The summary judgment hearing in Tafas v. Dudas took place on February 8, 2008. During the two-hour-long oral arguments, the parties argued that the validity of the new USPTO rules may depend on whether the rules are substantive or procedural. As case law has held that the USPTO has no substantive rulemaking authority, a finding that the new rules are substantive would render them beyond the scope of the PTO's power and therefore void. The rules are substantive, GSK argued, as they change the law and affect existing rights.
The U.S. attorney argued that the core issue is not whether the rules are substantive or procedural but rather whether Congress delegated authority to the PTO to issue the rules; 35 U.S.C. § 2(b)(2)(A) states that the director may issue rules which govern the conduct of proceedings in the PTO. The new rules, according to the U.S. attorney, fall into this category.
The judge presiding over the hearing took the case under advisement, stating that he needed more time to make a decision.
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