The District Court for the Eastern District of Virginia recently granted summary judgment to Tafas and GlaxoSmithKline, finding that the USPTO's proposed Final Rules were an improper extension of the Office's authority.
According to the Court, the authority granted to the Patent Office under 35 U.S.C. §2 is limited to rules governing "conduct of proceedings" before the Office, and does not extend to the issuance of substantive rules, which the Court defined as "any rule that affects individual rights and obligations." The Court then found that the proposed Rules, including those limiting claims and continuations were substantive, as they "alter existing law and limit the rights of applicants…under the Patent Act."
The Court held: Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.” 5 U.S.C. § 706(2).
The USPTO is planning to appeal the ruling to the CAFC.
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