Response to Rescission of Claims and Continuations Rules

    By Donald Zuhn –-

Earlier today, the U.S. Patent and Trademark Office issued a press release announcing that Director David Kappos had "signed a new Final Rule rescinding highly controversial regulations, proposed by the previous administration, that patent applicants felt unduly restricted their capacity to protect intellectual property" (see "'New Rules' Officially Rescinded").  Not surprisingly, reaction to the Office's announcement has been positive and swift.

One of the first groups to issue a statement regarding the rescission of claims and continuations rules was the Biotechnology Industry Organization (BIO).  In a press release entitled "BIO Commends PTO Director for Withdrawal of Harmful Rules," BIO President and CEO Jim Greenwood stated that the group "applauds the action by Under Secretary Kappos today to formally withdraw the controversial and harmful proposed rules that would have limited the ability of biotechnology applicants to secure full coverage of their inventions."  Mr. Greenwood noted that the action was "a positive sign that the new Administration wants to work in a constructive manner with the patent applicant community to address the serious challenges facing the PTO," and said the group "stands ready to work with Under Secretary Kappos and others at the PTO to do so."

The American Intellectual Property Law Association (AIPLA) also issued a quick response to the news.  In its announcement, AIPLA Executive Director Todd Dickinson stated that the group "applauds the decision of Director Kappos to rescind this hugely unpopular rules package."  Mr. Dickinson added that the AIPLA viewed the action as "a significant step by Director Kappos towards rebuilding the relationship between the USPTO and the user community," and offered "to move forward and work with the Director in a constructive way to address the challenges facing the USPTO."

David Boundy (at right), one of the architects of the campaign against the claims and continuations rules, asserted via e-mail that although the USPTO had announced the formal withdrawal of the rules in today's press release, "[t]he Continuations and Claims rules had been effectively killed eighteen months ago, along with the IDS rule, by the White House Office of Management and Budget."  Mr. Boundy noted that the claims and continuations and IDS rules packages had all come under review pursuant to the Paperwork Reduction Act (PRA) in September 2007, and that this review required a notice and comment period.  Between November 2007 and January 2008, Mr. Boundy, Richard Belzer, and Dr. Ron Katznelson (names that should be quite familiar to Patent Docs readers) filed letters with the Office of Management and Budget (OMB) "showing that PTO had underestimated the paperwork burdens of the Continuations and Claims Rule by billions of dollars per year, and had failed to comply with procedural requirements of the [PRA]."  Mr. Boundy states that because the USPTO was unable to secure PRA clearance from the OMB for the claims and continuations rules, "even if the PTO had won the Tafas case, the PTO would have been forbidden by law from demanding this information from patent applicants."  While he acknowledges that "the information on OMB's web site is not crystal clear on dates," Mr. Boundy says that "it appears that the directive from the White House to PTO to withdraw the rules was issued no later than late January 2008, and that PTO had fully acquiesced by mid-April."  The OMB's final determination regarding PRA review of the claims and continuations, which was issued on July 1, 2009, can be found here.

Comments

[EG]

Don,

Good riddance. Tafas, GSK, David, Richard and Ron are to be commended for resisting this monstrous abuse of authority by the previous PTO hierarchy. What collossal waste of time and money for all involved. And a complete "thumbs down" on ever granting the PTO substantive rulemaking authority.

[Wer Kload]

what am i going to do with all of those cons i filed in anticipation of these rules?!?! sheesh

[Gena777]

Patent-law news in the Kappos era just keeps getting better. Let's hope the rest of his tenure continues on this positive path for patent law and the PTO.
http://www.GeneralPatent.com

[Les]

Hey Dave -
What about the Appeal Rules, Font Size Rules, and no Faxing Rules?