Intellectual Property Attorneys - IP Lawyers

Federal Circuit Upholds USPTO's Authority to Issue Claims and Continuations Final Rules and Concludes that Certain Final Rules Are Consistent with the Patent Act

By Christopher J. Maier on March 25, 2009 1:34 PM
On March 20, 2009, the Federal Circuit issued a decision addressing:
(i) whether the Claims and Continuation Final Rules fall within the scope of the USPTO's rulemaking authority and
(ii) whether the Final Rules are contrary to the Patent Act. The Court concluded that the Final Rules were all within the agency's rulemaking authority.

The Court also concluded that Final Rule 114 (requests for continued examination), Final Rule 75 (claims), and Final Rule 265 (examination support documents) are consistent with the Patent Act, but that Final Rule 78 (continuations) violates the Patent Act. The Court remanded several issues to the district court. The litigation remains pending. The Final Rules will not be implemented at this time.

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