MoneyWatch Tech

Back to Court for Tafas v. Doll Suit and USPTO Rule Changes [UPDATE]

By Erik Sherman

Updated on: July 7, 2009 / 8:07 AM EDT / MoneyWatch

Back in March I wrote about the closely-watched Tafas v. Doll lawsuit challenging new patent rules put into place by the U.S. Patent and Trademark Office. At the time, a three-judge panel of the Court of Appeals for the Federal Circuit (CAFC) came down with a mixed ruling that could have significantly changed the IP landscape. Well, it's back to the beginning, as yesterday the CAFC granted a request for an en banc rehearing, meaning that all the appellate judges will be participating.

According to the court order, the March 20 decision in the case is vacated, which means once again nothing is settled. The judges will look at briefs already filed, and the involved parties have 30 days to file copies of the previous briefs from the case. The appealing parties (Dr. Triantafyllos Tafas, Smithkline Beecham Corp., and Glaxo Group Ltd.) have the same 30 days to file additional briefs addressing the issues considered in the March decision. The USPTO will then have 20 days after receiving those briefs to file answers. Don't expects recaps of War and Peace because the order also limits how long the additional briefs may be. Amici curiae (friends of the court) briefs by those who want to weigh in will need to be filed shortly after the principle parties file their main briefs.

The suit stems from a set of rule changes that the USPTO tried to put into effect in 2007. These would have limited patent applications to five unique claims and 25 total claims per invention, versus the historic lack of limit. They would also have restricted the number of requests to reconsider a decision to reject a patent application as well as the number of continuations, which are procedures to effectively amend a patent application already in process. (Additional continuations would have been theoretically possible, but only with special permission and filing of additional paperwork that experts say could open the patents, if granted, to additional avenues of attack from competitors.)

Many in the patent community saw the rules changes as a USPTO attempt to discourage reasonable and valid patent applications to help reduce its workload, which has been under the weight of a multi-year backlog. The USPTO has said that the rules were necessary to improve patent quality and discourage applications that should not have been filed in the first place.

When the rules were initially passed by the USPTO, there was strong backlash from much of the patent community and several parties sued the office to have the decision changed. Tech companies were split on their response. In favor of most or all of the new rules were a number of heavy weights, including:

Apple
IBM
Microsoft
Oracle
Micron Technology
Intel
eBay
Cisco

Many high tech companies supported the rules, with observers often commenting that the changes would put smaller companies and individual inventors at a disadvantage and leave the large patent portfolios of these corporations intact. Some high tech companies such as Texas Instruments and Eastman Kodak opposed the rules changes.

Oral arguments for the en banc hearing must still be scheduled.

[UPDATE: According to email newsletter from Foley & Lardner partner Hal Wegner, the Federal Circuit has scheduled the case for the morning of Wednesday, October 7, 2009. "If the case proceeds to an argument, this would make it unlikely that there would be a final decision until some point in 2010."]

Gavel image via Flickr user Thomas Roche, CC 2.0.