Many patent applicants doing business in the United States
must have celebrated on April 1st, 2008 when they
learned that Judge James C. Cacheris, Senior Judge sitting in
the U.S. District Court for the Eastern District of Virginia,
issued his much-anticipated decision voiding the sweeping new
United States Patent and Trademark Office (USPTO) rules of
practice, primarily directed to claims and continuation
applications (the New rules)1.
Briefly, the New rules issued by the USPTO on August
1st, 2007 were crafted to significantly limit the
number of continuation applications, continuation-in-part
applications and requests for continued examination (RCE) that
could be filed by an applicant2. The New rules were
also designed to strongly discourage applicants from filing
more than five independent claims or more than 25 total claims.
Initially set to come in force on November 1st last
year, the New rules had not been implemented because
Dr. Triantayllos Tafas, an independent inventor, and the
pharmaceutical company GlaxoSmithKline (GSK) successfully
obtained at the last minute a temporary order preventing the
USPTO from implementing its contentious
On April 1st, the District Court granted
Tafas' and GSK's motions for summary judgement
and declared the New rules "null and void" as
"otherwise not in accordance with law" and "in
excess of statutory jurisdiction [and] authority." The
Court thus permanently enjoined the USPTO, its director and
employees from implementing the New rules.
The Court ruled that the proposed New rules were substantive
rather than procedural, as the USPTO had argued, and that the
Office therefore did not have the authority to promulgate them.
Although the U.S. Patent Act empowers the USPTO to
"establish regulations, not inconsistent with law",
and to "govern the conduct of proceedings in the
Office", the USPTO is not vested with any "general
substantive rulemaking power", the Judge said. The Court
then found that the proposed New rules are "substantive
rules that change existing law and alter the rights of
applicants such as GSK and Tafas under the Patent Act".
According to the Judge, the New rules "constituted drastic
departure from the terms of the Patent Act as they are
In particular, the Court found that the changes affecting
continuation practice are substantive because they impose a
"hard limit" that "deprives applicants of their
valuable rights [...] to an unlimited number of continuation
and continuation-in-part applications as a matter of
right", With respect to the rule limiting RCEs, the Court
determined that "limiting RCEs based on application family
is a clear departure from the language of the statute, which
states that the USPTO must provide for the continued
examination of each application". The Court also
found substantive the New rules on the number of permissible
claims because it would require filing of an Examination
Support Document (ESD) containing detailed and specific
information about the "prior art" and the
patentability of the invention. According to the Judge, this
obligation "[goes] far beyond merely requiring additional
information". Instead, "the ESD requirement changes
existing law and alters the right of the applicants under the
current statutory scheme by shifting the examination burden
away from the USPTO and onto applicants".
Patent applicants and practitioners largely expressed relief
with the publication of this decision because an adverse ruling
may have had a profound negative effect on applicants'
patent practice, especially for those in the chemical,
biotechnology and pharmaceutical industries4.
Because this ruling could be considered to restrict the
ability of the USTPO to issue new rules in the future, many
observers expect an appeal. Therefore, depending on whether the
decision is appealed, it may be months, or more than a year,
before the ultimate fate of the New rules is determined.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).