5 U.S.C. § 553: Patent Elephants in Process Mouseholes

[Excerpt] “As the district court in Tafas v. Duda (Tafas I) recounted, in 2006, the U.S. Patent and Trademark Office (USPTO) proposed to limit numbers of continuing patent applications, requests for continued examination, and claims that could be made as a matter of right. In 2007, following notice and comment procedures that generated hundreds of comments, many critical, the USPTO published final rules consonant with those objectives. The district court in Tafas I issued a preliminary injunction and ultimately rejected those rules, saying “[b]ecause the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as ‘otherwise not in accordance with law’ and ‘in excess of statutory jurisdiction [and] authority.’”