USPTO Temporarily Blocked From Implementing New Patent Rules

The US District Court for the Eastern District of Virginia has granted a preliminary injunction in Smithkline Beecham Corporation et al v Jon W Dudas et al (which was consolidated with Triantyfyllos Tafas v John Dudas), enjoining the USPTO from implementing its new patent application rules on claims and continuations (New Rules). The injunction was handed down on October 31, 2007, one day before the New Rules, titled "Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications" were to come into force (For a summary of the New Rules see an earlier issue of E-TIPS®, "USPTO Makes Changes to the Patent Application Rules" Vol 6, No 5, August 29, 2007). The Plaintiffs in these actions argued that the New Rules were arbitrary and capricious and prevented them from fully prosecuting applications for their inventions. The USPTO countered that it was in the public's interest to enact the New Rules, because they promote efficiency and timeliness and alleviate uncertainty in the current system. The Office further argued that an injunction should not be granted, because during any injunction period there would be great uncertainty about which rules to follow. At least for the moment, the Court sided with the plaintiffs, and held that implementing rules that may or may not remain would cause more uncertainty then the grant of a preliminary injunction. In light of the decision, the USPTO has posted a notice on its web site (Notice) informing applicants that patent applications will continue to be processed and examined by the rules in effect on October 31, 2007, until further notice. For text of the New Rules, see: http://www.uspto.gov/web/offices/com/sol/notices/72fr46716.pdf For the injunction order, visit: http://tinyurl.com/2qsgnq For the USPTO Notice, see: http://tinyurl.com/2fyudh Summary by: Michael Migus