News & Events

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.

On October 31, 2007, the United States District Court for the Eastern District Court of Virginia, however, 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 will not go into effect on November 1, 2007. The Court also preliminary enjoined the USPTO from issuing new regulations restricting the number of continuing applications, the number of requests for continued examination, and the number of claims that may be filed with the USPTO.

The decision is preliminary only and not a final adjudication of the case on its merits. And the U.S. Congress may still weigh in on this topic with legislation, so the issue is far from settled. For now, the PTO's "old rules" still govern U.S. patent prosecution.