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Strike Out

Although the ruling was issued April 1, it was no April Fool's joke.

But even though the PTO wasn't laughing, the decision in Tafas v. Dudas did bring grins to the faces of many business people and patent attorneys throughout the country. They were pleased that the Virginia Federal District Court struck down the PTO's new Claims and Continuations Rules.

"Applicants must now undertake new substantive responsibilities if they wish to file more than five independent ... claims, which represents a significant departure from [the Patent Act's] rule of unlimited ... claims," Cacheris wrote. Such alterations of applicants' rights are substantive and thus beyond the PTO's authority, the judge ruled.

Winning Big
The ruling was a major victory for innovative drug companies and other businesses whose inventions take a long time to research and bring to market, because the new rules threatened the ability of these companies to protect their inventions.

"The Federal Circuit is likely to look at the broader issues of the rules' effects on the patent system," Schruers says. "The PTO's position is stronger [on appeal] because they are responding to a crisis in the system--a crisis not just for the PTO, but for the IP system generally."


Steven Seidenberg

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