As has been widely discussed in the patent community, the US Patent and Trademark Office (USPTO) has been enjoined by a US District Court in Virginia form implementing new, and to most minds onerous, rule provisions restricting the number of claims, continuations and requests for continued prosecutions, and mandating submission of examination support documents that effectively requires the applicant and his attorney to perform the functions of a patent examiner. The decision has been viewed by many as just, since the attempted solution by the USPTO of its ever increasing backlog of unexamined patent applications was addressed by a sledge-hammer solution that would only open the floodgates of increasingly-complex patent litigation. The breath of fresh air expected from a new, and hopefully more patent-savvy administration, no matter its political inclinations, could break open the administrative and legislative logjam created to date.
The USPTO, however, in an apparent fit of pique, has filed a notice of appeal, and must follow up with an Appeal Brief within 60 days. The consensus is that no Appeal Brief will be filed by the USPTO. Even if one is, the case will only be remanded to the U.S. District Court in Northern Virginia for determination of other issues that were not reached because of the dispository issue that provided the grounds of the rejection, that is, that the USPTO overstepped its authority to promulgate substantive revisions that affected the rights of patent applicants.
Vol. 53, June 2010