Legislative interest in the patent system has been evidenced by substantial discussion of omnibus reform bills. Some of the reforms considered in the 110 th Congress, but ultimately not enacted, would have impacted the United States Patent and Trademark Office (USPTO). Alongside these congressional proposals, the USPTO itself has engaged in a substantial rulemaking effort in recent years. This process culminated in new rules that would make several significant changes to the patent acquisition process. First, the rules would limit the number of "claims" that can be filed in a particular patent application, unless the applicant supplies the USPTO with an "Examination Support Document" in furtherance of that application. Second, the rules would limit the number of "continued applications" that could be filed, absent a petition and showing by the patent applicant of the need for such applications. In addition, the USPTO has proposed reforms that would impose additional applicant disclosure obligations with respect to "Information Disclosure Statements" filed in support of a particular patent application. The USPTO rules concerning claims and continued applications are controversial. The USPTO has appealed this judgment. At the time of the publication of this report, this outcome of this appeal is not yet available. 1908 would have expressly provided the USPTO with regulatory authority to specify the circumstances under which a patent applicant may file a continuing application. Stated generally, a continued application is one that has been "re-filed" at the USPTO, commonly following the rejection of some or all of its claims. On the other hand, critics of the USPTO rules explain that continuation practice has a number of beneficial attributes. Legal challenges to the rules resulted in the April 1, 2008 decision in Tafas v. Dudas . There, the U.S. District Court for the Eastern District of Virginia concluded that the USPTO claims and continued application rules were substantive in nature. Because Congress has not granted general substantive rulemaking power to the USPTO, the District Court declared that the rules were void and therefore unenforceable. Congressional Issues and Alternatives

Should Congress conclude that the current situation with respect to the USPTO rulemaking is satisfactory, then no action need be taken. If Congress wishes to intervene, however, a number of options present themselves. One possibility would be to provide the USPTO with substantive rulemaking authority.
Congressional interest in the patent system has been evidenced by discussion of substantial reform bills in previous sessions. Alongside these congressional proposals, the United States Patent and Trademark Office (USPTO) has engaged in a significant rulemaking effort in recent years. This process culminated in new rules that would make several significant changes to the patent acquisition process.
First, the rules would limit the number of "continued applications" that could be filed, absent a petition and showing by the patent applicant of the need for such applications. Stated generally, a continued application is one that has been re-filed at the USPTO, commonly following an examiner's rejection. The USPTO has justified this limitation on the basis that the increasing number of continued examination filings is hampering its ability to review new applications.
Second, the rules would limit the number of "claims" that can be filed in a particular patent application, unless the applicant supplies the USPTO with an "Examination Support Document" in furtherance of that application. The USPTO asserts that these rules would lead to a more effective examination process.
Critics of the new rules contend that they will negatively impact the ability of innovators to obtain effective proprietary rights. Legal challenges to the rules resulted in the April 1, 2008 decision in Tafas v. Dudas. There, the U.S. District Court for the Eastern District of Virginia concluded that the USPTO claims and continued application rules were substantive in nature. Because Congress has not granted general substantive rulemaking power to the USPTO, the District Court declared that the rules were void and therefore unenforceable. The USPTO has appealed that judgment. At the time of the publication of this report, this outcome of this appeal is not yet available.
In addition, the USPTO has proposed reforms that would impose additional applicant disclosure obligations with respect to "Information Disclosure Statements" filed in support of a particular patent application. The USPTO has not yet taken action concerning this rule.
Should Congress conclude that the current situation with respect to claims and continued application practice at the USPTO is satisfactory, then no action need be taken. If Congress wishes to intervene, however, a number of options present themselves. Congress could expressly provide the USPTO with regulatory authority to specify the circumstances under which a patent applicant may file a continued application. Other possibilities include providing the USPTO with substantive rulemaking authority and more specific reforms directed to the relevant substantive provisions of the Patent Act.