News

Changes to US Patent Practice Delayed

02 Nov 2007

GlaxoSmithKline and an individual inventor, Triantafyllos Tafas have successfully delayed implementation of the changes to US patent practice proposed by the USPTO.

In its 21 August Federal Register notice, the USPTO proposed new rules on:

• the number of continuation applications allowed
• the number of claims allowed in each application
• the obligation to disclose related applications to the USPTO.

The new rules were due to come into effect on 1 November 2007 but will not come into force until the dispute is resolved.

A senior judge in the U.S. District Court for the Eastern District of Virginia granted a preliminary injunction on 31 October preventing implementation of the new rules. You can read a copy of the judge's decision here. Interestingly, one of his main reasons for granting the injunction was that he agreed with GSK that the USPTO does not have substantive rule making authority under 35 U.S.C, the US Patent Act.

Unfortunately this decision means applicants cannot be sure if and when the USPTO will fully implement the new rules. There are rumours the summary judgment hearing due for December will be delayed by a USPTO request for more time. We also expect the party that loses this dispute will appeal. The USPTO could also appeal the order granting the injunction. If the USPTO appeals that would further delay the summary judgment hearing.

In the meantime it is presumably business as usual. It is not clear how quickly the USPTO will examine applications on file while the court action is pending. After the USPTO released the new rules on 21 August, examinations did slow right down. It is possible the USPTO will try and delay some applications (such as those with more than 5/25 claims) until a final decision is reached.

Please contact us if you would like more information.