Amster Rothstein and Ebenstein, LLP - Intellectual Property Law

ARE Patent Law Alert:
Tafas v. Doll – Round II: One Down, Three to Go

March 23, 2009
Author(s): Charles R. Macedo, Marion P. Metelski

(March 23, 2009). Previously, we reported on the issuance of the controversial Final Patent Rules regarding Claims and Continuation Practice (“the Final Rules,” 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). For a detailed discussion of the Final Rules, see Charles R. Macedo and Marion P. Metelski, “New PTO Rules On Continuing Applications and Claim Examination Practice: Learning to Count to 2 (+1 RCE) and 5/25”, NYIPLA Bulletin, Sept./Oct. 2007 (available at

Thereafter, we reported on the fact that the Final Rules were challenged in court, and enjoined. See Tafas v. Dudas, 511 F. Supp. 2d 652 (E.D. Va. Oct. 31, 2007) (“Tafas I”). Ultimately, the District Court found that the Final Rules were “substantive rules that change existing law and alter the rights of applicants such as [Appellees] under the Patent Act.” Tafas v. Dudas, 541 F. Supp. 2d 805, 814 (E.D. Va. 2008) (“Tafas II”). For a detailed discussion of the Tafas II decision, see Charles R. Macedo and Marion P. Metelski, “Tafas Verdict Is A Setback For Patent Office”, IP Law360, April 9, 2008 (available at

On Friday, March 20, 2009, the U.S. Court of Appeals for the Federal Circuit (“the Federal Circuit”) weighed in on the Final Rules, in Tafas v. Doll, No. 2008-1352 (Fed. Cir. Mar. 20, 2009) (“Tafas III”). In Tafas III, the Federal Circuit, in a three-way split panel, affirmed the District Court’s grant of summary judgment invalidating one of the four Final Rules in question, reversed the grant of summary judgment for the other three Final Rules, and remanded the case to answer a series of specifically delineated questions left open by the Federal Circuit. For a detailed discussion of the Tafas III decision, see Charles R. Macedo and Marion P. Metelski, “ Tafas v. Doll — Round II: 1 Down, 3 To Go”, IP Law360, March 23, 2009 (soon to be available at

In reaching their decisions, the members of the Panel expressed divergent views on whether the U.S. Patent and Trademark Office (“the USPTO”) possesses the rulemaking authority to promulgate the Final Rules (and other similar types of rules), and addressed questions that the Supreme Court has yet to provide its definitive views upon.

With respect to the four Final Rules at issue, the Court held as follows:

Judges Prost and Bryson reversed the District Court’s award of summary judgment, while Judge Rader would have affirmed.

While the Panel Decision has only stricken one of the four Final Rules at issue, Judge Prost clearly delineated
the issues that were “not decided” on appeal, and that the Federal Circuit believes “remain for the district court on remand”:

The concurring opinion by Judge Bryson also raised an issue that, in his view, remains open. Although Judge Bryson concurred that Final Rule 78 “is contrary to the plain language of [35 U.S.C.] section 120, which provides that such a co-pending continuation ‘shall’ be given the same priority date as the original application and which contains no restriction on the numbers of such applications that are permitted,” he left open the question of whether “a revised rule that addressed only serial continuances and limited such continuances to only two – the first co-pending with the original application and the second co-pending with the first – would be struck down as reflecting an impermissible interpretation of [35 U.S.C.] section 120.” Tafas III, slip op. at 7 (Bryson, C.J., concurring).

Please feel free to contact us to learn more about this decision and its impact on U.S. Patent Law.


* Charles R. Macedo is a Partner, and Marion P. Metelski is a Senior Counsel at Amster, Rothstein & Ebenstein LLP. Their practices specializes on intellectual property issues including litigating patent, trademark and other intellectual property disputes, prosecuting patents before the U.S. Patent and Trademark Office, and other patent offices throughout the world, registering trademarks and service marks with U.S. Patent and Trademark Office, and other trademark offices throughout the world, and drafting and negotiating intellectual property agreements. They may be reached at [email protected] and [email protected].


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