The rules regarding continuation practice and claim practice which were proposed and would have been implemented in 2007 have been enjoined ever since. On September 21, 2009, the Patent Office with GlaxoSmithKline and Dr. Tafas filed a joint motion to dismiss the appeal and vacate the judgment of the district court since the Patent Office has now rescinded the proposed rules.
As background, in August of 2007, the United States Patent and Trademark Office published rules directed to continuation practice and claiming practice. The rules limited the number of continuation patent applications and claim that could be filed. The Patent Office allowed applicants to file additional continuation patent applications and claims by meeting certain requirements. The general feeling among patent attorneys was that the rules were too limiting and the requirements to file additional continuation patent applications and claims were onerous. Later in 2007, GlaxoSmithKline and Dr. Tafas brought suit against the Patent Office and sought a preliminary injunction to enjoin implementation of the rules which the court granted.
Since the preliminary injunction, the Federal Circuit decided that the new claim rules did not exceed the Patent Office’s rule making authority while the new continuation rules did. Also, the Patent Office has had a change in leadership who was well received by the patent community. David Kappos was appointed Director of the Patent and Trademark Office and brought with him practical patent experience. The rules regarding continuation practice and claim practice were rescinded as stated above under the new Director’s leadership.
The Federal Circuit dismissed the appeal as being moot since the Patent Office has rescinded the proposed rules but did not vacate the district court judgment since Dr. Tafas had opposed vacatur. Tafas v. Kappos, 2008-1352 (Fed. Cir. 2009).
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