Canada: Possible Relief For Patent Applicants: A U.S. Court Voids The New U.S. Rules Of Practice On Number Of Claims And Continuation Applications

Last Updated: June 5 2008
Article by Serge Lapointe, Ph.D.

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 changes3.

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 presently understood".

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.


1. A copy of the twenty-six page decision is available at

2. See United States Patent & Trademark Office website, Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, Final rule

3. As reported earlier in our annual synopsis of the year's significant IP-related decisions Intellectual Property: The Year 2007 in Review available at

4. Serge Lapointe, The Disproportionate Negative Impact for the Biotech and Pharma Industries of the New U.S. Rules of Practice on Claims and Continuation Applications, Life Sciences Newsletter, April 2008, pp14-15.

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

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

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.