Court Ruling Delivers Blow to USPTO - Finds New Patent Rules Invalid

April 2008

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

A judge in the Eastern District of Virginia has granted summary judgment in favor of two parties challenging the U.S. Patent and Trademark Office (USPTO) new rules regarding limitations on the number of claims in an application, the number of continuation applications and the number of Requests for Continued Examinations, which were published August 21, 2007. The summary judgment in favor of the parties Triantafyllos Tafas and SmithKline Beecham Corporation renders the new rules void.

The Court summarized that, "[b]ecause the USPTO's rulemaking authority...does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as 'otherwise not in accordance with law' and 'in excess of statutory jurisdiction [and] authority.'"

The USPTO has the opportunity to appeal this decision. Our firm is monitoring the situation and will provide further information as it becomes available.

Temporary Halt to Implementation of New Patent Rules 
On Oct. 31, 2007, the U.S. District Court for the Eastern District of Virginia preliminarily enjoined the United States Patent Office (USPTO) from implementing new patent rules, which include limits on the number of claims in applications and the number of Continuation/ Continuation-in-Part applications. The new patent rules were scheduled to go into effect on Nov. 1, 2007. The Court ruling stems from two lawsuits that were filed against the USPTO challenging the legality of the new rules. It is possible that the USPTO will file an appeal of the preliminary injunction.

As we do with every development, we will closely monitor the situation and work with our clients to develop strategies that support their business goals.

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April 2008

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

A judge in the Eastern District of Virginia has granted summary judgment in favor of two parties challenging the U.S. Patent and Trademark Office (USPTO) new rules regarding limitations on the number of claims in an application, the number of continuation applications and the number of Requests for Continued Examinations, which were published August 21, 2007. The summary judgment in favor of the parties Triantafyllos Tafas and SmithKline Beecham Corporation renders the new rules void.

The Court summarized that, "[b]ecause the USPTO's rulemaking authority...does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as 'otherwise not in accordance with law' and 'in excess of statutory jurisdiction [and] authority.'"

The USPTO has the opportunity to appeal this decision. Our firm is monitoring the situation and will provide further information as it becomes available.

Temporary Halt to Implementation of New Patent Rules 
On Oct. 31, 2007, the U.S. District Court for the Eastern District of Virginia preliminarily enjoined the United States Patent Office (USPTO) from implementing new patent rules, which include limits on the number of claims in applications and the number of Continuation/ Continuation-in-Part applications. The new patent rules were scheduled to go into effect on Nov. 1, 2007. The Court ruling stems from two lawsuits that were filed against the USPTO challenging the legality of the new rules. It is possible that the USPTO will file an appeal of the preliminary injunction.

As we do with every development, we will closely monitor the situation and work with our clients to develop strategies that support their business goals.

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