Within a day of the United States Patent and Trademark Office (USPTO) publishing its final rule changes in respect to continuation practices, the USPTO and its Director, Jon Dudas, have been sued in the U.S. District Court for the Eastern District of Virginia by Tafas, an independent inventor. Tafas, represented by the law firm of Kelley Drye & Warren LLP, is seeking a declaratory judgment that the new continuation rules are null and void, and is seeking a preliminary and permanent injunction prohibiting the USPTO from putting the new rules changes into effect.
The complaint, and memorandum of law in support for the motion for preliminary injunction assert that the USPTO exceeded its congressionally delegated rulemaking authority and that the new rule changes specifically violate Section 120, 132, and 365 of the Patent Act. It is further asserted that USPTO failed to comply with the Administrative Procedures Act in promulgating the new rule changes. The suit also alleges that the USPTO has engaged in retroactive rulemaking and has failed to consider USPTO-induced reasons for multiple continuation filings.
Furthermore, constitutional impediments to the new rule changes are raised. It is asserted that the USPTO did not comply with Article I, Section 8, of the United States Constitution by failing to adequately determine the effect of its rulemaking on the promotion of the "progress of science and the useful arts." It is also asserted that the USPTO's rule changes violate the taking clause of the Fifth Amendment.
Kelley Drye partners William Golden, Steven J. Moore and James E. Nealon and senior associates Joseph Wilson and James Moriarty are representing independent inventor Tafas.