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A US District Court has ruled that the
US Patent and Trademark Office (US Patent Office) rule changes, due to have
come into effect on 1st November 2007, are substantive in nature and
exceed the US Patent Office’s rule making authority. The District Court, in Tafas and GSK v Dudas
Eastern District of Virginia, 1 April
2008, has therefore declared the new rules void.
The rule changes were highly controversial, as they severely
limited an applicant’s ability to claim their invention properly, and
restricted the applicant’s ability to file continuation applications once
prosecution of an application had begun.
The US Patent Office sought to justify the proposed rule
changes on the basis that its ability to examine newly-filed applications had
been crippled by the growing number of continuation applications and the
increasing number and complexity of claims.
As far as the introduction of Examination Support Documents[-1] were concerned, the rule changes were seen as an attempt to pre-empt
introduction of even more draconian requirements under the ‘Applicant Quality
Submissions’ section of the Patent Reform Act of 2007 then under consideration
by Senate. This section of the draft
act proposes that US
patent applicants file a search report and analysis relevant to the
patentability of the claimed invention, for every US
patent application regardless of the number of claims it contains. The only exemption presently proposed is for
so-called ‘microentities’ which would be a small subset of those applicants
currently entitled to small entity status.
The requirement for an applicant to submit a search report
and analysis would, in most cases, substantially increase the cost of a US
patent application and, dependent on when any such report had to be filed,
could lead to delays in applications being filed.
Within the US
decision making authorities, there is seeming unanimous support for the
Applicant Quality Submissions provision of the draft act. There are, however, differing views on some
of the other sections and agreement has been difficult to reach.
In the meantime, US
patent examination procedure continues unchanged. Although, the Patents Reform
Act S1145 has recently stalled and been removed from the Congressional
calendar, the USPTO has appealed against the decision of the district court.
Whether the rule changes are allowable will now be heard by the Court of Appeal
for the Federal Circuit, and what will happen in future still remains unclear.
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