Much to the delight of the majority of those in the patent community, recently appointed Director of the USPTO David Kappos signed a new Final Rule on October 8, 2009 rescinding controversial regulations proposed by the previous USPTO administration. The regulations, theoretically intended to improve examination efficiency, enhance the quality of examination, and manage the growing backlog of unexamined applications, were slated to take effect in November of 2007 and would have limited, among other things, the filing of continuation applications and the number of claims presented in an application.
Implementation of the regulations was initially prevented by a court ruling holding that the changes were substantive in nature and exceeded the USPTO’s procedural rulemaking authority. However, in March of this year, a Federal Circuit panel affirmed that judgment in part and reversed it in part, finding that all but one of the rules were indeed within the agency’s rulemaking authority. In July 2009, the Federal Circuit vacated the divided-panel decision and agreed to hear the matter en banc.
On October 8, 2009 the USPTO announced that it will file a joint motion with GlaxoSmithKline, one of two plaintiffs in the related lawsuit, to dismiss the lawsuit and vacate the court decision.
According to Kappos, “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.”