In a major, legal victory in an action, Tafas v. USPTO and Dudas,brought by plaintiffs, independent inventor Dr. Triantafyllos Tafas and Glaxo Smithkline Beecham (GSK), the U.S. District Court for the Eastern District of Virginia on April 1, 2008 ruled that the U.S. Patent and Trademark Office ("USPTO") new claims and continuations rules are invalid.
The court held, "Because the USPTO's rulemaking authority under 35 U.S.C. section 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds the Final Rules are void as 'otherwise not in accordance with law' and 'in excess of statutory jurisdiction and authority.' 5. U.S.C. section 706(2)."
Kelley Drye represented Dr. Tafas in obtaining this ruling that will have far reaching positive implications in promoting innovation and advances in sciences and technology for all technology companies, whether large or small.
The patent office, in an effort to deal with a backlog attributable mainly due to business method and software patent applications, had enacted highly controversial new practice rules that would have imposed numerous arbitrary numerical limitations on the number of continuations and claims per patent application.
However, after extensive briefing and oral argument, Judge James C. Cacheris granted Tafas' and GSK's motions for summary judgment finding the USPTO's proposed limitations were an improper extension of its authority.
Kelley Drye partners William R. Golden Jr., Steven J. Moore and James E. Nealon represented Triantafyllos Tafas in this matter.
To get the advisory or for more information about this advisory, please contact William MacLeod at wmacleod@ kelleydrye.com.