Court Strikes Down Controversial Patent Office Rules on Continuation Applications and Claims
April 2, 2008Summary
Yesterday, the United States District Court for the Eastern District of Virginia struck down the new, extremely controversial continuation and claims rules that the United States Patent and Trademark Office (Patent Office) had published last year. The Patent Office had scheduled those rules to take effect on November 1, 2007. At that time, however, that same court preliminarily enjoined the rules from taking effect while it considered their legality.
The Patent Office may appeal this decision to the United States Court of Appeals for the Federal Circuit and perhaps even to the United States Supreme Court. An appellate decision would likely be at least six months away. In the meantime, the Patent Office will continue to operate under the old system.
Background
The Patent Office had drafted the new rules to speed up the patent examination process. The new rules limited the number of continuing applications that an applicant could file and the number of claims that an applicant could pursue as a matter of right. The old system did not limit either. The new rules also, in some circumstances, required the applicant to conduct a prior art search and explain the prior art. The old system had no such requirement.
The Decision
The court held that the Patent Office did not have the statutory authority to make the new rules because those rules have a substantive impact on the applicants’ rights and the Patent Office’s authority is limited to enacting procedural rules.
Impact of Patent Reform Legislation in Congress
The United States Congress is currently considering specific patent reform legislation. The version which passed the House would amend the patent statute to grant the Patent Office the authority to promulgate such rules. If similar legislation passes the Senate, and the President signs it into law, the court may permit the Patent Office to restore these rules, but only after a further notice and comment period.
For Further Information
We are continuing to monitor developments in the Patent Office, the courts, and Congress. If you have any question about this decision or the effect it might have on patent prosecution, please contact your Wolf Greenfield attorney.
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