IP Update, Vol. 7, No. 1 (23 March 2009)

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

In this Issue:

The Federal Circuit Rules Partially in Favor of the USPTO in its Appeal of the Controversial Rules to Limit Claims and Continuations

The Court of Appeals for the Federal Circuit issued the long awaited decision in the appeal filed by the USPTO against the summary judgment decision of the U.S. District Court for the Eastern District of Virginia in Tafas et al v. Doll. The District Court decision stopped the implementation of final rules issued by the USPTO that would have limited the number of continuation applications and RCEs that applicants could file and the number of claims allowed by right in patent applications.

The Federal Circuit decided that the proposed limit on the number of continuations that an applicant could file was inconsistent with the patent law, 35 U.S.C. § 120, and therefore improper. However, the Federal Circuit did side with the USPTO by deciding that the USPTO has the authority to limit the number of RCEs that may be filed and the number of claims that may be included in an application. The Federal Circuit decision also remanded the case back to the District Court for further review of other issues.

At this time is unclear whether the USPTO will implement limits on RCEs and claims. In view of a vigorous dissent by Judge Rader, it is possible that a request for an en banc hearing may be filed. Additionally, the incoming Obama Administration will have to decide whether to move forward with implementation of the rules once the decision is final.

The decision in Tafas et al v. Doll was issued on March 20, 2009 and can be found at the following link.

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Request for Comments and Notice of Roundtable on Deferred Examination for Patent Applications

The USPTO conducted a roundtable to obtain public input from diverse sources to determine whether the support expressed for deferral of examination is isolated or whether there is general support in the patent community and/or the public sector generally for the adoption of some type of deferral of examination. The roundtable was open to the public.

The roundtable was held on Thursday, February 12, 2009. More information can be found here.

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Changes to Representation of Others Before the United States Patent and Trademark Office

The United States Patent and Trademark Office (USPTO) is adopting new rules governing the conduct of individuals registered to practice before the USPTO. The USPTO is adopting a new rule that provides for an annual practitioner maintenance fee for those recognized to practice before the USPTO in patent cases. These changes will enable the USPTO to maintain a roster of registered practitioners and, consequently, better protect the public from unqualified practitioners. The USPTO is also making conforming amendments to 37 CFR 1.21.

This is a final rule and was effective December 17, 2008. More information can be found here.

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Miscellaneous Changes to Trademark Rules of Practice

The USPTO is amending the Trademark Rules of Practice to clarify certain requirements for applications, intent to use documents, amendments to classification, requests to divide, and Post Registration practice; to modernize the language of the rules; and to make other miscellaneous changes. For the most part, the rule changes are intended to codify existing practice, as set forth in the Trademark Manual of Examining Procedure (TMEP).

This rule is effective January 16, 2009. More information can be found here.

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Fiscal Year 2009 Changes to Patent Cooperation Treaty Transmittal and Search Fees

The United States Patent and Trademark Office (Office) is amending the rules of practice to adjust the transmittal and search fees for international applications filed under the Patent Cooperation Treaty (PCT). The Office is adjusting the PCT transmittal and search fees to recover the estimated average cost to the Office of processing PCT international applications and preparing international search reports and written opinions for PCT international applications.

The changes to 37 CFR 1.445 are effective on January 12, 2009 and are applicable to any international application having a receipt date that is on or after January 12, 2009. More information can be found here.

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