Federal Court Voids Changes to Patent Office Rules on Continuation & Claims Practice


On April 1, 2008, the United States District Court for the Eastern District of Virginia declared void the “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications,” 72 Fed. Reg. 46716-46843 (August 21, 2007) (“Final Rules”), proposed by the United States Patent and Trademark Office (“USPTO”). Judge James C. Cacheris granted Summary Judgment in favor of plaintiffs GlaxoSmithKline and Triantafyllos Tafas and permanently enjoined the USPTO from implementing the Final Rules that were to have taken effect on November 1, 2007.[1]

The Final Rules imposed limits on the number of continuing applications, requests for continued examination (“RCEs”), and continuation-in-part applications and the number of claims permissible as of right in a given patent application family and, in certain circumstances, added the requirement for an onerous examination support document (“ESD”).

Citing precedent from the United States Supreme Court and the United States Court of Appeals for the Federal Circuit, the court held that 35 U.S.C. § 2(b)(2) does not permit the USPTO to issue substantive rules or render substantive decisions interpreting the Patent Act. The court also based

its decision on Congress’s failure to confer upon the USPTO substantive rulemaking authority as part of Patent Reform legislation proposed since 2005.

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