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The U.S. District Court for the Eastern District of Virginia has issued a preliminary injunction preventing the United States Patent and Trademark Office ("USPTO") from implementing the new rule changes regarding claims and continuations (originally effective, November 1, 2007).

After the rules were published on August 21, 2007, two separate lawsuits, Triantafyllos Tafas v. Dudas and GlaxoSmithKline et al v. Dudas, were filed in the U.S. District Court for the Eastern District of Virginia challenging the USPTO’s authority to implement the sweeping changes in the Claims and Continuations Final Rule. The plaintiffs in the two cases sought to block implementation of the finalized rules by the USPTO and its Director, Jon Dudas.

On October 31, 2007, a preliminary injunction hearing was held. Several interested parties, such as the American Intellectual Property Law Association, Pharmaceutical Research and Manufacturers of America, and Biotechnology Industry Organization, also submitted briefs opposing the new rules.

Following the hearing, the judge issued an order preliminarily enjoining the USPTO from:

Implementing the Final Rules titled “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications,” published in the Federal Register on August 21, 2007 and which were to be effective November 1, 2007; and
Issuing new regulations restricting the number of continuing applications, the number of requests for continued examination (RCEs), and the number of claims that may be filed with the USPTO.

The preliminary injunction prevents implementation of all the Final Rules, including the rules that limit the number of claims without the submission of an examination support document, the number of continuations, and the number of RCEs per application family and the new rules requiring the reporting of “related” applications.

However, a preliminary injunction is not a permanent solution. It only prevents the USPTO from implementing the Claims and Continuations Final Rules until the Court resolves the underlying legal and factual issues. While this determination will likely take at least 3-6 months, only a final ruling against the USPTO will make the preliminary injunction permanent. During this period, the USPTO may appeal the preliminary injunction, in which case a higher court may lift the preliminary injunction sooner, in whole or in part, although we do not expect that to happen.

We suggest that after November 1, patentees take full advantage of the existing rules by, among other things, filing the appropriate RCEs and continuations and proceeding in a fashion that would make complying with the Final Rules less burdensome if the preliminary injunction is lifted.


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	The U.S. District Court for the Eastern District of Virginia has issued a preliminary injunction preventing the United States Patent and Trademark Office ("USPTO") from implementing the new rule changes regarding claims and continuations (originally effective, November 1, 2007). After the rules were published on August 21, 2007, two separate lawsuits, Triantafyllos Tafas v. Dudas and GlaxoSmithKline et al v. Dudas, were filed in the U.S. District Court for the Eastern District of Virginia challenging the USPTO’s authority to implement the sweeping changes in the Claims and Continuations Final Rule. The plaintiffs in the two cases sought to block implementation of the finalized rules by the USPTO and its Director, Jon Dudas. On October 31, 2007, a preliminary injunction hearing was held. Several interested parties, such as the American Intellectual Property Law Association, Pharmaceutical Research and Manufacturers of America, and Biotechnology Industry Organization, also submitted briefs opposing the new rules. Following the hearing, the judge issued an order preliminarily enjoining the USPTO from: Implementing the Final Rules titled “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications,” published in the Federal Register on August 21, 2007 and which were to be effective November 1, 2007; and Issuing new regulations restricting the number of continuing applications, the number of requests for continued examination (RCEs), and the number of claims that may be filed with the USPTO. The preliminary injunction prevents implementation of all the Final Rules, including the rules that limit the number of claims without the submission of an examination support document, the number of continuations, and the number of RCEs per application family and the new rules requiring the reporting of “related” applications. However, a preliminary injunction is not a permanent solution. It only prevents the USPTO from implementing the Claims and Continuations Final Rules until the Court resolves the underlying legal and factual issues. While this determination will likely take at least 3-6 months, only a final ruling against the USPTO will make the preliminary injunction permanent. During this period, the USPTO may appeal the preliminary injunction, in which case a higher court may lift the preliminary injunction sooner, in whole or in part, although we do not expect that to happen. We suggest that after November 1, patentees take full advantage of the existing rules by, among other things, filing the appropriate RCEs and continuations and proceeding in a fashion that would make complying with the Final Rules less burdensome if the preliminary injunction is lifted.

November 1, 2007 New USPTO Rules Enjoined

November 1, 2007
New USPTO Rules Enjoined