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Rescission Sweeps Away Controversial Patent Rules

October 9, 2009

As anticipated, the new Director of the United State Patent and Trademark Office (USPTO), David Kappos, officially rescinded the controversial proposed patent rule changes yesterday. Click here to read the press release. The Kappos action sweeps away years of rule drafting and litigation surrounding the proposed rules and leaves a clean procedural slate on which Kappos will likely write new rules in the not-so-distant future. Click here to read the Bracewell client alert from August 7, 2009, forecasting the rescission. The USPTO, along with GlaxoSmithKline (one of the two plaintiffs in the original federal district court case of Tafas v. Dudas, now styled Tafas v. Kappos1, filed against the USPTO that sought to prevent the rules from taking effect) will file a joint motion to dismiss and vacate the district court decision, thereby making the pending appeal to the Federal Circuit moot. Interestingly, the other plaintiff, Triantafyllos Tafas, is currently taking the position that the district court’s precedential decision should be kept in place in order to limit the USPTO’s substantive power to legislate by issuance of rules and has yet to agree to join the motion to dismiss and vacate the district court opinion.

When addressing the rescission of the proposed rules and the next move forward, Kappos stated "[t]he USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market. These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public." The Kappos comments suggest that the USPTO will craft another set of proposed rules, over the next year or so, that are more "applicant-friendly" in yet further attempts to resolve examination problems faced by the USPTO and applicants—stand by.


1 Tafas v. Kappos, 541 F. Supp. 2d 805 (E.D. Va. 2008).