Court permanently enjoins patent rule changes

By Rick Boyd
April 1, 2008

Last fall, a federal district court in Virginia preliminarily enjoined the US Patent and Trademark Office from enacting a suite of new rules. The rules would have limited the number of claims and continuation applications an applicant could file, imposed a search requirement for excess claims, and imposed other limitations and requirements.

Today the court issued a permanent injunction in the case, Tafas v. Dudas, holding that the rule changes were substantive, not merely procedural, and therefore improperly exceeded the USPTO's rulemaking authority.  Further, portions of the rules are invalid because they would apply to already-filed applications, retroactively affecting applicants' rights.

For now the status quo reigns, at least pending an appeal by the USPTO to the Court of Appeals for the Federal Circuit.  But proposed patent legislation currently before Congress, if passed, could dramatically change the statutory landscape underlying this decision.

See our earlier coverage of the case here.


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