USPTO New Rules Deemed “Null and Void”

PITTSBURGH - The United States District Court for the Eastern District of Virginia ruled, on April 1, 2008, that the proposed changes to the United States patent rules directed to continuation and claim changes were “null and void” and these changes are now permanently enjoined. Therefore, the rule changes that were to go into effect last November 1, 2007 are now completely void.

According to The Webb Law Firm, the United States Patent and Trademark Office (USPTO) published, on August 21, 2007, a final rule notice to change the rules relating to continuing applications and for the examination of claims in patent applications. Among other things, these changes would have limited the applicant to no more than two continuations for a single parent application. These changes would also have limited the applicant to no more than 5 independent and 25 total claims in a single application, unless an Examination Support Document was filed.

Although these rule changes were to become effective November 1, 2007, the United States District Court for the Eastern District of Virginia issued, on October 31, 2007, a Preliminary Injunction enjoining the USPTO from implementing the changes. While the USPTO may appeal this decision, the definitive ruling of the District Court judge and the widespread public opposition to these rule changes suggest that an appeal may not be successful.

There are patent law changes pending before the United States House and Senate that address other topics, such as patent infringement damages, post grant oppositions, first inventor to file procedures and prior art searching.  However, these are still being formulated.