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PTO DIRECTOR KAPPOS RESCINDS RULES PACKAGE

AIPLA APPLAUDS USPTO DIRECTOR KAPPOS ON HIS MOVE TO RESCIND RULES PACKAGE

10/8/2010

WASHINGTON, DC – Today the US Patent and Trademark Office announced that it will rescind the claims and continuations rules package that has been the subject of litigation in Tafas v. Kappos. GlaxoSmithKline and the USPTO, parties to the litigation, will jointly request the federal appellate court in the case to dismiss the appeal and vacate the district court decision.

“AIPLA applauds the decision of Director Kappos to rescind this hugely unpopular rules package,” stated AIPLA’s Executive Director Todd Dickinson. “And we certainly hope the courts will act quickly and favorably on this motion. We view this as a significant step by Director Kappos towards rebuilding the relationship between the USPTO and the user community. Hopefully, we can now continue to move forward and work with the Director in a constructive way to address the challenges facing the USPTO.”

Background
The rules, which imposed extensive limits on the way applicants could claim inventions and file continuation applications, were declared void by a district court as substantive rules that exceeded the PTO’s rulemaking authority.  On appeal, that decision was reversed as to the claiming and RCE provisions but affirmed as to the continuations rules, which were held to be inconsistent with the Section 120 of the Patent Act.  The Federal Circuit subsequently took the case for en banc review and vacated the panel decision.  The Federal Circuit granted a 60-day stay of the en banc proceedings to give the new Administration an opportunity to reevaluate the government’s position. On July 28, the Court granted a consent motion for a 60-day stay of en banc proceedings. On August 21, the court issued an order essentially causing the briefing to resume 60 days from the date of that order.

The American Intellectual Property Law Association (AIPLA)
Founded in 1897 to maintain a high standard of professional ethics, to aid in the improvement in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues, AIPLA is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community. Visit AIPLA at
www.aipla.org.

​Contact: press@aipla.org