Summary: Dorsey attorney Alicia Griffin Mills examines in Patent Strategy & Management the impact of a recent District Court enjoinder of rules issued by the U.S. Patent and Trademark Office (USPTO). Under the new rules, the patent examination process would limit the number of continuing applications, Requests for Continued Examination (RCEs) and claims that an applicant could file as a matter of right. In April, Judge Cacheris of the U.S. District Court for the Eastern District of Virginia determined that these rule changes were substantive rather than procedural, that the USPTO does not have substantive rule-making authority, and that the rules accordingly were void. The USPTO has appealed the ruling.
Mills said the patent community has welcomed Judge Cacheris' decision, because the new rules potentially increase the cost of the patent process and shift burdens of the patent examination process to the applicant. She suggested that if the ruling is upheld on appeal, other USPTO rules (such as proposed rules relating to Information Disclosure Statements) may be vulnerable to challenge. She cautioned, however, that Congress may in turn give the USPTO the expanded rule-making authority necessary to overcome the District Court's ruling.
"The Best April Fools' Day Non-Prank" was published by Patent Strategy & Management, June 2008. Reprinted with permission.