Judge Cacheris of the Eastern District of Virginia has granted a preliminary injunction prohibiting the USPTO from moving forward with its proposed changes to the patent rules on continuations and claims. Download the injunction order here:
GSK Preliminary Injunction Order (pdf)
The rules, labeled “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications,” 72 Fed. Reg. 161 at p. 46716 (Aug. 21, 2007), were scheduled to come into effect November 1 (cue collective sigh here).
In a lawsuit against the USPTO, SmithKline Beecham Corporation (d/b/a GlaxoSmithKline) filed suit in the United Stated Federal District Court asking the court to preliminarily and permanently enjoin the PTO from implementing the Final Rules contending that the Final Rules are vague, arbitrary and capricious, and prevent GSK (not to mention everyone else) from fully prosecuting patent applications and obtaining patents on one or more of its inventions.
This case is consolidated with an earlier suit, Triantyfyllos Tafas vs. John Dudas and the United States Patent and Trademark Office, where Plaintiff Tafas also alleged that the PTO’s promulgation of the Final Rules will cause him harm.
In filing a Partial Motion to Dismiss and a Memorandum in Support of Defendants’ Partial Motion to Dismiss, the PTO has taken the position that one may not be able to establish harm caused by the Final Rules except by demonstrating specific examples of harm caused to pending patent applications. In addition, the Final Rules apply retroactively to pending applications.
Kelley Drye & Warren, representing Dr. Tafas in the Tafas/Glaxo USPTO litigation, filed an opposition to the USPTO’s motion to dismiss Dr. Tafas’ amended complaint. Below are the papers filed along with a reference copy of Dr. Tafas’ amended complaint. The video clip below was an exhibit to the motion to dismiss opposition.
Tafas Brief (pdf)
Tafas Amended Complaint (wmv)
Inequitable Conduct Video (wmv)
Dennis Crouch of Patently-O has a nice listing of various documents filed in the case here.
[…] et al. v. Jon W. Dudas, et al. (1:07cv1008), the district court held that it was willing to grant GSK’s Motion for a Preliminary Injunction to enjoin enactment of the USPTO’s new rules, “Changes to Practice for Continued […]
[…] Could Add $26,000 to Patent Costs Is the Public Interest Really Upheld by the New USPTO Rules? Court Blocks New USPTO Rules on Continuations and Claims — For Now Patent Wars Episode II: GSK Strikes Back Posted April 1st, 2008 by Stephen Albainy-Jenei in Patent […]
[…] Could Add $26,000 to Patent Costs Is the Public Interest Really Upheld by the New USPTO Rules? Court Blocks New USPTO Rules on Continuations and Claims — For Now Patent Wars Episode II: GSK Strikes Back Posted August 2nd, 2008 by Stephen Albainy-Jenei in […]