The PTO published a notice in the Federal Register on Thursday announcing that, should the US Court of Appeals for the Federal Circuit lift the injunction against the final rules package on claims and continuations ordered by judge James Cacheris on April 8, 2008, then the provision governing related applications would apply "only to applications filed on or after any new future effective date that would be published by the USPTO following a lifting of the injunction".
Related applications are applications naming at least one inventor in common and containing patentably indistinct claims.
Previously the rules would also have applied to pending related applications.
The notice does not extend to the most controversial provisions of the rules package, namely those limiting the number of claims that can be filed with an application and the number of times an applicant is permitted to file a request for continued examination.
Last November, in an interview with Managing IP, USPTO director Jon Dudas argued that the decision to apply the rules retroactively to pending applications would improve quality and efficiency.
He said: "Essentially, what we said is that these rules increase quality and improve the system, so we should implement them sooner rather than later. We shouldn't touch an application already in process, but really the question for me is, why wouldn't you apply the rules to pending applications? If you have a rule that improves quality and can help across the board and get people in line more quickly, then why wouldn't you apply it now?"
USPTO deputy director, Margaret Peterlin, who recently announced her resignation from the Office, said of the change in policy: "Our primary duties are to ensure quality and efficiency. This change to the (f)(1) and (f)(2) applicability dates, while delaying aspects of the rule's quality and efficiency effects, should allay some concerns regarding applicant requirements in the interim."
Last month, the USPTO filed its opening brief with the US Court of Appeals for the Federal Circuit appealing Judge Cacheris's decision to grant GlaxoSmithKline's and Triantafyllos Tafas's request for a permanent injunction against the rules package.
Cacheris said in his opinion that the proposed rules were substantive, rather than procedural, and that the Office therefore did not have the authority to implement them.
But in its appeal brief, the Office argued that the rules are within the scope of its statutory rulemaking authority and that they do not conflict with the Patent Act. Specifically, the PTO said that "the court made no effort to measure the Final Rules against the actual terms of Section 2(b)(2) [of the US Patent Act]".
The case is expected to be argued in late 2008, with a decision not likely before a new presidential administration takes over in January 2009.
A spokesperson for the USPTO told Managing IP that Thursday's announcement was meant to benefit applicants: "With this notice, we're letting people know of this action so they don't spend unnecessary time and resources preparing to comply with the provisions in anticipation of the injunction being lifted."
