The Federal Circuit Concludes That the USPTO's Claims and Continuation Rules Are Procedural Changes, Not Substantive Ones, but Rule Limiting Continuing Applications Is Contrary to Patent Act

摘要

On March 20, 2009, the Court of Appeals for the Federal Circuit handed down its decision in Tafas v. Doll, reversing in part a decision of the U.S. District Court for the Eastern District of Virginia that permanently enjoined the United States Patent and Trademark Office (USPTO or the "Office") from implementing its highly controversial rules.1 In its decision, the Federal Circuit found that the final rules being challenged are procedural changes, not substantive ones and therefore within the purview of the USPTO to promulgate. But the Federal Circuit held that Final Rule 78 restricting "continuing applications" including continuation and continuation-in-part applications runs contrary to the Patent Act.