"New Rules" Officially Rescinded - Updated

    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applicants and the patent bar by the Dudas administration of the U.S. Patent and Trademark Office have been officially rescinded by Director David Kappos.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.

Comments

[EG]

Kevin,

Good riddance. What collossal waste time and money for all involved. And a complete "thumbs down" on ever granting the PTO substantive rulemaking authority.

[preinfelds]

Agreed, Good riddence,

Thanks to patent docs authors and other blogs for helping lead opposition to these rules and successfully rallying the community to speak out against their implementation