| MST is monitoring court proceedings (Tafas v. Doll) relating to proposed rules by the US Patent and Trademark Office (PTO) that would limit claims, requests for continued examination (RCEs), and continuations in patent applications. We have studied the effects of the proposed rules on our clients' patent work in case they are implemented. In 2007, the PTO attempted to implement new rules that would limit the number of claims that can be included in a patent application, and would limit the number of RCEs and continuations that can be filed for a patent application. In 2008, a district court decided that the proposed rules were invalid because they exceeded the scope of the PTO's rulemaking authority. In March 2009, the Court of Appeals for the Federal Circuit (CAFC) agreed with the district court's decision regarding continuations. However, they decided that the proposed limits on claims and RCEs are procedural rather than substantive, and as a result they are within the scope of the PTO's rulemaking authority. Both parties in the lawsuit have petitioned the CAFC for a rehearing. The full decision by the CAFC in Tafas v. Doll is available at the following link: http://www.cafc.uscourts.gov/opinions/08-1352.pdf |
