Patent Baristas

In a notice labeled “Clarification of Patent Regulations Currently in Effect, and Revision in Applicability Date of Provisions Relating to Patent Applications Containing Patentably Indistinct Claim,” the US Patent and Trademark Office (USPTO) published a notice to “clarify” just which patent-related regulations are currently in effect.

The earlier proposed changes in the Claims and Continuations Final Rule were permanently enjoined by the district court in Tafas v. Dudas. That decision is currently on appeal to the U.S. Court of Appeals for the Federal Circuit.  The provisions of the Claims and Continuations Final Rule are not in effect.

The USPTO now just seemingly wants to appear helpful and generous to applicants by pointing out that those regulatory provisions relating to applications containing patentably indistinct claims which are enjoined in Tafas v. Dudas — should the injunction be lifted — will apply only to applications filed on or after any new effective date that would be published by the USPTO in the future.

In a nod that the Patent Office intends to fight on longer than Hideki Tojo, the USPTO noted that it “anticipates that it will be some time before the litigation concerning the Claims and Continuations Final Rule is finally resolved.”

They have therefore provided the following helpful guidelines:

The USPTO is concerned that some applicants may be taking preparatory action anticipating the new requirements of 37 CFR 1.78(f)(1) and (2), as added by the Claims and Continuations Final Rule, due to the possibility that the injunction by the district court in Tafas will be removed. The purpose of this notice is to aid applicants who might otherwise feel the need to take such preparatory actions by identifying the applicability date of the provisions of 37 CFR 1.78(f) in the event that the injunction by the district court in Tafas is removed.

Specifically, the changes in 37 CFR 1.78(f)(1) and (f)(2) will only apply to applications filed on or after any new effective date that would be published by the USPTO after the removal of the injunction. Thus, in the event the referenced injunction is lifted, applicants will only need to comply with the identification requirements of 37 CFR 1.78(f)(1) in applications having an actual filing date on or after this new effective date. Likewise applicants will only have to identify other commonly owned applications that satisfy the conditions set forth in 37 CFR 1.78(f)(1)(i) in applications that have a filing date on or after this new effective date.

Similarly, the rebuttable presumption of 37 CFR 1.78(f)(2) will only apply to applications having an actual filing date on or after the effective date. Furthermore, the rebuttable presumption will only exist with respect to an application that satisfies the conditions set forth in 37 CFR 1.78(f)(2)(i) and also has a filing date on or after this new effective date.

As pointed out by others, when the PTO WANTS you to know about a Federal Register notice, they can post it on the USPTO web site, and even make phone calls to reporters to let them know about it.   When the PTO does NOT want you to know about a Notice (like the Paperwork Reduction Act comment period, two months ago), they somehow “forget” to let anyone know.

This Federal Register Notice states that the PTO will not apply Rules 78(f)(1) and (2) (the presumption of double patenting and requirement to rebut) retroactively, even if the Tafas v Dudas injunction is lifted.

We’ll have to wait to see if the court is moved by this new-found generosity.   See the full Notice here.

More here

Tafas v. Dudas: The Continuation Wars
No Joke, Court Smacks Down New Patent Rules
Oops, They Did It Again — Patent Office has “Typographical Error”
Sides Line Up in Impending Patent Continuations Fight