First lawsuit to stop implementation of continuation and claim limit rules filed

August 23, 2007
Post by Blog Staff

As reported on Patently-O (and predicted here), yesterday a lawsuit was filed against the USPTO and its director, Jon Dudas, to prevent implementation of the new rules limiting continuations and the number of claims in patent applications (expect a more detailed post about the new rules later today).

The lawsuit alleges that the regulations are invalid for many reasons, including:

  1. Exceeding the USPTO's Congressionally-granted rulemaking authority
  2. Violating the Administrative Procedures Act by
    1. Enacting rules with retroactive effect
    2. Failing to consider all relevant matter presented as required by 5 U.S.C. § 553(c)
    3. Promulgating rules that are arbitrary, capricious, contrary to law, in violation of the plaintiff's constitutional rights, and in excess of the USPTO's statutory jurisdiction and authority
  3. Violating Article 1, Section 8, clause 8 of the Constitution and the Takings Clause of the Fifth Amendment.

The plaintiff is Dr. Triantafyllos Tafas, an inventor who also the chief technology officer of Ikonisys.

The meat of the complaint is that the rules violate 35 U.S.C. §§ 120, 131, 132, and 365(c) because §§ 131-132 require the Director to "cause an examination to be made of an application and the alleged new invention," and "to provide for the continued examination of application for patent at the request of the applicant." Under these statutes, therefore, the plaintiff alleges that the USPTO cannot limit continuation applications or requests for continuation examination, because the USPTO is statutorily required to permit them.

The complaint also alleges that the rules are invalid because the USPTO did not publish its revised rules for additional comment before enacting them this week.

It will be interesting to see whether this lawsuit is successful, and if it is the only one filed. According to the motion for preliminary injunction, the hearing will likely be held September 7.

Click here to read the complaint, and here to read the motion for preliminary injunction.

Update (8:45 AM): Joe Miller at The Fire of Genius is skeptical of the lawsuit's chances.

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