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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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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In a notice released yesterday, the USPTO announced that it will be changing the requirements for an attorney or agent to withdraw from representation of a client in a patent matter before the Office.  Currently, the requirements for withdrawal are covered by 37 C.F.R. § 10.40 and MPEP 402.06, and require that the practitioner provide a brief explanation of the reason for the withdrawal, although there is no indication of that requirement on the applicable form (PTO/SB/83).  The withdrawal also has to be approved by the USPTO not less than 30 days before the expiration of any time for response currently pending.

Under the revised practice, a practitioner will have to certify they have done three things:

1. Given reasonable notice to the client, prior to the expiration of the reply period, that the practitioner(s) intends to withdraw from employment;
2. Delivered to the client or a duly authorized representative of the client all papers and property (including funds) to which the client is entitled; and
   
3. Notified the client of any replies that may be due and the time frame within which the client must respond.

Under the new procedure, the request need only be submitted before any upcoming response is due, and may be decided after the time for response has elapsed.  Also, the USPTO will also be providing an updated version of Form PTO/SB/83 with the revised requirements as well as a place to indicate the reason withdrawal is being sought from the acceptable reasons provided in 37 C.F.R. § 10.40.

To read the full release, click here. 

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.

Late Friday, the parties filed their reply briefs in the cases challenging the USPTO's claim and continuation rules.  As with the parties' opposition filings, these briefs largely represent another repetition of the arguments raised in the parties motions for summary judgment.  The motions have now been fully briefed, and the hearing on the parties' motions is scheduled for Friday, February 8 at 10:00 EST.

In addition to news on this front, the Bush administration has sent a letter to Senator Leahy regarding the Patent Reform Act of 2007 (S. 1145).  While the administration supports several sections of the bill in principle, the administration does not support the bill as currently drafted, largely because of the damages apportionment portion (which has also been the most controversial).  Based on this position, it seems unlikely that the Patent Reform Act of 2007 will become law in its current form, as it would be unlikely there would be sufficient votes for a veto override.  As a result, look for the damages apportionment provision in the bill to be either substantially changed or scrapped during negotiations on a compromise version of the bill.  Update (2/5):  The final version of the Senate Judiciary Committee's report on S. 1145 can be found here.  Notably, this version includes "other" and minority views of committee members, and that section in particular is worth a look.  HT:  Patently-O via Patent Prospector.

Click below for links to the summary judgment filings in the lawsuits challenging the USPTO's claim and continuation rules, including the newly-filed reply briefs.

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