April 2, 2008Client Alert

Controversial Patent Office Rules Permanently Enjoined

Yesterday, April 1, 2008, the United States District Court for the Eastern District of Virginia permanently enjoined the U.S. Patent and Trademark Office (the "Office") from implementing its new rules relating to limitations on the number of continuing patent applications that an applicant can file and the number of claims that can be filed per patent application.

The same rules, titled "Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications," ("Final Rules") made final by the Office and published August 21, 2007 (72 Fed. Reg. 46, 716-843), were to go into effect on November 1, 2007, but were preliminarily enjoined by the same court as a result of the consolidated suit brought by plaintiffs Smithkline Beecham Corporation (d/b/a GlaxoSmithKline; Docket No. 1:07cv1008) and Triantafyllos Tafas (Docket No. 1:07cv846).      

The Final Rules delineated changes to the examination process that would limit the number of continuing applications and requests for continuing examination ("RCEs") that an applicant can make as a matter of right.  The Final Rules would have also limited the number of claims per patent application that an applicant can make as a matter of right before triggering a requirement to submit an "Examination Support Document" including, among other things, a pre-examination search statement, a listing of references deemed most closely related to the subject matter of each of the claims, and a detailed explanation particularly pointing out how each of the independent claims is patentable over the these references.  The Office justified these changes on the ground that the growing number of continuation applications and increasing number and complexity of claims in applications had crippled the Office’s ability to examine newly-filed applications. 

In the court's opinion, the Office, in promulgating the Final Rules, overstepped its statutory jurisdiction and authority because the Final Rules were "substantive" in nature (i.e., affecting patent applicant's rights under the Patent Act), rather than "procedural" (i.e., relating to expediting and processing patent applications).  As a basis for its decision, the court recognized the long-standing precedent of the U.S. Court of Appeals for the Federal Circuit that 35 U.S.C. 2(b)(2) does not vest the Office with any general substantive rulemaking power.  Although other issues were raised by the plaintiffs and briefed to the court, the court treated this issue as dispositive.  

Although the Office may appeal the court's decision to lift all or part of the permanent injunction, pending the outcome of such an appeal, the Final Rules are inoperative. 

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