A district court ruling yesterday has temporarily blocked the efforts of the U.S. Patent and Trademark Office (USPTO) to impose a set of rule changes that many expected to have severe and wide-ranging effects on the practice of patent law prosecution. Judge James C. Cacheris of the U.S. District Court for the Eastern District of Virginia issued an order on October 31, 2007, preliminarily enjoining the USPTO from implementing the final rules limiting the number of permitted claims and continuation filings (72 Fed. Reg. 46716, August 21, 2007), and from issuing new regulations restricting the number of continuing applications, the number of requests for continued examination and the number of claims that may be filed with the USPTO. The new rules were set to come into effect today, November 1, 2007.
This order was the result of two consolidated cases separately brought by plaintiffs Triantafyllos Tafas and GlaxoSmithKline. The complaints alleged that the USPTO exceeded its congressionally delegated rulemaking authority and that the new rule changes specifically violate §§ 120, 132 and 365 of the Patent Act. It was further asserted that the USPTO failed to comply with the Administrative Procedure Act, engaged in retroactive rulemaking and has failed to consider USPTO-induced reasons for multiple continuation filings.
Reaction from the USPTO was swift. On the afternoon of the decision, Deputy Commissioner Peggy A. Focarino issued a memo to the Patent Examining Corps acknowledging the order and that the changes to the rules would not go into effect on November 1, 2007. The memo further instructed USPTO employees to continue processing and examining patent applications under the current rules and procedures.
The preliminary injunction will stay in effect until entry of a final judgment in the ongoing lawsuits—likely a period of several months at least.