FW: Federal court strikes down new patent rules

Federal court strikes down new patent rules

 

The US District Court for the Eastern District of Virginia on Tuesday rejected new US Patent and Trademark Office rules that would have retroactively limited the number of claims that can be included in a patent application and the number of times a continuation application can be filed for a given invention. The court ruled that the new rules were "substantive in nature" and therefore beyond the scope of the USPTO's authority to govern the submission procedure of patent application.

 

The lawsuit challenging the new rules was brought by pharmaceutical company GlaxoSmithKline, which has approximately 100 applications pending at the USPTO. Supporting the company was the American Intellectual Property Law Association, which filed an amicus curiae brief. In October, a judge enjoined decision, the USPTO from implementing the new rules pending a ruling on their validity.

 

In a twenty-six page opinion, District Court Judge Cacheris has granted GSK’s and Tafas’s Motions for Summary Judgment — finding the PTO’s proposed limitations to the number of continuation applications and claims per patent to be improper extensions of PTO authority:

 

“Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as ‘otherwise not in accordance with law’ and ‘in excess of statutory jurisdiction [and] authority.’ 5 U.S.C. § 706(2).”