In the matter of Triantafyllos Tafas v. Jon W. Dudas, et al. consolidated with Smithkline Beecham Corporation, 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 Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications,” (Final Rules).

It is interesting to note that the USPTO fought against the injunction claiming that the public interest is most benefitted by the Final Rules going into effect immediately. The PTO claimed that the rules promote efficiency and timeliness and are needed immediately to alleviate the harm entrepreneurs suffer because of the current system’s uncertainty.

In addition, they argued that patent applicants who are preparing to comply with the Final Rules would face uncertainty as to how to proceed with patent prosecution and as to which rules would govern their application during the period of an injunction. [Note: If you’ve faced this great uncertainty, email me and I’ll send you a reassuring note back to soothe your fears.]

GSK countered that preserving the status quo while the litigation proceeds is important for maintaining stability for patent holders. Innovation is encouraged when patent holders and applicants have certainty about how their patents will be treated. The fact that three amicus briefs were filed by organizations representing a wide array of industries, all urging the Court to grant the preliminary injunction because their interests will otherwise be harmed, further demonstrated the possibility of potential immediate harm to the public if the rules were allowed to go into effect on November 1.

Fortunately, the court agreed with GSK noting:

Allowing the implementation of rules that may or may not remain in effect is likely to cause much greater uncertainty and squelching of innovation than a preliminary injunction giving the Court time to consider the validity of the Final Rules before they go into affect. Accordingly, the Court will find that the public interest is most served by continuing the status quo and granting the TRO.

Therefore, after considering the likelihood of GSK’s success on the merits, the possibility of irreparable harm to GSK if the injunction is not granted, the balance of hardships between the parties, and the public interest, the Court finds that GSK’s Motion should be granted.

GSK Preliminary Injunction Order (pdf)

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  1. […] Additional discussions by the Patent Baristas, Peter Zura at the 271 Patent Blog, Patently-O, and Patent Prospector. […]

  2. You see, the USPTO defines “public” as “non-customers”, so whenever they deny a customer, they uphold the public. Get it? The File Information Unit at the USPTO has a similar pro-public philosophy which has been successfully implemented for years now. The original EFS that no one used was based on a similar corollary (i.e. the public would have been dis-served if the customers had a usable system).

    Government of the people, by the people, for the people. (You just need to understand which “people” you’re excluded from.)

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  4. […] Ironically, under the Law of Unintended Consequences, the combination of early filings of raw, unrefined applications along with the increase in the number of applications may have just the opposite effect of what the Patent Office would like.  The Patent Office just may have an even greater backlog than the one that caused it to put forth its much-maligned proposed Continuations, Claims and IDS rules (Final Rules). […]

  5. […] Is the Public Interest Really Upheld by the New USPTO Rules? Posted February 8th, 2008 by Stephen Albainy-Jenei in Patent Reform | | […]