Injunction Issued Against USPTO Patent Claim and Continuation Limits

As described in previous posts on this website, on August 21, 2007 the U.S. Patent and Trademark Office published a set of significant changes to its rules governing patent applications. The rules were intended to take effect as of November 1, 2007.

Earlier this month, GlaxoSmithKline (GSK) brought an action against the USPTO in the Eastern District of Virginia seeking to enjoin the new rules stating, among other things, that the USPTO did not have the power to enact the rules. At approximately noon today, Judge Cacheris of the Eastern District of Virginia preliminarily enjoined the enactment of these new rules. This preliminary injunction has the effect of preventing implementation of these new rules until further judicial review, which is likely to take place in January.

In a  Memorandum Opinion issued today, the court explained that GSK demonstrated a likelihood to succeed on the merits in its argument that the USPTO exceeded its regulatory authority by creating rules that had retroactive application to already-filed patent applications.  The court also questioned whether the limit on continuations violated Section 120 of the Patent Act, and whether the rules were truly “substantive” rather than merely procedural.  In addition, the court also expressed a concern as to whether the USPTO’s requirement for Examination Support Documents was unconstitutionally vague.

Thus, the claim and continuation limits that were to take effect on November 1 will be at least delayed — and possibly modified or eliminated after the debate continues.  [Note:  On October 8, 2009, the USPTO announced plans to rescind the proposed rules.]

2 responses to “Injunction Issued Against USPTO Patent Claim and Continuation Limits

  1. Can you please clarify–US Patent laws favored the First to Invent.Is this rule going to be changed?What about previous patents?

  2. On his Patently-O blog, Dennis Crouch has posted a helpful summary of the Patent Reform Act of 2007, which (if passed) will change the U.S. patent system to a “first to file”, rather than a first to invent system. Dennis’ summary — and copies of the bills as proposed earlier this year — can be found at

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