USPTO's Proposed Rules on Claims and Continuations are Invalid

By Patrick Avakian
[April 2008]

A collective sigh was heard throughout the patent community, as news of the U.S. District Court's decision to reject the proposed U.S. Patent and Trademark Office (USPTO) rules ("Final Rules") was handed down yesterday.

Originally set to be effective on Nov. 1, 2007, the Final Rules: (1) restricted the number of claims that can be included in a patent application, and in each family of applications associated with a particular invention, unless an examination support document (ESD) is filed; (2) reduced the number of continuation applications and requests for continued examination (RCE) that may be filed without a petition and showing; (3) required that patent applicants provide the USPTO with a report, for each pending application, of all applications and issued patents that share common inventorship, ownership, and a similar filing or priority date with the pending application; and (4) created a presumption that a family of applications with “patentably indistinct” claims exists if there is overlapping disclosure and a common filing/priority date, but permitted the applicant only a limited time to rebut the presumption if the allegedly “indistinct” claims are, in fact, “patentably distinct.”

Ultimately, the U.S. District Court for the Eastern District of Virginia found the Final Rules to be substantive in nature and to exceed the scope of the USPTO's rulemaking authority under 35 U.S.C. §2(b)(2). The court further stated that its reading of §2(b)(2) was supported by the fact that, since 2005, Congress has debated and considered whether it should grant the USPTO substantive rulemaking authority but has declined to do so.

The USPTO, which had argued that the changes were only procedural, said in a prepared statement that it did not agree with the court and is considering an appeal.

For more information, please contact:

Patrick Avakian, Los Angeles, California, (213) 633-6800, patrickavakian@dwt.com
George C. Rondeau, Jr., Seattle, Washington, (206) 622-3150, georgerondeau@dwt.com
James S. Hsue, San Francisco, California, (415) 276-6500, jameshsue@dwt.com
William A. Birdwell, Portland, Oregon, (503) 241-2300, billbirdwell@dwt.com
Seth D. Levy, Los Angeles, California, (213) 633-6800, sethlevy@dwt.com

This advisory is a publication of Davis Wright Tremaine LLP. Our purpose in publishing this advisory is to inform our clients and friends of recent legal developments. It is not intended, nor should it be used, as a substitute for specific legal advice as legal counsel may be given only in response to inquiries regarding particular situations. Attorney Advertising. Prior results do not guarantee a similar outcome.

Copyright © 2008, Davis Wright Tremaine LLP.

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