In a Federal Register notice today, the USPTO has officially withdrawn the claim and continuation rule changes from the Code of Federal Regulations.  This is consistent with a press release from Thursday announcing the rules were no longer going to be pursued.  The summary of the notice:

The United States Patent and Trademark Office (Office) published a final rule in the Federal Register in August of 2007 to revise the rules of practice for patent cases pertaining to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications (Claims and Continuations Final Rule). The Office is revising the rules of practice in this final rule to remove the changes in the Claims and Continuations Final Rule from the Code of Federal Regulations.

The USPTO and GlaxoSmithKline (one of the plaintiffs who sought injunctive relief against implementation of the rules) have joined in a motion to dismiss the appeal and vacate the district court decision.  Tafas, the other plaintiff, has not joined the motion regarding the vacatur of the district court decision, wanting it to stay on the books as a limit on future rulemaking attempts by the USPTO.

To read the press release, click here.

To read the full Federal Register notice with background history on the rules and the underlying litigation, click here.

Last month, the UK Department for Culture, Media, and Sport released Digital Britain, a report regarding the future of communications infrastructure in the UK, how to deal with challenges of a digital economy (such as copyright infringement), and containing policy recommendations regarding how to move forward.  Click below for our thoughts on the report and associated documents.

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In an order this afternoon, the Federal Circuit agreed to hear en banc Tafas v. Doll, the case challenging the USPTO's claim and continuation rules.  Back in March, a panel of the court held, in a 2-1 decision, the limits on continuation applications were invalid, but the remainder of the rules were not invalid, at least for the reasons given by the district court.

In the order, the court set forth the briefing schedule:

• August 5:  Appellants' additional briefs due
• August 25:  Appellee's additional brief due
• September 1:  Reply briefs due

Oral argument will be set at a later date.  To read the order granting en banc review, click here.

Today at 10:00 Eastern time the Senate Judiciary Committee will hold an executive business meeting to discuss the Patent Reform Act of 2009.  The committee will consider some proposed amendments that represent a compromise on several key issues that have been points of contention over the course of the past several years when patent reform has been on the legislative agenda.  Among these is the issues of damages, with the compromise version substantially softening the limits on infringement damages that have been dealbreakers in past versions of patent reform legislation.

A webcast of the meeting is available online at this link.

Update (1:45pm):  Several amendments were considered at the meeting, with a total of three being adopted either at the meeting or before.  The bill has passed out of committee and has been referred to the full Senate.  No word on when, if ever, the bill will come up for a vote in the Senate; the Patent Reform Act of 2007 passed the Judiciary Committee easily but was never voted on in the full Senate.

Here are the amendments that were considered and their status:

• Amendment GRA09451 (Leahy, Specter, Feinstein, Cornyn, Whitehouse, Kaufman) - Adopted
• Amendment GRA09459 (Kyl) - Defeated, Vote: 4-13
• Amendment GRA09294 (Coburn) - Motion to Table Agreed To, Vote: 10-9
• Amendment GRA09400 (Leahy, Hatch) - Adopted - March 31, 2009
• Amendment GRA09350 (Leahy, Hatch, Whitehouse, Specter, Feinstein, Kyl) - Adopted - March 26, 2009

More detail after the jump.

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This morning the Federal Circuit released its opinion in Tafas v. Doll (formerly Tafas v. Dudas), the case addressing the validity of the USPTO's claim and continuation rules.  The court holds all of the rules at issue are procedural rather than substantive, reversing the district court on this issue.  In spite of this conclusion, the court holds the limit on continuation applications conflicts with 35 U.S.C. § 120, and is therefore invalid.  The remaining rules, however, do not conflict with the patent statutes (or at least they do not conflict for the reasons provided by the district court).

The Federal Circuit provided a summary of its disposition and the issues to be addressed on remand:

III. CONCLUSION
For the foregoing reasons, we conclude that the Final Rules 75, 78, 114, and 265 are procedural rules that are within the scope of the USPTO’s rulemaking authority. However, we find that Final Rule 78 conflicts with 35 U.S.C. § 120 and is thus invalid. Accordingly, we affirm the district court’s grant of summary judgment that Final Rule 78 is invalid, vacate its grant of summary judgment with respect to Final Rules 75, 114, and 265, and remand for further proceedings consistent with this opinion.

Because of the complexity of this case and the numerous arguments presented on appeal and before the district court, we think it is important to expressly summarize what we believe remains for the district court on remand. This opinion does not decide any of the following issues: whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive.

To read the full decision, click here.  Judge Prost wrote the majority opinion; Judge Bryson wrote a concurrence, and Judge Rader dissented.

Update (3/24):  The USPTO has released a brief statement on the issue (emphasis added):

On March 20, 2009, the Federal Circuit issued a decision addressing (i) whether the Claims and Continuation Final Rules fall within the scope of the USPTO’s rulemaking authority and (ii) whether the Final Rules are contrary to the Patent Act. The Court concluded that the Final Rules were all within the agency’s rulemaking authority. The Court also concluded that Final Rule 114 (requests for continued examination), Final Rule 75 (claims), and Final Rule 265 (examination support documents) are consistent with the Patent Act, but that Final Rule 78 (continuations) violates the Patent Act. The Court remanded several issues to the district court. The litigation remains pending. The Final Rules will not be implemented at this time.

Yesterday Senators Patrick Leahy and Orrin Hatch (chairman and ranking member of the Senate Judiciary Committee) and Representatives John Conyers and Lamar Smith (chairman and ranking member of the House Judiciary Committee) introduced the Patent Reform Act of 2009. 

Click below for more detail of the newly-introduced legislation, as well as links to other coverage of the legislation and press releases by the various industry groups who have lobbied heavily on the issue over the past several years.

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On Friday, the Federal Circuit heard oral argument in the consolidated cases challenging the USPTO's new claim and continuation limit rules.  You can download the audio of the arguments here.  While it is, of course, too early to tell whether the Federal Circuit will affirm the permanent injunction against implementation of the rules, the tenor of the oral argument seems to indicate the court was skeptical of the USPTO's arguments.  The panel that heard the case comprised Judges Rader, Bryson, and Prost.

Click below for a few highlights and links to other coverage of the arguments.

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Gene Quinn at the PLI Patent Law Blog reports that the new BPAI appeal brief rules, which were scheduled to go into effect for all appeal briefs filed on or after tomorrow, December 10, will be delayed.  The Office of Management and Budget is still considering the various submissions and comments regarding the rules, including comments regarding the burden on practitioners to comply with the rules.

This is related to the fact that when the rules were originally proposed, the USPTO certified:

The proposed rules which change the format and content of briefs may require the appellant to spend additional time in preparing a compliant brief. The effect of such rules, however, will be to enhance the likelihood that the appealed claims will be allowed without the necessity of further proceeding with the appeal and improve the efficiency of the decision-making process at the Board. Any additional time burden that is imposed by the proposed rules relating to briefs is believed to be de minimus in comparison to the reduction in pendency that appellant gains as a result of early identification of allowable claims or a more efficient decision-making process. Moreover, the fees associated with filing an appeal with the Board are set by statute, and are not proposed for change in this rule making. These proposed procedural rules do not significantly increase the cost of filing or prosecuting an appeal before the Board.

Accordingly, these proposed rules do not have significant economic impact on a substantial number of small entities.

After this, the USPTO published another notice on June 9, 2008 seeking public comment regarding the economic impact of the proposed rules, and then published the final rules on June 10.  The comments in response to this request were submitted to OMB in October, but OMB has not yet completed its review.  This is the reason for the delay—one OMB completes its review, the rules will, most likely, go into effect.

While the exact effective date is not yet known, there will be at least another 30-day notice period before they go into effect, making the effective date at least sometime in January.

Update (12/10):  The USPTO has now posted a notice to this effect on its site here.

In today's Federal Register, the USPTO has indicated its implementation of a final rule to begin collecting annual "maintenance fees" from practitioners registered to practice before the USPTO.  The notice states the fees "will recover the estimated average cost to the Office for the roster maintenance process, including the costs of operating the disciplinary system."

The rules are slated to go into effect on December 18, and are based on a 2003 publication of proposed rules regarding practitioner fees.  According to the final rule, new 37 C.F.R. § 1.21(a)(4)(i) would set the fee at $118 per year for "active" status.  The year described in the rule is the USPTO's fiscal year, which begins on October 1, so practitioners will apparently begin owing these fees in fiscal year 2009, which began on October 1, 2008.

Click here to read the full notice.  This may be a way for the USPTO to recover the upcoming reduction in maintenance fee income due to its reduction in the number of patents granted.

It's been a busy few weeks in rulemaking at the USPTO, with several notices recently posted that deserve attention.  The notices relate to increases in fees for Fiscal Year 2009 because of the consumer price index, increases for PCT fees (and a correction), the scope of permissible practice of patent agents and changes to disciplinary procedures, the effective date of the currently-enjoined rules on applications with patentably indistinct claims, and the scope of foreign filing licenses, specifically as it relates to outsourcing patent application preparation outside the United States.

Click below for more detail on these notices.

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