On April 1, 2008, United States District Court Judge James Cacheris (E. D. Va.) issued an opinion and order invalidating the U.S. Patent and Trademark Office's (USPTO) “Claims and Continuations” rules that were published on August 21, 2007, with an original effective date of November 1, 2007. The court had granted a preliminary injunction against the rules on October 31, 2007, and now has permanently enjoined the USPTO from implementing the rules. The court found that the rules “are substantive in nature and exceed the scope of the USPTO's rulemaking authority.”
On October 31, 2007 in Smithkline Beecham Corp. v. Dudas, Civ. Action No. 1:07cv1008 (E.D. Va.), Senior Judge Cacheris issued a preliminary injunction blocking the United States Patent and Trademark Office's (USPTO) Claims and Continuations Rules from taking effect on November 1, 2007 (tomorrow). This appears to give patent applicants a reprieve from the rules until the court decides their validity.
GSK has challenged the rules on many grounds, including that the rules are (1) beyond the USPTO's limited rulemaking authority, (2) contrary to 35 U.S.C. SS 120, (3) having retroactive effect, (4) vague, and (5) arbitrary and capricious. The briefing schedule for the trial has not been finalized, but the trial is not expected to begin until at least mid-December.
While the legal landscape surrounding the USPTO rules is uncertain, Foley & Lardner LLP will continue to monitor the situation and advise clients on developing effective strategies on a case-by-case basis.
The United States Patent and Trademark Office (USPTO) officially published its new claims and continuations rules on August 21, 2007 which were to have gone into effect on November 1, 2007. The rules, which are aimed at improving patent quality and efficiency may have a major impact on how companies obtain patents, i.e., on pending applications in portfolios, as well on strategy for filing new applications.
A poll asking attendees, “Which category of rule changes are most likely to impact your business?” at the September 12, 2007 Web Conference, USPTO Director Jon Dudas and IP Professionals Discuss New USPTO Claims and Continuations Rules and Their Practical Implications, revealed that while the rules affect companies differently, a 57.5% majority said that Continuations/ Requests for Continued Examinations (RCE)s would have a greater impact on them over Claim Limits/ Examination Support Documents (ESD)s or Related Applications. The principle rule changes are categorized into three main areas:
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Continuations/RCEs
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Claim Limits/ESDs
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Related Applications
Importantly, there are immediate and longer-term steps companies need to implement to address the new rules. Specific steps and action items can be found within the publications and resources on this page.
For further USPTO resources, please see below:
If you have further questions about the claims and continuations rules, please contact Sharon Barner, Chair, Intellectual Property Department at sbarner@foley.com or 312.832.4569.
