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Tafas v. Doll, RCEs, McKesson, and arbitrary and capricious rulemaking March 25, 2009

Posted by Brian Schar in Federal Circuit, General, Patent prosecution.

When the Federal Circuit issued its ruling in Tafas v. Doll, it held (among other holdings) that Final Rule 114 governing RCEs was a valid exercise of the rulemaking power of the USPTO.  However, the Court expressly stated at the end of the opinion that “[t]his opinion does not decide…whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious.”

Final Rule 114 conflicts with McKesson, makes it impossible for applicants to meet their obligations under that binding Federal Circuit precedent, and therefore is arbitrary and capricious on its face.   McKesson, in short, requires the applicant to submit in a particular application references from all related applications, as well as office actions from those cases if the claims therein are sufficiently similar to those in the particular application.  McKesson imposes no time limit on these obligations, nor does it define how similar two applications must be in order to be related.  At a minimum, related applications would include any case (US or foreign) that claims priority to the particular application at issue.

Therein lies the arbitrary and capricious rub.  A marginally relevant or even irrelevant reference may be cited in a foreign country five or six years after filing of a U.S. application – and this usually happens right after receiving a notice of allowance.  Or, a set of references barely relevant (if not irrelevant altogether) to the claims in a particular application turn up in the first office action in a co-pending continuation or divisional application.  Under McKesson, the practitioner is obligated to submit those references, regardless of their relevance.  The applicant’s hands are tied.  If the applicant has used up an RCE already to deal with an unreasonable rejection, or to submit art cited in a different related application, then the applicant can no longer – of right – comply with the binding precedent of McKesson.  Instead, the applicant must beg the USPTO for permission to file an RCE – permission that the USPTO has indicated will rarely if ever be given.  The fact that Final Rule 114 may put an applicant in a position where he or she is denied permission to follow the bright-line requirements of Federal Circuit law is the epitome of arbitrariness and capriciousness.


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