Controversial Patent Regulations Package Rescinded
October 9, 2009
The U.S. Patent and Trademark Office announced on Thursday, October 8, 2009, that the highly controversial procedural Rules package proposed under the Bush administration will be officially rescinded. The Rules package addressed the number of continuation applications as well as the number of claims that could be filed with each patent application. In a press release (Press Release), the Office announced that the new Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos has signed a new Final Rule rescinding the Rules package, originally published in the Federal Register on August 21, 2007. The rules were never implemented as a result of a preliminary injunction granted by the U.S. District Court for the Eastern District of Virginia on October 31, 2007. The government appealed this decision, which was overturned at least in part by the Federal Circuit earlier this year (see Tafas v. Doll (Fed. Cir. 2009)). The CAFC has since decided to further review this case en banc.
In the press release, Director Kappos stated that “[t]he USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market. These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public.”
The Rules package initially published in August 2007 were intended to help improve examination efficiency, enhance the quality of examination, and manage the growing backlog of unexamined patent applications. Among the highly controversial proposed rules in the Rules package were three particular regulations, commonly referred to as the “Continuation Rule,” the “RCE Rule,” and the “Claims Rule.” The Continuation and RCE Rules would have permitted an applicant to file only two continuation applications and one request for continued examination (RCE) per patent application family as a matter of right. A third or subsequent continuation application or RCE could only be pursued if the applicant could successfully argue that the additional filing was necessary. The Claims Rule would have permitted an applicant to file no more than five independent claims and twenty-five total claims per patent application. If an applicant desired more than five independent claims or more than twenty-five total claims, then the Claims Rule would have required the applicant to supply information to the USPTO about the claimed invention to assist the Office’s examination.
In apparent recognition of the strained relationship that developed between the patent system users (Applicant community) and the Patent Office over the proposed Rules package, Director Kappos noted that “[m]any in the applicant community felt the combination of these new requirements would ultimately have had an effect that was at odds with their intended purposes.”
For More Information
If you have questions regarding the rescinded patent regulations package, please contact Anthony Laurentano at alaurentano@lahive.com or 617.994.0753.
