I realize that everyone is suffering from Patent Reform Fatigue regarding the new rules the Patent Office wants to foist on the public but here is a quick update.

Gene Quinn, at the PLI blog is reporting that the oral hearing on GlaxoSmithKline, Tafas and USPTO cross motions for Summary Judgment was today and that there will be no decision issued today. Judge Cacheris, in the Eastern District of Virginia, decided to take the matter under advisement and render a decision as soon as possible:

According to John White, Judge Cacheris said that “there is a lot of paper to consider” and that he would render his decision as soon as possible, schedule permitting. John also says that the courtroom was “again packed with every seat taken.” Further, John reported that GSK lead off, followed by Tafas and the PTO. It was John’s perspective that the arguments made by the PTO were much better and smoother than at the Preliminary Injunction hearing. Based upon what John heard at the hearing it is his believe that the primary question is whether the PTO has the authority to do what they have done, or in other words whether they have substantive rulemaking. According to John, “if the PTO does have substantive rulemaking Judge Cacheris will have to second guess what the PTO has done, if not then the rules will be dismissed as void and the case then proceeds to the CAFC.”

A pivot point is whether or not the USPTO has substantive rulemaking authority and not just procedural. GSK is arguing that if the proposed new rules are found to be substantive, then they are void and no deference should be given to the Office. The USPTO, meanwhile, is arguing that the USPTO has substantive rulemaking authority and should win either way.  It then argued that the rules are procedural because they are analogous to situations where courts have imposed limits on refiling of cases.

GlaxoSmithKline had filed suit asking the court to enjoin the PTO from implementing the Final Rules contending that they 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. Judge Cacheris 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)

More here: 

Sides Line Up in Impending Patent Continuations Fight

Is the Public Interest Really Upheld by the New USPTO Rules?

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4 Comments

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    […] Patent Baristas wrote an interesting post today on Patent Rule Injunction, Court To Sleep On ItHere’s a quick excerpt I realize that everyone is suffering from Patent Reform Fatigue regarding the new rules the Patent Office wants to foist on the public but here is a quick update. Gene Quinn, at the PLI blog is reporting that the oral hearing on GlaxoSmithKline, Tafas and USPTO cross motions for Summary Judgment was today and that there will be no decision issued today. Judge Cacheris, in the Eastern District of Virginia, decided to take the matter under advisement and render a decision as soon as possible: A […]

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    I am an 80 Year old patent practitioner and a former PTO Examiner who has discovered that the incredible inaptitude exhibited by the USPTO the past dozen years has made the practice of Patent Law next to impossible for the loan Practitioner due to the excessive paper work (forms) that is required during preperation and prosecution of a patent application. One small innoxious mis-step in the vast amount of forms and complex ever changing rules can result in more wasted time than the actual time spent preparing the Patent Application. My love for the USPTO is rapidly dying as a result of the untold frustration generated by the present mis-guided USPTO Leaders. Whoever installed these misfits into the path of progress need to be closely observed for they are the enemies of progress and are inadvertently or otherwise destroying our Patent System.

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    “The USPTO, meanwhile, is arguing that the USPTO has substantive rulemaking authority and should win either way.”

    When have they made this argument? My impression is that the PTO has consistently argued that (1) the PTO does not have substantive rulemaking authority (nor do they necessarily want such a broad grant, according to Dudas testimony before Congress), (2) the rules are procedural in nature, and (3) “procedural” rules can have collateral substantive effect and still be considered procedural.

    The real question, then, is not whether the rules are substantive, but whether the substantive consequences of the rules amount to a purely substantive rule or, more likely, whether they are a consequence of an otherwise procedural rule. In their briefs, the PTO has failed to adequately address the standard by which this important question can be answered.

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    […] Patent Rule Injunction, Court To Sleep On It Examination Support Document (ESD) 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 Reform, USPTO | | […]