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IP Alert: U.S. District Court Halts Implementation of New USPTO Rules

Release Date: November 08, 2007

This is a follow-up to the previously published Jaeckle Alert regarding USPTO Rule Changes issued on September 18, 2007.

On October 31, 2007, the U.S. District Court for the Eastern District of Virginia issued a preliminary injunction against the planned November 1, 2007 implementation of the new Patent Rules in response to a lawsuit brought by Smithkline Beecham Corporation and Glaxo Group Limited ("GKS") against Jon Dudas, Commissioner of Patents and the United States Patent & Trademark Office (PTO). In their motion, GKS argued that the PTO did not have the proper statutory authority and did not seek the necessary Congressional review in promulgating the new rules which, if implemented, would cause great harm to patent applicants. With the preliminary injunction in place, the new PTO rules did not go into effect on November 1, 2007 as originally planned. The parties to the lawsuit must now proceed to file legal briefs in support of their respective positions and a trial will be conducted to determine whether the injunction will be made permanent or lifted. If lifted, the new rules will go into effect. Conversely, if the injunction is made permanent, the PTO will have to reinitiate the rule making process if it wishes to pursue the rule changes.

We will send further Jaeckle Alerts regarding significant developments in the lawsuit. In the meantime, if you have any questions regarding this or other intellectual property law topics, please contact one of the attorneys below, each of whom are admitted to practice before the United States Patent and Trademark Office.  Please visit each respective attorney biography for more information on state admissions.

Katherine H. McGuire
kmcguire@jaeckle.com

Ronald J. Kisicki
rkisicki@jaeckle.com