House of Representatives

• Patent Reform HR 1908, amendments for floor debate
• Patent Reform HR 1908, as passed

Senate

• Patent Reform S 1145, as introduced
• Patent Reform S 1145, details
• Patent Reform S 1145, summary

Comparison of HR 1908 and S 1145

• IPO Comparison: A comparison of HR 1908 (as passed by the House) and S 1145 (as reported out of the Senate Judiciary Committee) highlighting primary differences

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USPTO Rulemaking

• USPTO Website

Court blocks USPTO’s patent rule changes

On April 1, 2008, the U.S. District Court for the Eastern District of Virginia granted summary judgment for plaintiffs GlaxoSmithKline (GSK) and Tafas to permanently enjoin the United States Patent and Trademark Office (USPTO) from enforcing the USPTO’s recently enacted patent rule changes. While the USPTO can appeal the decision, this ruling postpones, and possibly prevents, the implementation of the Final Rules. Click here to read more about the consequences of the GlaxoSmithKline/Tafas decision.

Recent rule packages now in effect:

• Changes to Practice for Petitions in Patent Applications To Make Special and for Accelerated Examination (71 Fed. Reg. 36323, June 26, 2006)

Final rule packages not yet in effect:

Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications
Note: Due to a recent Preliminary Injunction issued on October 31, 2007, by the United States District Court for the Eastern District Court of Virginia, the changes to the rules of practice in the Claims and Continuations Final Rule, including the October 10 clarifications, did not go into effect on November 1, 2007.

• USPTO Web Page on the Continuation Rules package
• Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications; Final Rule (72 Fed. Reg. 46716, August 21, 2007)
• USPTO Summary: Highlights of the Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications this Final Rule
• “New USPTO Rules— How They Will Affect Your Business” (Nixon Peabody Presentation)

Proposed rule packages:

1. Information Disclosure Statements Requirements

New Rules Governing Information Disclosure Statements Approved

The White House Office of Management and Budget has approved a new rule package governing information disclosure statements and related matters. See http://www.reginfo.gov/public/do/eoViewRule?ruleID=255941. The rule package itself, as of December 12, 2007, has not been made public. Differences between the forthcoming rules and the originally proposed rules are expected.

• Changes To Information Disclosure Statement Requirements and Other Related Matters (71 Fed. Reg. 38808, July 10, 2006)

2. Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals

• Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals (72 Fed. Reg. 41472, July 30, 2007)
• Nixon Peabody Outline of Ex Parte Appeal Procedure Under the Proposed Rules

3. Alternative Claim Language Rules

• Proposed Alternative Claim Language (Changes to Markush Practice) (72 Fed. Reg. 44992, August 10, 2007)