The new Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO), David Kappos, has rescinded highly controversial patent rules which were published in August 2007. Two of the most significant rule changes were (1) a limit of two continuation (or continuation-in-part) applications and one request for continued examination (RCE) per application family, and (2) required submission of an examination support document (ESD) for applications containing more than 5 independent claims or 25 total claims. These rule changes never came into effect due to an injunction in the Tafas v. Dudas lawsuit (now known as Tafas v. Kappos). This case is currently being reviewed by the Court of Appeals for the Federal Circuit en banc. The USPTO also announced that it will file a motion to dismiss and vacate the federal district court decision in the Tafas v. Kappos lawsuit. GlaxoSmithKline, one of two plaintiffs in the lawsuit, will join the USPTO’s motion for dismissal and vacatur.
USPTO Director David Kappos also announced proposed changes to the patent examiner count system, which is used to assess patent examiner performance. The proposed changes are to provide examiners with (a) more time for reviewing each patent application, (b) more time for preparing a first office action on the merits, and (c) time for examiner-initiated interviews. The changes also diminish credit for requests for continued examination (RCEs). The count system has not been significantly changed in more than 30 years, and has been criticized by many patent practitioners for decreasing examiner morale and increasing the number of RCEs filed.
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