Patent Law

The following is excerpted from the September 24, 2008 appellee brief in the Tafas and GSK v. Dudas case:

This case concerns rules that the United States Patent and Trademark Office (?PTO?) issued in August 2007. See ?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) (?Final Rules?) (JA51-179). GSK challenged these rules under the Administrative Procedure Act (?APA?), 5 U.S.C. §§ 701 et seq., and the Patent Act, 35 U.S.C. §§ 1 et seq. The district court had jurisdiction to hear GSK?s challenge under 28 U.S.C. §§ 1331 and 1338. On April 1, 2008, the district court granted GSK?s motion for summary judgment and entered final judgment, invalidating the rules as ultra vires and permanently enjoining their implementation. Tafas and GSK v. Dudas, 541 F. Supp. 2d 805 (E.D. Va. 2008) (?Tafas/GSK II?).

STATEMENT OF THE ISSUES

1. Whether the Final Rules exceed the PTO?s limited statutory rulemaking authority.
2. Whether the Final Rules are contrary to existing patent law.
3. As an alternative ground to affirm the district court?s invalidation of Final Rule 265, whether that Rule?s preexamination search requirements are unconstitutionally vague.
4. As an alternative ground to affirm the district court?s invalidation of Final Rules 75, 78, 114, and 265, whether those Rules are unlawfully retroactive.
5. Whether the PTO must provide notice and comment under the APA when promulgating procedural rules.

The Final Rules...[limit] the number of continuing applications, requests for continued examination (?RCEs?), and claims that an applicant may file. In issuing these rules, the PTO makes an unprecedented and unlawful grab for power that threatens both incentives to innovate as well as the authority of this Court, the Supreme Court, and Congress. Indeed, by enacting the Final Rules, the PTO attempts to grant itself the authority to do exactly what this Court and its predecessor court have repeatedly told the PTO it lacks the power to do.

Thanks to the reader who provided the brief.  [Download gsk_brief.pdf]