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Update: New US Patent Rules Blocked By Court Injunction Creating Uncertainty For Patent Applicants

By Michael Lasky, Attorney at Law, Altera Law Group

EDITOR'S NOTE: The following is an update to Jeff Stone's article "U.S. Patent Office Makes Radical Changes Affecting All Patent Applicants Publishes New Rules on Patent Applications," which appeared in the October 2007 issue of eWatch and eNews.

SmithKline Beecham Corporation, dba GlaxoSmithKline ("GSK"), brought an action against the United States Patent and Trademark Office (USPTO) in the U.S. District Court in the Eastern District of Virginia, challenging the Final Rules on Claims & Continuations, which were scheduled to go into effect on November 1, 2007. GSK, seeking both preliminary and permanent injunctive relief, was successful in its injunction hearing on October 31, 2007, and the Court issued a preliminary injunction to block the new claims and continuations rules from taking effect.

A full decision on whether the USPTO can enact the rules will be made in the coming months. What happens next is very much in flux. A hearing on the injunction will not be heard until some time in Q1 next year. This leaves both patent applicants in great uncertainty. The USPTO's plans could be delayed years if they pursue lifting the injunction. If they elect not to wait they could simply issue new rules which focus on other requirements to be placed on patent applicants, or they could just wait until the next election, as the leadership of the Patent Office might change. Each option requires a different response by the patent applicant. A customized strategy is needed. We encourage you to contact Mansfield Tanick & Cohen, who can help you develop an effective strategy with Altera Law Group, an IP boutique firm which offices in Mansfield Tanick &Cohen's Minneapolis office.