Apr
7
Rulemaking Authority in H.R. 1908
Posted by Keeley Vega at 11:02 am under Uncategorized.
Several commentators present some interesting conclusions about the language of H.R. 1908 and its potential effect on the Tafas v. Dudas litigation.
From Patently-O: “The pending Patent Reform Act includes language that would provide substantive rulemaking authority to the PTO. That provision would directly overrule yesterday’s decision.”
From IPBiz: “The current version of S 1145 does not contain language granting the USPTO rulemaking authority for continuation and other rules, but the text of the House-passed HR 1908 does … the likelihood of having substantive rulemaking authority in any compromise is NOT high.”
Section 14 of H.R. 1908 amends 35 U.S.C. § 2(c) by adding that § 2(b) powers “include specifying circumstances under which an application for patent may claim the benefit under sections 120, 121 and 365(c) of the filing date of a prior filed application for patent.”
The bill then notes that the above amendment clarifies the scope of power granted to the PTO as in effect since enactment of Public Law 106-113.
In other words, the bill, on its face, is not expanding the PTO’s rulemaking authority, substantive or otherwise. The PTO currently has procedural power and, thus, any “circumstances” involving continuations must still govern the conduct of proceedings in the office. The standard should not change.
For those opposed to the 2+1 rule because they believe it is “substantive,” it is important to stress the clarification function of the bill’s language and to not interpret it as granting substantive rulemaking authority (unless it’s just to oppose the bill as disguising substantive power as procedural authority). Yes, the PTO can specify circumstances under which an applicant can claim the benefit of a prior application. It can require a specific reference to the earlier application within a certain time period; it can require a fee; it can provide procedures for accepting unintentionally delayed amendments, etc. But, to clarify, these circumstances can’t directly implement substantive changes.