The U.S. Patent Office Rescinds Controversial Patent Regulations Package.

On September 21, 2009, the Director of the US Patent and Trademark Office rescinded highly controversial proposed patent application regulations. The regulations, which limited the number of continuation applications and the number of claims that could be in an application, were published in the Federal Register in August 2007, but were enjoined and never came into effect.

The US Patent and Trademark Office will file a motion to dismiss and vacate the federal district-court decision in a lawsuit filed against the USPTO that sought to prevent the rules from taking effect.

Originally, the US Patent and Trademark Office published the new rules with the goal of helping to improve examination efficiency, enhance the quality of examination and manage the growing backlog of unexamined applications.  However, the rules were immediately met with fierce opposition from patent attorneys and technology companies. 

In the fall of 2007, the US Patent and Trademark Office was sued in the U.S. District Court of the Eastern District of Virginia and a preliminary injunction was sought to stop the Rules from becoming effective.  The District Court permanently enjoined the rules, preventing the agency from implementing them. The US Patent and Trademark Office appealed to the U.S. Court of Appeals for the Federal Circuit.  The Federal Circuit issued multiple decisions and had ordered additional briefing.  The US Patent and Trademark Office dismissal will now put to bed the proceedings before the Federal Circuit.

We anticipate that the US Patent and Trademark Office will develop and promulgate new rules to deal with the continuing problems of examination inefficiency, examination quality and the backlog of pending applications.

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