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The U.S. Patent and Trademark Office announced plans to drop controversial proposed patent rules that were challenged in Tafas v. Kappos, a case pending in the U.S. Court of Appeals for the Federal Circuit. The PTO also said it plans to file a joint motion with one of the plaintiffs, GlaxoSmithKline PLC, to dismiss and vacate the federal district court decision, which declared the rules invalid in April 2008. “This course of action represents the most efficient way to formally and permanently move on from these regulations,” said PTO director David Kappos in a statement issued Thursday. In March of this year, a Federal Circuit panel ruled that all but one of the rules, which date back to the prior administration, were within the agency’s rulemaking authority. The rules created a more cumbersome process for requesting continuing patent applications — additional applications for the same invention filed before the first application is patented or abandoned. They also sharply restricted the number of patent claims on an application unless the applicant filed so-called examination support documents, which are detailed and expensive to produce. The Federal Circuit invalidated a rule that would have limited the number of continuing patent applications. The court later granted an en banc rehearing on the case, but delayed it to give Kappos, who was confirmed as director by the Senate on Aug. 7, time to decide whether to rescind the rules. The PTO was slated to deliver its next brief by Oct. 20. According to Kappos, the PTO should create incentives for innovation by developing rules that help bring applicants’ products and services to the market. “These regulations have been highly unpopular from the outset and were not well received by the applicant community,” Kappos stated. “In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public.” In a statement, Sherry Knowles, GlaxoSmithKline’s senior vice president and chief intellectual patent counsel, said that the company applauds the PTO’s leadership because the rules “would have harmed innovation across all industries, and specifically would have deprived GSK and other manufacturers of the patent protection necessary to promote medical research and innovation.” “We look forward to working with David Kappos, the recently appointed Director of the USPTO, and others at the Patent and Trademark Office to ensure a patent law framework which promotes the investment that is essential to all innovation, and importantly, to discovering, developing and bringing lifesaving medicines to patients,” Knowles stated. The American Intellectual Property Law Association also issued a statement praising Kappos’ decision to rescind the “hugely unpopular rules package.” “We view this as a significant step by Director Kappos towards rebuilding the relationship between the USPTO and the user community,” said AIPLA’s executive director, Q. Todd Dickinson, in a statement. “Hopefully, we can now continue to move forward and work with the Director in a constructive way to address the challenges facing the USPTO.”

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