Federal judge blocks new US Patent Office rules changing application process

[JURIST] A federal judge Wednesday enjoined [order and memorandum decision, PDF] the US Patent and Trademark Office (USPTO) [official website] from implementing new rules [FR final rule notice, PDF] that would have limited the number of claims that can be included in a patent application and the number of times a continuation application can be filed for a given invention. Judge James Cacheris of the Eastern District of Virginia [official website] found that there was a likelihood of harm to inventors who currently have applications pending at the USPTO, as the rules would apply retroactively. The USPTO devised the rules to improve administrative efficiency by clearing a backlog of applications in the office, and streamlining future applications. In a statement responding to the injunction on the USPTO website Thursday, the office said:

On October 31, 2007, the United States District Court for the Eastern District Court of Virginia issued a Preliminary Injunction enjoining the USPTO from implementing the changes in the Claims and Continuations Final Rule. Therefore, the changes to the rules of practice in the Claims and Continuations Final Rule will not go into effect on November 1, 2007.

USPTO employees are to continue processing and examining patent applications under the rules and procedures in effect on October 31, 2007, until further notice.
The injunction will remain in effect until a final ruling is issued in the case.

The suit in question was brought by pharmaceutical company GlaxoSmithKline [corporate website], who itself has approximately 100 applications pending at the USPTO. Supporting the company was the American Intellectual Property Law Association (AIPLA) [advocacy website], who filed an amicus curiae brief [PDF text; Patently-O report], opposing implementation of the new patent examination rules. Reuters has more.

 

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