By Donald Zuhn and Christopher P. Singer --
In a Notice published in the Federal Register on August 7, 2008 ("Clarification of Patent Regulations Currently in Effect, and Revision in Applicability Date of Provisions Relating to Patent Applications Containing Patentably Indistinct Claims," 73 Fed. Reg. 45999), the U.S. Patent and Trademark Office "clarified" the patent-related regulations that are currently in effect, and identified the applicability date of two provisions of the continuation and claims rules that were enjoined by the Eastern District of Virginia more than four months ago in Tafas v. Dudas. The provisions relate to applications containing patentably indistinct claims -- in particular, Rules 78(f)(1) and 78(f)(2) -- and the USPTO indicated in the Notice that the provisions will "apply only to applications filed on or after any new effective date that would be published by the USPTO in the future." The new applicability date will also only apply if the injunction issued by Judge Cacheris is lifted.
Before addressing new Rules 78(f)(1) and 78(f)(2), the Notice "clarified" that the continuation and claims rules package had amended a long list of regulations, that these changes were permanently enjoined by the District Court in Tafas v. Dudas, and that the Tafas decision is currently on appeal to the Federal Circuit.
With respect to Rules 78(f)(1) and 78(f)(2), the Notice states that:
The USPTO anticipates that it will be some time before the litigation concerning the Claims and Continuations Final Rule is finally resolved. The USPTO is concerned that some applicants may be taking preparatory action anticipating the new requirements of 37 CFR 1.78(f)(1) and (2), as added by the Claims and Continuations Final Rule, due to the possibility that the injunction by the district court in Tafas will be removed. The purpose of this notice is to aid applicants who might otherwise feel the need to take such preparatory actions by identifying the applicability date of the provisions of 37 CFR 1.78(f) in the event that the injunction by the district court in Tafas is removed. Specifically, the changes in 37 CFR 1.78(f)(1) and (f)(2) will only apply to applications filed on or after any new effective date that would be published by the USPTO after the removal of the injunction.
The USPTO also released a statement about the Notice, in which the Office indicated that the Notice was published to "alert[] the public to a new applicability date of regulatory provisions dealing with related applications in the 'Claims and Continuations' Final Rule." The statement goes on to say that "[a]ware that some applicants may be anticipating a removal of the injunction, the USPTO wishes to notify the public as soon as possible of a change in the applicability date of provisions pertaining to related applications so applicants do not undertake unnecessary preparatory actions to comply with these provisions."
Last year, as part of a series of articles on the continuation and claims rules, Patent Docs provided an extensive analysis of Rule 78(f) (see "An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents"). Because we do not count ourselves among those "anticipating a removal of the injunction," we have chosen for the time being to defer further discussion of Rules 78(f)(1) and 78(f)(2).
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