By Kevin E. Noonan —

The infamous "claims and continuation" rules
promulgated over the vocal protests of patent applicants and the patent bar by
the Dudas administration of the U.S. Patent and Trademark Office have been
officially rescinded by Director David Kappos.

In a press release expected to be issued shortly, the Office
will announce that the Director has signed a new Final Rule rescinding the rules,
originally published in the Federal Register on August 21, 2007.  The rules were never implemented as the
result of a preliminary injunction granted by the U.S. District Court for the
Eastern District of Virginia on October 31, 2007 (the day before they were
scheduled to come into effect), which injunction was made permanent by the District Court on April 1, 2008.  The government
appealed this decision, which was overturned in substantial part by the Federal
Circuit earlier this year (see "Tafas v. Doll (Fed. Cir. 2009)".  The CAFC had accepted review en
banc, but briefing was postponed on motion of all parties (see "Federal Circuit Grants Stay in Tafas v. Kappos").

In the press release, the Office proffers the
following rationale for its decision:

"The USPTO should incentivize innovation, develop rules that are
responsive to its applicants' needs and help bring their products and services
to market," Kappos said.  "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."
 
"We are grateful to GlaxoSmithKline for working with us to file this joint
motion to both dismiss the rules and vacate the district court's decision.  This
course of action represents the most efficient way to formally and permanently
move on from these regulations and work with the IP community on new ways to
take on the challenges these regulations were originally designed to address."

The Office plans on filing a joint motion with plaintiff GlaxoSmithKline,
asking the Federal Circuit to "dismiss and vacate" the District Court
decision, thereby mooting the question of the precedential effect of the lower court's
decision on the scope of the Office's rulemaking authority (and, possibly by
implication, the scope of other Executive agencies' rulemaking authority).  This question has been raised as a
reason for the government to pursue the case, which risk now seems to have been
avoided.

It is fervently to be hoped that this is the
beginning of renewed cooperation between the Office and its constituency in
resolving the real problems plaguing the patent system.

UPDATE:  The Patent Office's press release regarding the rescission of the claims and continuations rules has now been posted on the USPTO website.