Tuesday, July 22, 2008

USPTO relies heavily on Chevron in its appeal brief in Tafas v. Dudas

Patently-O has a copy of the USPTO's appeal brief in Tafas v. Dudas.

Of statutory authority:

The USPTO’s principal source of patent rulemaking authority is 35 U.S.C.
§ 2(b)(2). Section 2(b)(2) authorizes the USPTO to “establish regulations, not
inconsistent with law, which shall govern the conduct of proceedings in the Office.”

Was humor intended in the following?

The Office gave notice, solicited public comments, and
conducted public meetings to discuss the proposed changes. After spending more than
one year analyzing the public comments, the Office modified its original proposals
and issued revised rules. See JA51-179 (72 Fed. Reg. 46717-46843 (Aug. 21, 2007)
(final rules)).

Of rationale:

Finally, when the patent application process can continue without end, “the
public is left with an uncertainty as to what the set of patents resulting from the initial
application will cover.” JA54 (72 Fed. Reg. 46718). Thus, the prior rules and their
abuse “impose a burden on innovation both by retarding the Office’s ability to
examine new applications and by undermining the function of claims to notify the
public as to what technology is or is not available for use.” Id. The misuse of
continued examination practices such as intentional delay “also prejudices the public
by keeping applications in pending status while awaiting developments in similar or
parallel technology and then later amending * * * applications to cover these
developments.” Id. at 46719.

Chevron does appear [a lot]:

In holding that the Final Rules are ultra vires, the court made no effort to
measure the Final Rules against the actual terms of Section 2(b)(2), nor did the court
give the USPTO's interpretation of that provision the deference required by Chevron
U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984), and its
progeny. Instead, the court held that the Office is confined to issuing procedural rules
and that the Final Rules are impermissibly substantive.

Of one of the basic issues:

The district court held that Rules 78 and 114 conflict with Section 120 and
132(b), respectively, because the rules place “hard limits” on the number of
continuation applications and RCEs that an applicant may file, while the statutory
provisions entitle applicants to make an unlimited number of such filings. But the
rules do not in fact limit the number of continuation applications and RCEs that may
be filed; they simply require an applicant to show the need for further filings once a
threshold number of filings has been made.

Of standard of review:

This Court reviews a district court’s grant of summary judgment without
deference to the lower court, applying the same standard as the district court. Star
Fruits, S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); see also Florida
Light & Power Co. v. Lorion, 470 U.S. 729, 744 (1985) (court of appeals and district
court perform “identical task” in reviewing agency action under APA). The critical
question is thus the standard that the district court ought to have employed in
adjudicating the validity of the Final Rules.

Justice Scalia is cited:

More generally, “it is settled law that the rule of deference applies even to an
agency’s interpretation of its own statutory authority or jurisdiction.” Mississippi
Power & Light Co. v. Mississippi ex rel. Moore, 487 U.S. 354, 381 (1998) (Scalia, J.,
concurring) (collecting cases).

See also



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