On March 20, 2009, the Court of Appeals for the Federal Circuit ruled on an appeal of the U.S. Patent and Trademark Office (USPTO) attempt to amend their patent prosecution rules on continuing applications, requests for continued examination practices, and examination of claims in patent applications.

The Federal Circuit vacated the rules regarding continuation applications and remanded the others. The lower court will now decide whether the remaining rules are valid.

GlaxoSmithKline (GSK) had challenged the new rules under the Administrative Procedure Act (“APA”), 5 U.S.C. §§ 701 et seq. and the Patent Act, 35 U.S.C. §§ 1 et seq. The district court granted GSK’s motion for summary judgment and blocked rule implementation. Tafas and GSK v. Dudas, 541 F. Supp. 2d 805 (E.D. Va. 2008).

In the March 20 ruling, the Federal Circuit vacated the USPTO rule that attempted to limit continuation applications by requiring a petition when an applicant wants to file more than two continuation applications. The petition would require evidence that the amendment, argument, or evidence the applicant wants to enter was not already submitted during the prosecution of the prior-filed application.