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Claims and Continuations Practice - Final Rule

Federal Circuit Upholds USPTO's Authority to Issue Claims and Continuations Final Rules and Concludes that Certain Final Rules Are Consistent with the Patent Act
USPTO Is Not Implementing Final Rules At This Time
UPDATE (March 23, 2009)

On March 20, 2009, the Federal Circuit issued a decision addressing (i) whether the Claims and Continuation Final Rules fall within the scope of the USPTO’s rulemaking authority and (ii) whether the Final Rules are contrary to the Patent Act. The Court concluded that the Final Rules were all within the agency’s rulemaking authority. The Court also concluded that Final Rule 114 (requests for continued examination), Final Rule 75 (claims), and Final Rule 265 (examination support documents) are consistent with the Patent Act, but that Final Rule 78 (continuations) violates the Patent Act. The Court remanded several issues to the district court. The litigation remains pending. The Final Rules will not be implemented at this time.

Notice of Preliminary Injunction of the Claims and Continuations Final Rule
Rules and Clarifications Not Effective on November 1, 2007.
UPDATE (November 6, 2007)

The United States Patent and Trademark Office (USPTO) published a final rule notice in the Federal Register to revise the rules of practice in patent cases relating to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications. See Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications , 72 Fed. Reg. 46716 ( (Aug. 21, 2007)(Claims and Continuations Final Rule). The final rule notice published in the Federal Register indicates that the effective date for the changes to the rules of practice in the Claims and Continuations Final Rule is November 1, 2007. Additionally, on November 6, 2007, a notice entitled “Clarification of the Transitional Provisions Relating to Continuing Applications and Applications Containing Patentably Indistinct Claims” will publish in the Office Gazette (OG). This notice was originally posted on the USPTO’s Web site on October 10, 2007, but because of the normal three to four week publication delay for OG notices is now just appearing.

On October 31, 2007, the United States District Court for the Eastern District Court of Virginia issued a Preliminary Injunction enjoining the USPTO from implementing the changes in the Claims and Continuations Final Rule. Therefore, the changes to the rules of practice in the Claims and Continuations Final Rule, including the October 10 clarifications, did not go into effect on November 1, 2007.

USPTO employees are to continue processing and examining patent applications under the rules and procedures in effect on October 31, 2007, until further notice.

This Web site will be updated and USPTO customers should monitor this Web site for any updated information.

The following information concerns the Claims and Continuations Final Rule and was posted on the USPTO’s Web site prior to October 31, 2007. The information is being maintained on the USPTO’s Web site for informational purposes only. The changes to the rules of practice in the Claims and Continuations Final Rule that is discussed below are not in effect.

Notices