Intellectual Property Law

Claim and continuation rules dead: thousands of practitioners breathe easier

By McKee, Voorhees & Sease, P.L.C.

In a Federal Register notice today, the USPTO has officially withdrawn the claim and continuation rule changes from the Code of Federal Regulations.  This is consistent with a press release from Thursday announcing the rules were no longer going to be pursued.  The summary of the notice:

The United States Patent and Trademark Office (Office) published a final rule in the Federal Register in August of 2007 to revise the rules of practice for patent cases pertaining to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications (Claims and Continuations Final Rule). The Office is revising the rules of practice in this final rule to remove the changes in the Claims and Continuations Final Rule from the Code of Federal Regulations.

The USPTO and GlaxoSmithKline (one of the plaintiffs who sought injunctive relief against implementation of the rules) have joined in a motion to dismiss the appeal and vacate the district court decision.  Tafas, the other plaintiff, has not joined the motion regarding the vacatur of the district court decision, wanting it to stay on the books as a limit on future rulemaking attempts by the USPTO.

To read the press release, click here.

To read the full Federal Register notice with background history on the rules and the underlying litigation, click here.

Full post as published by FileWrapper on October 14, 2009 (boomark / email).