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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.
Copyright
© 2007, Davis Wright Tremaine LLP.
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