As expected, this morning the USPTO filed a notice of appeal to the Federal Circuit in the lawsuit challenging its new claim and continuation rules.  The USPTO will seek reversal of the district court's order finding the new rules exceeded the USPTO's rulemaking authority.

We'll continue to monitor the case as it proceeds through briefing and oral argument before the Federal Circuit.  Expect a similar flood of amicus submissions at the Federal Circuit.  It will be interesting to see if the court permits any amici to participate in oral argument, such as in the Bilski case tomorrow.

There have been a few new things relevant to the USPTO in the past couple of weeks that we haven't had a chance to talk about.  They include more comments regarding the proposed rules regarding Markush claims, a new Patent Prosecution Highway with the European Patent Office, and a pilot program where patent applicants would be able to have an interview to discuss a proposed first office action with the examiner before the action issues.

Update:  We were remiss in not mentioning the new written description guidelines.

Click below for more detail regarding each of these developments.

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Negotiations on a compromise version of the Patent Reform Act of 2007 (S.1145) broke down late last week, and now it appears that the bill may not be considered before the full Senate before its next recess in May, if at all.

The breakdown occurred over the controversial damages apportionment provision in the bill.  One of the bill's previous supporters, Senator Arlen Specter, pulled his support of the bill because a compromise could not be reached regarding this provision.  In response, Senator Patrick Leahy, the sponsor of the bill and chairman of the Senate Judiciary Committee, expressed his lament that "a handful of words" resulted in stalling of debate on the reform effort.

Further, between economic issues and the fact that this is an election year, it appears unlikely that the bill will be brought before the Senate, which would effectively kill the legislation until the next Congress.

We'll continue monitoring the legislation to see if anything changes that may indicate it will be considered this year.

In a ruling today regarding the parties' motions for summary judgment in the consolidated cases challenging the USPTO's new claim and continutation rules, Judge Cacheris ruled the rules were invalid, and permanently enjoined their enforcement.  We'll have more once we've had a chance to review the opinion.

Click below for the relevant documents.

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The Patent Reform Act of 2007 (S.1145) keeps plodding along in the Senate.  Just over a month after the Senate Judiciary Committee released its report on the bill, there have now been 15 amendments circulated for possible consideration when the full Senate takes up the bill, with the potential for more to come before the bill is actually considered.  The Senate is expected to address the bill sometime in the coming months.

The number of amendments, along with the "compromise" offer on the damages provision circulated last week, shows that there may be many changes between now and when the bill passes, if it passes at all.

Thanks to the Intellectual Property Owners Association (IPO) for providing links to the proposed amendments.  Click below for links to the various amendments.

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In today's Federal Register, the USPTO proposes rules that will alter when a deposit of biological material is required to be made when such a deposit is used to satisfy the requirements of 35 U.S.C. § 112.  Specifically, the proposed rule will require that a deposit, if necessary, be made before the application is published.

Under current practice, 37 C.F.R. § 1.804 provides that a deposit, if necessary, may be made "at any time before filing the application for patent or, subject to § 1.809, during pendency of the application for patent."  As a result, currently applicants do not have to go to the expense of making a deposit unless and until the patent is allowed.

The revised practice would require not only that a deposit be made "before technical preparations for publication of the application as a patent application publication have begun," but also that:

Subject to paragraph (b) of this section, all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the earlier of publication of the application under § 1.211 and 35 U.S.C. 122(b) or grant of the patent, and any deposit referenced in a patent application publication or patent will be available to the public upon publication or patenting, regardless of whether the deposit was necessary for compliance with any statutory provision.

This places applicants in a potential Catch-22:  in order to get the patent, a deposit may be required, however, if a patent is not eventually granted on the application, the biological material essentially becomes free to anyone to use.  This situation is currently avoidable by not making the deposit until the application was allowed.

Read the full Federal Register notice here. 

As we reported earlier, Judge Cacheris took the parties' motions for summary judgment under advisement in the consolidated cases challenging the USPTO's claim and continuation rules.  Below is a summary of the hearing from our representative who was in attendance.

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The USPTO has now made available all prior editions of the Manual of Patent Examining Procedure on its website here.  This is great news for those who have ever had to try to track down a version of the MPEP that was more than about 10 years old, as they had not previously been easily accessible online.

We've just received word that the hearing on the motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules has concluded, and the motions have been taken under advisement.  So, no ruling from the bench today, and no hint as to when a ruling might be expected.

This morning at 10:00 EST, Judge James C. Cacheris in the Eastern District of Virginia will hold a hearing on the parties' motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules.  When ruling on the preliminary injunction, Judge Cacheris granted the injunction in a ruling from the bench at the conclusion of the hearing, so it's possible that he may rule from the bench once again today.  However, because the preliminary injunction ruling had to be made quickly as the rules were set to go into effect the next day, we may not see a ruling from the bench on summary judgment.

We are planning on having a representative at the hearing who will let us know if there is a ruling today, and provide a short synopsis of the proceedings.  The PLI Patent Law Blog will be doing the same, as they did with the preliminary injunction hearing.  Dennis Crouch predicts a partial win for the challengers.

This post has links to the summary judgment filings by the parties and amici.