Today the U.S. Court of Appeals for the Federal Circuit re-ignited the long-running saga regarding the legality of the USPTO’s proposed limits on claims and continuations in U.S. patent applications.
The USPTO originally proposed the rules in 2007, and a summary of the proposal is available in a previous post on this site. In a 2008 opinion, the Eastern District of Virginia enjoined the rules on the basis that they were substantive, and not merely procedural, because they altered rights given to applicants under the Patent Act. In March 2009, the Federal Circuit overturned the District Court’s decision and upheld many portions of the USPTO’s proposed rules (see Tafas v. Doll).
Today, July 6, 2009, the Federal Circuit agreed to rehear the case en banc. Thus, the Court vacated its March 2009 decision and re-opened the appeal in Tafas v. Doll. The parties’ first round of briefing the revived appeal will begin August 6, 2009.
UPDATE: On October 8, 2009, the USPTO announced that it was rescinding the proposed claim and continuation rules.