14 October, 2009

USPTO Rescinds Controversial Patent Regulations Package

USPTO Rescinds Controversial Patent Regulations Package

In a welcome development for U.S. patent applicants around the world, President Barack Obama’s newly appointed Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), David Kappos, has rescinded highly controversial patent regulations that were proposed by the previous administration.

The rule changes, which were proposed by the USPTO in 2007, included provisions that required applicants to identify co-pending patent applications and limited the the number of continuation and Request for Continued Examination (RCE) filings permitted and the number of claims permitted in a patent application (and family of patent applications), amongst other things.

The USPTO earlier justified the proposed rule changes as necessary to reduce the backlog of unexamined patent applications and to reduce the burden on Examiners. However, the proposed rule changes were struck down in 2008 by a U.S. District Court for being substantive in nature and exceeding the scope of the USPTO’s rulemaking authority.

While the USPTO was initially expected to appeal the decision, the new administration has shown a welcome understanding of the needs of patent applicants. In announcing the rescission, Director Kappos stated “The USPTO should incentivise innovation, develop rules that are responsive to applicant’s needs and help bring their products and services to market. These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, 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.”

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