U.S. District Court enjoins USPTO rule changes

U.S. District Court Judge James Cacheris in the Eastern District of Virginia yesterday enjoined the United States Patent & Trademark Office (USPTO) from putting into effect rules changes that would have mightily burdened inventors seeking to obtain U.S. patents.  While the preliminary injunction is not a final order, the District Court effectively held the proposed rule making to violate the Constitution, to exceed the USPTO's administrative authority, and to offend the Administrative Procedures Act.  You can view the opinion here.

The new rules were challenged by pharmaceutical company SmithKline Beecham Corporation, and yesterday's decision came just one day before their effective date.  The changes would have severely limited the number of claims presented in any patent application and also would have severely limited the number of related continuation applications an applicant could file, with retroactive effect.  Other onerous prior art search and reporting requirements, potentially harmful admissions, and attendant costs would have befallen patent applicants.

The preliminary injunction was received with a collective sigh of relief from individuals, companies and patent practitioners poised in some cases to file last-minute continuations or requests for continuing examination. 

Stay tuned, however, as this over-reaching attempt by the USPTO may be seen as a side-show to the real thing:  pending legislative patent reform that could have even broader implications for applicants for US patents as US patent law is dragged kicking and screaming into harmony with patent laws elsewhere in the world.