News

No USPTO rule changes

3 April 2008

On 1 April 2008, a federal judge in the US District Court for the Eastern District of Virginia handed down his decision in respect of the US Patent Office's (USPTO) proposed Rule changes for which GlaxoSmithKline (GSK) had obtained a preliminary injunction. The Rule changes proposed by the USPTO included limitations with respect to the number of continuation applications that could be filed before the USPTO, in addition to limitation to the number of claims contained within a single patent application. Further information on these Rule changes can be found in our report of the GSK injunction in November 2007.

The issue before the judge was whether the USPTO had the jurisdiction and authority to make Rule changes which, according to GSK, were 'substantive changes' and therefore extended beyond the USPTO's authority to make 'procedural changes'.

In the judgment the District Court Judge decided in favour of GSK and concluded that "the USPTO's rulemaking authority... does not extend to substantive rules", that the rules proposed by the USPTO were "substantive in nature" and therefore the proposed rule changes "are VOID as otherwise not in accordance with law and in excess of statutory jurisdiction [and] authority".

For now this is good news for proprietors of US patents, as these Rule changes would result in major transformations to the requirements of the procurement of patents before the USPTO. However, it is unlikely that the USPTO will put their proposed changes to rest at this stage, and therefore an appeal before the US Court of Appeals for the Federal Circuit is almost certainly expected.

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