On August 21, 2007, the USPTO published new rules altering the manner in which continuing applications and requests for continued examination could be filed. These new rules represented a drastic departure from traditional practice, and consequently, generated a considerable reaction from the patent community. While some members of the patent community supported the new rules, many others felt that the rules would be insufficient in promoting the USPTO’s goals, and served mainly as an unnecessary roadblock to good-faith patent prosecution. Prior to the rules going into effect, they were challenged in the case Tafas v. Dudas. In Tafas, the district court judge voided the rules as being beyond the scope of the USPTO’s rulemaking authority. The USPTO, however, does not seem inclined to let the rules die so easily, and some form of the rules may still come into effect. Accordingly, this comment examines the possible effect that the rules may have on different parties and proposes a number of alternative, less-intrusive, means of achieving the USPTO’s goals.
Scott D. Barnett, The Controversy Surrounding Continuing Applications and Requests for Continued Examination, 7 J. Marshall Rev. Intell. Prop. L. 545 (2008)