes to the rules governing the examination of patents (“Final Rules”), the U.S. District Court for the Eastern District of Virginia granted plaintiffs’ motion for summary judgment, and denied defendant USPTO’s motion for summary judgment. Specifically, the district court held that 35 U.S.C. § 2 provides various specific powers to the USPTO. However, Section 2 does not provide the USPTO with any “general substantive rulemaking power.” According to the court, since “Section 2(b)(2)’s authority is limited to rules governing the ‘conduct of proceedings’ before the Office, the USPTO does not have the authority to issue substantive rules, and it does not have the authority to make substantive declarations interpreting the Patent Act.” The Final Rules are therefore void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction (and) authority.”

Detailed Summary:

Plaintiffs Smithkline Beecham Corporation d/b/a GlaxoSmithKline, et al. (collectively, “GSK”) and Triantafyllos Tafas (“Tafas”) instituted this lawsuit pursuant to the Administrative Procedure Act (the “APA”) to permanently enjoin defendants Jon W. Dudas and the USPTO from enacting the “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications,” 72 Fed. Reg. 46,716-843 (Aug. 21, 2007)(to be codified at 37 C.F.R. pt. 1).

GSK and Tafas argued that the Final Rules, which changed the patent system by modifying several long-established rules governing patent examination by the USPTO, are unlawful agency action under…

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