[Federal Register Volume 73, Number 153 (Thursday, August 7, 2008)]
[Notices]
[Pages 45999-46000]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-18224]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No.: PTO-P-2008-0035]


Clarification of Patent Regulations Currently in Effect, and 
Revision in Applicability Date of Provisions Relating to Patent 
Applications Containing Patentably Indistinct Claims

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
publishing this notice to clarify which patent-related regulations are 
currently in effect. The USPTO is identifying the applicability date of 
those regulatory provisions relating to applications containing 
patentably indistinct claims which are enjoined in Tafas v. Dudas, 530 
F. Supp. 2d 786 (E.D. Va. 2008). Should the injunction be lifted, those 
regulations will apply only to applications filed on or after any new 
effective date that would be published by the USPTO in the future.

DATES: Effective Date: August 7, 2008.

FOR FURTHER INFORMATION CONTACT: The Office of Patent Legal 
Administration, by telephone at (571) 272-7704, or by e-mail at 
[email protected].

SUPPLEMENTARY INFORMATION: In 2007, the United States Patent and 
Trademark Office (USPTO) published a final rule revising the rules of 
practice in patent cases in title 37 of the Code of Federal Regulations 
(CFR) relating to continuing applications and requests for continued 
examination practices, and for the examination of claims in patent 
applications. See Changes to Practice for Continued Examination 
Filings, Patent Applications Containing Patentably Indistinct Claims, 
and Examination of Claims in Patent Applications, 72 FR 46716 (Aug. 21, 
2007), 1322 Off. Gaz. Pat. Office 76 (Sept. 11, 2007) (Claims and 
Continuations Final Rule).
    The Claims and Continuations Final Rule amended existing 37 CFR 
1.17(f), 1.26(a) and (b), 1.52(d)(2), 1.53(b) and (c)(4), 1.75(b) and 
(c), 1.76(b)(5), 1.78, 1.104(a)(1) and (b), 1.110, 1.114(a) and (d), 
1.136(a)(1), 1.142(a), 1.145, and 1.495(g), and added new 37 CFR 
1.105(a)(1)(ix), 1.114(f), (g), and (h), 1.117, 1.142(c), 1.265, and 
1.704(c)(11).
    With respect to 37 CFR 1.704(c)(11), the Claims and Continuations 
Final Rule redesignated existing 37 CFR 1.704(c)(11) as 37 CFR 
1.704(c)(12) and added a new 37 CFR 1.704(c)(11).
    The changes in the Claims and Continuations Final Rule were 
permanently enjoined by the district court in Tafas v. Dudas, 530 F. 
Supp. 2d 786 (E.D. Va. 2008). That decision is currently on appeal to 
the U.S. Court of Appeals for the Federal Circuit.
    The provisions of 37 CFR 1.17(f), 1.26(a) and (b), 1.52(d)(2), 
1.53(b) and (c)(4), 1.75(b) and (c), 1.76(b)(5), 1.78, 1.104(a)(1) and 
(b), 1.110, 1.114(a) and (d), 1.136(a)(1), 1.142(a), 1.145, 1.495(g), 
and 1.704(c)(11) in effect as of August 7, 2008 are the provisions of 
37 CFR 1.17(f), 1.26(a) and (b), 1.52(d)(2), 1.53(b) and (c)(4), 
1.75(b) and (c), 1.76(b)(5), 1.78, 1.104(a)(1) and (b), 1.110, 1.114(a) 
and (d), 1.136(a)(1), 1.142(a), 1.145, 1.495(g), and 1.704(c)(11) in 
effect on October 31, 2007, and may be found in the July 2007

[[Page 46000]]

Revision of the Code of Federal Regulations.
    The provisions 37 CFR 1.105(a)(1)(ix), 1.114(f), (g), and (h), 
1.117, 1.142(c), 1.265, and 1.704(c)(11) as added by the Claims and 
Continuations Final Rule are not in effect as of August 7, 2008.
    The USPTO anticipates that it will be some time before the 
litigation concerning the Claims and Continuations Final Rule is 
finally resolved. The USPTO is concerned that some applicants may be 
taking preparatory action anticipating the new requirements of 37 CFR 
1.78(f)(1) and (2), as added by the Claims and Continuations Final 
Rule, due to the possibility that the injunction by the district court 
in Tafas will be removed. The purpose of this notice is to aid 
applicants who might otherwise feel the need to take such preparatory 
actions by identifying the applicability date of the provisions of 37 
CFR 1.78(f) in the event that the injunction by the district court in 
Tafas is removed. Specifically, the changes in 37 CFR 1.78(f)(1) and 
(f)(2) will only apply to applications filed on or after any new 
effective date that would be published by the USPTO after the removal 
of the injunction. Thus, in the event the referenced injunction is 
lifted, applicants will only need to comply with the identification 
requirements of 37 CFR 1.78(f)(1) in applications having an actual 
filing date on or after this new effective date. Likewise applicants 
will only have to identify other commonly owned applications that 
satisfy the conditions set forth in 37 CFR 1.78(f)(1)(i) in 
applications that have a filing date on or after this new effective 
date. Similarly, the rebuttable presumption of 37 CFR 1.78(f)(2) will 
only apply to applications having an actual filing date on or after the 
effective date. Furthermore, the rebuttable presumption will only exist 
with respect to an application that satisfies the conditions set forth 
in 37 CFR 1.78(f)(2)(i) and also has a filing date on or after this new 
effective date.

    Dated: August 1, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E8-18224 Filed 8-6-08; 8:45 am]
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