On July 6, 2009, in Tafas v. Doll, No. 08-1352, the Federal Circuit granted a petition for rehearing en banc and vacated its March 20, 2009, opinion (Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009)). In that decision, the Court considered the validity of four rules promulgated by the PTO in August 2007: Rule 75, which requires applicants submitting more than five independent or twenty-five total claims to file an Examination Support Document (“ESD”); Rule 78, which limits applicants to two continuation applications per application family absent a petition and showing; Rule 114, which limits applicants to one Request for Continued Examination per application family absent a petition and showing; and Rule 265, which establishes the requirements for an ESD. A split Federal Circuit panel determined that Rules 75, 78, 114, and 265 are procedural and therefore within the scope of the PTO’s delegated authority, but that Rule 78 is inconsistent with the Patent Act.
Plaintiff-Appellee Tafas sought rehearing en banc on the grounds that the panel majority “(1) misapplied significant binding Supreme Court and Federal Circuit precedent concerning the correct standard for classifying administrative rules as ‘substantive’ versus ‘non-substantive’; (2) failed, contrary to Supreme Court and Federal Circuit precedent, to fully consider evidence that the Final Rules significantly and adversely affect individual rights and obligations under the law; (3) failed to correctly address, as required by Supreme Court precedent, the threshold question of whether the PTO has the jurisdictional authority under 35 U.S.C. § 2(b)(2) to enact the Final Rules; and (4) misapplied Chevron deference to its improper determination that Final Rules 75, 265 and 114 were not ‘inconsistent with existing law.’” Tafas Rehearing Petition at 2, Tafas v. Doll, No. 08-1352 (Fed. Cir. June 3, 2009).
Oral argument has been scheduled for October 7, 2009, but the parties have moved to stay the proceedings pending confirmation of a new PTO director.