The U.S. Patent and Trademark Office, under the leadership of new head and former IBM-er David Kappos, is rolling back some of the more onerous policies advanced under the former regime. We couldn’t be happier to see what’s happening at the patent office so far. Kappos and team seem like an enlightened bunch. The press release from intellectual law firm Wolf, Greenfield & Sacks, P.C., below illustrates one example:
The US Patent and Trademark Office (PTO) rescinded its highly controversial proposed Continuation and Claims rules on October 8. The proposed rules would have imposed restrictions on the number of continuation applications and requests for continued examination (RCEs) per application family and would have also limited the number of claims per patent application.
The rescission of the Continuation and Claims rules is an important development, according to Wolf, Greenfield & Sacks, P.C., a Boston intellectual property law firm. It ends uncertainty as to whether the proposed rules would be implemented and, if so, when. Current patent practice will not be altered—at least for now.
The PTO, however, will likely attempt to impose other changes in seeking to address its and the public’s concerns, Wolf Greenfield says. Exactly how far-reaching such changes will be and whether the PTO will have or be given the authority to impose them is, unfortunately, currently unknown.
In the future, the PTO will likely endeavor through rulemaking to impose other changes to the patent system, with the same aim of reducing its backlog and streamlining the process and timing of patent examination.
Additionally, the PTO is seeking, and may be granted, the authority to make substantive—not just procedural—rules, which would make future challenges to rulemaking more difficult.
Even so, future changes are expected to be less restrictive than the rescinded rules, if imposed under the PTO’s current leadership.
In the fall of 2007, the PTO was set to implement rules that would have been restrictive of the freedom patent applicants have when applying for patents and also would have imposed additional requirements when an application contains a large number of claims.
The proposed rules would have permitted only two continuation applications and one request for continued examination (“RCE”) per application family as a matter of right and would have allowed an applicant to file only five independent claims and twenty-five total claims per application. If more claims were desired, the applicant would have been required to submit a large amount of detailed information to the PTO to assist in the examination of the application.
Shortly before the proposed rules were to go into effect, inventor Triantafyllos Tafas (“Tafas”) and GlaxoSmithKline PLC (“GSK”) each brought suit against the PTO. The U.S. District Court of the Eastern District of Virginia granted Tafas and GSK a preliminary injunction to stop the controversial rules from becoming effective and, in April 2008, further found that the PTO did not have the substantive rulemaking authority to impose the proposed rules and permanently enjoined them.
On appeal, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit concluded that all of the rules except for the rule limiting the number of continuation applications were procedural and within the PTO’s rulemaking authority. In July 2009, however, the Federal Circuit granted a request that the full court of twelve judges rehear the case to reconsider the panel decision.