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Update: Preliminary Injunction Halts Implementation of United States Patent and Trademark Office New Rules

On October 31, 2007, just one day before the United State Patent and Trademark Office’s (USPTO) new rules, as discussed in the Inside Indiana Business interview with Barbara Gibbs, were to go into effect, a federal court judge in Virginia ruled in favor of GlaxoSmithKline’s (“Glaxo”) request for a preliminary injunction to block the implementation of the new rules.

Among a number of changes, the USPTO’s proposed rules would (1) limit the number of times a patent applicant could contest rejected claims; (2) limit the number of claims an applicant could file in the patent application; (3) limit the number of applications an applicant could file; and (4) require the applicant in certain circumstances to prepare and file a comprehensive “Examination Support Document.” Glaxo’s request for the injunction was based on the USPTO acting outside of its authority in promulgating such regulations. In other words, only Congress, and not the USPTO, has the authority to impose rules such as those noted above. Had the injunction not been granted, many of these rules also would have been implemented retroactively.

While that patent bar as a whole was surprisingly hesitant to challenge the USPTO’s attempt to impose the new rules (e.g., only Glaxo and an independent inventor initially challenged the rules), several organizations now have requested permission to submit amicus curić (friends of the court) briefs in support of Glaxo’s challenge. These organizations include American Intellectual Property Lawyers Association, IBM, Biotechnology Industry Organization, Elan Pharmaceuticals, Human Genome Sciences, Pharmaceutical Research and Manufacturers of America, HEXAS and others.

The ultimate outcome of Glaxo’s challenge is uncertain. Unless the USPTO voluntarily withdraws its attempt to implement the new rules, it will likely be several months or longer before the challenge is resolved. Meanwhile, the U.S. patent bar has breathed a huge and collective sigh of relief.

For more information, please contact one of the co-chairs of the Bose McKinney & Evans Intellectual Property Group:
          Jim Coles 317-684-5251
          Craig Pinkus 317-684-5358