May 13, 2009

Suspended: A Continuing Obstacle for Proposed Patent Rules

1 min

This article was published in the May 2009 IP News and Comment.

On January 20, 2009, President Obama issued a memo to all executive agencies that postponed promulgation of new agency rules and granted President Obama's appointees time to review and approve any new regulations, including those that had been finally approved by the Bush administration. The memo may have a significant impact in preventing implementation of the Bush administration’s highly controversial rules on patent claims and continuation applications. 

As previously reported in Venable's IP News and Comment, the rules on patent claims and continuation applications have been criticized by numerous individuals and organizations of the patent bar. Judge Cacheris of the United States District Court for the Eastern District of Virginia enjoined implementation of the rules in October 2007 in Tafas v. Dudas. Recently, the U.S. Court of Appeals for the Federal Circuit decided on appeal that the United States Patent and Trademark Office had the power to enact such rules.  Even though the decision is favorable for the PTO, President Obama's memo will still require further review and approval by the newly appointed and confirmed Secretary of Commerce, Gary Locke.

Justine A. Gozzi is an associate in Venable's Patent Prosecution Group. She can be reached at 202.344.8279 or