July 27, 2009 - 12:30am
Parties Jointly Move to Stay Tafas v. Doll Proceedings Posted by: Administrator

On Friday, the U.S. Patent and Trademark Office (USPTO) and the appellees in the Tafas case asked the Federal Circuit to stay the proceedings until sixty days after the new PTO Director is confirmed by the U.S. Senate. Joint Consent Motion for a Stay of En Banc Proceedings.  If granted, the joint motion would postpone for several months the due date for the parties’ en banc briefs, which are currently scheduled for submission in August and early September.  The parties contend that a stay is justified because the new Director may revise the USPTO’s position in the case and thereby change or moot the issues that are presently before the Federal Circuit.  See our previous posts about this case here and here.

 

At issue in Tafas are several new rules the USPTO is proposing to implement. The rules would limit prosecution practices concerning continued examination (continuation applications and requests for continued examination) and would require an examination support document for applications exceeding certain numbers of independent claims or total claims.  After the Eastern District of Virginia struck down the rules on summary judgment in 2008, that decision was reversed in part in March 2009, but the Federal Circuit has since taken the case en banc.

In June, President Obama nominated David Kappos as Under Secretary of Commerce for Intellectual Property and Director of the USPTO. The confirmation hearing for Mr. Kappos before the Senate Judiciary Committee is scheduled for this Wednesday, July 29, 2009.  The parties in Tafas argue that the proposed stay period will give the new Director “an opportunity to examine the rules at issue…and determine what course the USPTO should take in the future with respect to those rules, including whether to rescind the rules.” Under the parties’ proposal, the Appellants’ opening en banc brief, if still necessary, would be due thirty days after the expiration of the stay. The Appellees’ responsive brief would be due twenty days after the opening brief was filed and be followed by the Appellants’ reply brief within seven days thereafter.

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