A sigh of relief: Controversial US regulations on claims and continuations finally rescinded

In Insights, Uncategorized

19 October, 2009

The United States Patent and Trademark Office (USPTO) announced in a press release on 8 October 2009 that it finally rescinds the controversial new regulations proposed by the previous USPTO administration concerning the number of claims and continuations allowed in a patent application. The US Biotechnology Industry Organization and the American Intellectual Property Law Association (AIPLA) were among the first to express their content.

Innovators seeking patent protection in the United States, as well as their patent agents, have been holding their breath ever since August 2007 when the USPTO presented the new regulations, which were to impose severe restrictions on the prosecution of US patent applications.

The controversial regulations, scheduled to become effective on November 1, 2007, greatly restricted the number of claims allowed in one application as well as the number of continuation applications an applicant may file in respect of an application family. On top of this, the applicant would be required to file an Examination Support Document, in practice meaning that the burden of patentability assessment would to a great extent be placed on the applicant, instead of on the Office examiner. The proposed changes were extremely unpopular among applicants and agents. In particular the pharmaceutical industry, whose patent applications often contain a large number of claims and are frequently made the subject of continuations, opposed the proposed changes. GlaxoSmithKline filed a lawsuit against the USPTO in order to prevent the new rules from taking effect, claiming that the USPTO had exceeded its rulemaking authority (Tafas v. Doll, formerly Tafas v. Dudas).

The US District Court ruling prevented the USPTO from implementing the new rules. Applicants and agents exhaled – but only temporarily, since the decision was overruled in appeal. Again, worries grew. Meanwhile, attention was drawn to the fact that the additional paperwork associated with the new regulations were in violation of the Paperwork Reduction Act passed in 2007, and it appears that the White House in 2008 instructed the USPTO to withdraw the new regulations.

Now, joined by GlaxoSmithKline in a motion to dismiss the proposed regulations and to vacate the court decision, the USPTO officially and finally puts an end to two years of struggle that today seems quite a waste for all parties. Recently appointed USPTO director David Kappos, appointed by President Obama in June this year, also says the USPTO from now on hopes to engage the applicant community more effectively in order to improve its function. Kappos has a career background in industry and was previously Vice President at IBM, the top US patent holder in 2008. Already, US agents report that Kappos is changing the credit system for the USPTO examiners so that less credit will be given for inducing applicants to file continuations. This is a welcome change of practice indeed.

Ulrika Munter, Patent Attorney

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