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USPTO Rescinds Controversial Proposed Patent Regulations

October 8, 2009 Comments off

The USPTO filed a joint motion with GlaxoSmithKline to dismiss the lawsuit related to regulations affecting the ability to secure patent protection for inventions.  Director of the USPTO David Kappos stated:

The USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market.  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 appeal 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.

While the USPTO’s decision was expected based upon prior comments from the USPTO, this joint motion is excellent news for all patent applicants to avoid being severely limited in seeking patent protection on important technology.

LITIGATION HISTORY.  In August 2007, the USPTO published new rules intended to help improve examination efficiency and quality.  The proposed rules would have permitted a patent applicant to only file two (2) continuation applications and one (1) request for continued examination (RCE) per application family as a matter of right.  For a third or subsequent continuation application or RCE, the applicant would have had to make a case to the USPTO to show why the additional filing was needed.  In the fall of 2007, GlaxoSmithKline and Dr. Tafas filed a lawsuit against the USPTO in U.S. District Court of the Eastern District of Virginia seeking a preliminary injunction to stop the new rules.  In April 2008, the Court granted a permanent injunction against the new rules and the USPTO appealed to the U.S. Court of Appeals for the Federal Circuit which partially ruled in favor of the USPTO.  A rehearing was granted by the Federal Circuit with additional briefing to have started in the coming weeks.