Federal Court Temporarily Enjoins U.S. Patent and Trademark Office from Implementing Final Rules on Claims and Continuations

By Linda B. Truong
[November 2007]

On Oct. 31, 2007, GlaxoSmithKline (GSK) scored one for inventors when a federal court in the Eastern District of Virginia ruled in its favor, granting a preliminary injunction preventing the U.S. Patent and Trademark Office (PTO) from implementing its Final Rules on Claims and Continuations.¹

Announced on Aug. 21 and originally set to be effective on Nov. 1, the Final Rules: (1) required that patent applicants provide the PTO with a report, for each pending application, of all applications and issued patents that share common inventorship, ownership, and a similar filing or priority date with the pending application; (2) restricted the number of claims that can be included in a patent application, and in each family of applications associated with a particular invention, unless an examination support document (ESD) is filed; (3) reduced the number of continuation applications and requests for continued examination that may be filed without a petition and showing; and (4) created a presumption that a family of applications with “patentably indistinct” claims exists if there is overlapping disclosure and a common filing/priority date, but permit the applicant only a limited time to rebut the presumption if the allegedly “indistinct” claims are, in fact, “patentably distinct.”² The impact of the Final Rules on all patent applications and applicants’ rights would have been significant.

GSK filed suit against the PTO and its Director, challenging the PTO’s authority to issue and impose the Final Rules, seeking a preliminary and a permanent injunction to prevent the implementation of the Final Rules, and requesting that the Final Rules be abolished.³ The merits of GSK’s claims will be considered in the months ahead. Nonetheless, the court’s opinion⁴ at least suggests that it may side with GSK, in that (1) the limit on the number of continuing applications exceeds the PTO’s rulemaking authority; (2) the Final Rules impose new duties that cannot be made retroactive; and (3) the requirements of an ESD are unconstitutionally vague. The court also noted that the many amicus briefs urging for a preliminary injunction provided further evidence of the potential immediate harm.⁵ Furthermore, the court stated that public interest in having a stable patent system is best served by preserving the status quo until the issues of the case are resolved. As a result of the preliminary injunction, the PTO has announced that patent applications are to be processed and examined under the current rules and procedures until further notice.⁶

FOOTNOTES

1 See Mem. Op. in Tafas v. Dudas, No. 1:07cv846 (E.D. Va., Aug. 22, 2007). (SmithKline Beecham Corp. v. Dudas, No. 1:07cv1008, (E.D. Va., Oct. 9, 2007) was consolidated with Tafas v. Dudas.)
2 See CHANGES TO PRACTICE FOR CONTINUED EXAMINATION FILINGS, PATENT APPLICATIONS CONTAINING PATENTABLY INDISTINCT CLAIMS, AND EXAMINATION OF CLAIMS IN PATENT APPLICATIONS, 72 Fed. Reg. 46716 (Aug. 21, 2007).
3 See GSK’s Am. Compl.
4 See footnote 1.
5 See amicus briefs by Elan Pharmaceuticals, Inc., American Intellectual Property Law Association, and Hexas, LLC.
6 See www.uspto.gov.

For more information, please contact:

George C. Rondeau, Jr., Seattle, Washington, (206) 622-3150, georgerondeau@dwt.com
William A. Birdwell, Portland, Oregon, (503) 241-2300, billbirdwell@dwt.com
Seth D. Levy, Los Angeles, California, (213) 633-6800, sethlevy@dwt.com
James S. Hsue, San Francisco, California, (415) 276-6500, jameshsue@dwt.com
Linda B. Truong, Los Angeles, California, (213) 633-6800, lindatruong@dwt.com

This advisory is a publication of Davis Wright Tremaine LLP. Our purpose in publishing this advisory is to inform our clients and friends of recent legal developments. It is not intended, nor should it be used, as a substitute for specific legal advice as legal counsel may be given only in response to inquiries regarding particular situations. Attorney Advertising. Prior results do not guarantee a similar outcome.

Copyright © 2007, Davis Wright Tremaine LLP.

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