Last year the U.S. Patent and Trademark Office (USPTO) tried to enact a raft of patent rule changes severely limiting the number of claims permitted in a U.S. patent application and an applicant’s ability to prosecute a U.S. patent application for an invention. The rule changes were meant to come into force on 1 November 2007. The USPTO justified the sweeping rule changes as necessary to reduce the backlog of unexamined patent applications and to reduce the burden on Examiners. To prevent the rule changes from taking effect, the pharmaceutical company Glaxo Smith Kline and other parties sought and obtained a temporary injunction against the USPTO on 31 October 2007, pending final determination of the USPTO’s ability to introduce such changes.
In a welcome development for US patent application owners around the world, a U.S. District Court recently struck down the entire package of rule changes, including a requirement to identify co-pending patent applications, and permanently injuncted the USPTO from implementing the rules. The Court held that the proposed rules “are substantive in nature and exceed the scope of the USPTO’s rulemaking authority”.
The Court stated that the USPTO attempted to shift the burden of examination onto patent applicants, in a drastic departure from the existing patent regime. The Court recognised the right of a patent applicant to an unlimited number of continuation and continuation-in-part patent applications and Requests for Continued Examination. The Court also found that the Patent Act does not place a mechanical limit on the number of claims that may be prosecuted in a patent application. If implemented, the rule changes would have severely curtailed an applicant’s ability to pursue patent protection for an invention. The USPTO may appeal this decision.