April/May 2010 / Features
Recission Sweeps Away Controversial Patent Rules
The Director of the United States Patent and Trademark Office, David Kappos, recently rescinded several proposed patent rule changes. His action ends years of rule drafting and litigation surrounding the proposed rules, which were not well-received by patent attorneys, and it clears the way for new rules.
One proposed rule, Final Rule 78, sought to limit the number of continuation applications that can be filed to two. This would have had a major impact on patent practice. There is currently no limit, which leads to chains of applications.
Another proposed rule, Final Rule 114, sought to limit the number of Requests for Continued Examination to one. An RCE is a request for continued prosecution of an application that can be filed after a final rejection.
Final Rule 75 sought to limit the number of claims that may be presented in a single application without requiring a patent search and the submission of an Examination Support Document (ESD) to no more than five independent claims, and no more than 25 total claims.
Addressing the rescission of the proposed rules, Kappos noted that the regulations had been highly unpopular in the applicant community.
“In taking the actions 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,” he said.
