United States: USPTO Rules Changes Stopped By Injunction

As reported in the September issue of IP Update (Vol. 10, No. 9) the rule changes that were set to come into effect on November 1, 2007, were introduced by the U.S. Patent and Trademark Office (USPTO) in the face of a growing backlog of applications. A September 2007 General Accounting Office (GAO) report to Congress quantifies the current backlog at 730,000 applications. The USPTO also reported that in fiscal year 2007, its almost 5,000 patent examiners examined approximately 360,000 applications.

The rule changes were drastic—the previously unlimited numbers of claims in an application were effectively limited to five independent and 25 total claims. In addition, the new rules allowed for only two continuing applications and one request for continuing examination during prosecution of a patent application. (IP Update, Vol. 10, No. 9). The intent, said the USPTO, was to make the patenting process more effective and more efficient.

The public response was immediate. The day after the USPTO announcement, individual inventor Tafas filed suit against the USPTO, seeking to enjoin implementation of the new rules. A few weeks later, this initial attack was strongly reinforced when pharmaceutical giant Glaxo SmithKline (GSK) joined the suit. In the meantime, under an air of uncertainty following the initial USPTO announcement, firms scrambled to understand the rule changes and to prepare their clients to deal with their effects.

However, on October 31, 2007—just one day before the rules were to take effect—a dramatic turn of events occurred. Judge James C. Cacheris of the U.S. District Court for the Eastern District of Virginia, at the conclusion of a long, tense and packed hearing, issued an order preliminarily enjoining the proposed rule changes from coming into force. The USPTO hurriedly informed its personnel of the injunction.

In reaching its decision, the court analyzed the four factors relevant necessary to provide preliminary injunctive relief: the likelihood of success on the merits of Tafas’ and GSK’s claims; whether irreparable harm would occur if the injunction were not granted; the balance of hardships between parties; weighing of the public interest.

Regarding likelihood of success on the merits, the plaintiffs successfully argued that Congress never granted the USPTO authority to make substantive rule changes, which effectively truncated a statutory entitlement to file continuation applications, as well as that the rule changes were indeed substantive. Furthermore, the plaintiffs argued (apparently persuasively) that the rule changes were unfairly retroactive since many pending applications that would be subject to the new rules had long since been published, effectively extinguishing any trade secrets they contained, even though the new rules effectively limited the applicant’s ability to exhaustively claim the subject matter they disclosed and vague.

As for irreparable harm, the court agreed that GSK had shown it was likely to suffer irreparable harm if the injunction was not granted due to a loss of patent rights in their over 2,000 pending patent applications. GSK convinced the court that the new rules would truncate the number of available claims and that therefore the full patent protection of the inventions developed and applied for under the old rules would not be granted.

On the balance the hardships, the USPTO alleged that because of the millions of dollars spent in training staff and retooling computers, they would endure the hardship of stopping and reversing course in the midst of massive changes to their organization. However, GSK argued that the harm suffered by the USPTO is in the form of sunk costs already incurred for actions taken to implement rules that they knew might not go into effect. As such, any costs incurred by a preliminary injunction would be merely to maintain the status quo. Although the court agreed that the USPTO would have some hardship, it found that the uncertainty and loss of investment that would be suffered immediately by GSK tipped the balance in its favor.

As to the public interest factor, the USPTO argued that the rule changes would promote efficiency and timeliness and were needed immediately to lessen the harm inventors suffer due to the untenable delays under the current rules. The USPTO also argued that an injunction would only serve to spread further uncertainty as how to proceed with prosecution. However, GSK asserted that preserving the status quo would best serve patent holders. The three amicus briefs (filed in support of the motion for preliminary injunction) served to demonstrate to Judge Cacheris the depth of the opposition to the new rule changes, as well as how prevalent that opposition was in many diverse organizations. In weighing this factor, Judge Cacheris concluded that the public interest factor was weighed in favor of preserving the status quo.

Considering all the factors, Judge Cacheris granted the motion and enjoined the USPTO. As a result the patent community can take a (very short) deep breath and return to business as usual—for now. A trial on the merits is scheduled in early 2008 and it is expected that the case will be decided later next year. Meanwhile, the parties are engaged in public bickering over the plaintiffs’ discovery requests to the USPTO (which include notices to depose high ranking USPTO officials). While all this is going on, the USPTO is reportedly busy working on more rule changes.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions