Two years of fear and loathing have ended, as the USPTO has announced that it is rescinding the “Continuations” and “Claims” rules that have been hanging over the heads of practitioners, and will move to dismiss/vacate the pending lawsuit over the rules. Like a legal sword of Damocles, there was always the chance that the rules would drop into place and cut-off our ability to prosecute patent families to completion. Remember, earlier this year the Federal Circuit gave the PTO permission to implement all but the rule limiting continuations. As an attorney who felt forced to begin to compress claim sets in pending applications near the eve of the rules going into force in 2007, the potential financial hardships to small pharma/biotech companies attempting to protect nascent technologies in a step-wise fashion was manifest. And did it ever make sense, at a time when PTO filings were dropping off, to implement rules that would further reduce filings? (One senior Examiner/union rep told me that opposition among the Examiners was almost universal.) Luckily, Glaxo and Dr. Tafas had the nerve to challenge the right of the PTO to promulgate such rules. They didn’t win it all in court, but bought us all time for a new Administration and blessed restraint.
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