USPTO Removes Retroactivity from Notice Requirement in its Enjoined Rules Limiting Patent Claims and Continuations

This week the USPTO published a notice that cancels the retroactive effect of its rules limiting claims and continuations for patent applications. 

As previously reported, the rules have been enjoined in a case (Tafas v Dudas) that is currently under appeal to the Federal Circuit.  Nonetheless, the USPTO — in the hope that the Federal Circuit will lift the injunction — continues to modify the rules, with the new notice stating that the the rules’ requirements for applications containing patentably indistinct claims will only apply to applications filed after the effective date of the new rules. 

The notice states that the USPTO is concerned that some patent applications are taking preparatory action for the new rules even though they are enjoined.  Thus, if the Federal Circuit removes the injunction, patent applicants will not need to review pending applications and notify the USPTO if commonly owned, pending applications having common inventors and patentably indistinct claims.

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