USPTO Rescinds Patent Regulations

USPTO Director David Kappos has rescinded controversial patent rules which were intended to reduce the backlog in patent applications, but were seen as unduly restrictive by patent applicants. The rules would have limited the number of independent claims and total claims per patent application. They also would have allowed applicants to file only two continuations applications and only one request for continued examination per application family unless supporting evidence was presented to the USPTO.

The regulations were published in the Federal Register in August 2007. In April 2008 the U.S. District Court for the Eastern District of Virginia found that the USPTO was not properly authorized to make the rules. Subsequently, the U.S. Court of Appeals for the Federal Circuit reinstated most of the rules but later vacated its decision and granted a rehearing en banc. However, Kappos has announced that the USPTO along with plaintiff GlaxoSmithKline will file a motion to dismiss and vacate the federal district court decision. Kappos explained, "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."

Kappos further explained, "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." The full USPTO press release is here.