USPTO APPEALS INJUNCTION AGAINST IMPLEMENTATION OF NEW RULES

May 8, 2008

The United States Patent and Trademark Office (PTO) filed a Notice of Appeal on May 7, 2008 in the U.S. District Court for the Eastern District of Virginia, appealing to the United States Court of Appeals for the Federal Circuit the District Court's April 1, 2008 Decision enjoining implementation of the New Rules on claims, continuation practice and other matters.

In the Decision on appeal, the District Court had declared the New Rules null and void because they were "not in accordance with law" and the PTO did not have the "statutory jurisdiction [and] authority" to issue the New Rules. Notably, the Court indicated that implementing rules to (1) limit the number of continuing applications, (2) limit the number of Requests for Continued Examination (RCEs), (3) limit the number of independent and total claims by imposing Examination Support Document (ESD) requirements, (4) require applicants to perform prior art searches and (5) shift the burden of examination away from the PTO are contrary to existing law.

We expect the PTO to file its Brief on Appeal later this summer. The Plaintiffs (Tafas and GSK) will then be given an opportunity to file a responsive brief, and the PTO will have the option of filing a reply to that responsive brief. Oral argument will be held thereafter at a time set by the Federal Circuit.

We will update this site if and when the PTO files an appeal or takes other action.