En Banc Federal Circuit to Review Tafas v. Doll Panel Decision

On Monday, July 6, 2009, the en banc (enlarged panel) Court of Appeals for the Federal Circuit agreed to review the Tafas v. Doll 3-judge Federal Circuit panel decision decided March 20, 2009, providing another twist to the saga that began more than three and a half years ago with the PTO’s initial proposal in January 2006.

The March panel decision held that the PTO’s controversial rules, which would limit the number of RCE's, continuations and claims, are procedural rules and, as such, are afforded deference as long as they are not inconsistent with the patent statute. The panel held that the rules limiting the number of continuations are inconsistent with the patent statute but found that the other rules (such as limits on number of RCE's and claims) are consistent with the patent statute. The en banc Federal Circuit will now review this panel decision. All of the rules continue to be enjoined by the district court.

The appellant brief (by GSK and Tafas) must be submitted within 30 days, the appellee brief (by USPTO) must be submitted within 20 days thereafter, and the amicus briefs must be submitted within 7 days after filing of the appellant brief. The Federal Circuit will then provide a decision, although the timing of the decision is unknown. It is also possible that there may be oral arguments before the en banc panel.