Applicants Get Extended Relief From Proposed Continuations and Claims Rules

On April 1, 2008, the United States District Court for the Eastern District of Virginia granted a Summary Judgment Motion for Plaintiffs Smithkline Beecham Corporation, doing business as GSK (1:07cv1008), and Triantafyllos Tafas (1:07cv846) in the litigation involving the proposed Continuation and Claims Rules.  The controversial rule proposals would have restricted Applicants ability to file continuation applications (the 2+1 Rule), and would have limited the number of examined claims (the 5/25 Rule) and would have required an Examination Support Document (ESD). The court found for each proposal that the USPTO’s rule changes were substantive in nature and exceed the scope of the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2).  The effect of the Court’s decision is that the previously granted preliminary injunction against the implementation of the Rules by the USPTO is continued.  While the USPTO can appeal this decision to the Court of Appeals for the Federal Circuit, even if successful, it is unlikely that the USPTO would be able to implement these or similar Rules in the near future.  This decision does not directly affect the proposed IDS Rules, the proposed Appeals Rules or the proposed Alternative Claim Rules.