Claim and continuation limit rules preliminarily enjoined According to reports, enforcement of the USPTO's new claim and continuation limit rules has been enjoined. Judge James C. Cacheris issued the ruling from the bench after the hearing today on GlaxoSmithKline's motion for preliminary injunction. We'll have more as it develops, including any orders or decisions issued by the court. Update: More detail regarding […] Continue Reading →
AIPLA seeks leave to file amicus brief supporting Glaxo in its challenge to the new USPTO rules Today the American Intellectual Property Law Association filed a motion for leave to file an brief as amicus curiae in support of Glaxo's motion for preliminary injunction to enjoin implementation of the USPTO's new claim and continuation limit rules. The proposed brief is specifically directed toward the irreparable harm that would result if the rules […] Continue Reading →
USPTO moves to strike former USPTO director’s declaration supporting Glaxo’s PI motion On Friday, the USPTO filed a motion to strike the declaration of Harry F. Manbeck, Jr. in support of Glaxo's motion for a preliminary injunction barring implementation of the USPTO's new claim and continuation limit rules, claiming it constitutes improper expert testimony and impermissibly augments the administrative record in the case. Why is this interesting? […] Continue Reading →
Glaxo’s preliminary injunction motion to be heard October 31, consolidated with earlier challenge In orders yesterday in GlaxoSmithKline's effort to stop implementation of the new continuation and claim limit rules, the USPTO's request to continue the preliminary injunction hearing until October 31 was granted in order to give the Office more time to respond to the motion. Also, Glaxo's case was consolidated with an earlier case filed challenging […] Continue Reading →
No more first office actions for applications with 25+ claims? (updated 10/19) As noted on Patently-O, it appears the USPTO has stopped issuing first office actions on the merits in applications that exceed the 5/25 claim limitations. An example: This news, combined with the fact that the new rules may be considered by USPTO management as their fix for the Office's examination woes, expect the Office to […] Continue Reading →
Proposed IDS rules challenged before Office of Management and Budget Apparently the USPTO's recent forays into rulemaking are not winning friends and influencing people. The rules limiting claims and continuation applications are currently being challenged in court, and now a group of companies is challenging the proposed IDS rules before the Office of Management and Budget (OMB). The rules were submitted to the OMB back […] Continue Reading →
Glaxo files motion for preliminary injunction and TRO to stop new rules, hearing on October 26? On Monday, Glaxo filed a motion for preliminary injunction and temporary restraining order in its lawsuit seeking to prevent implementation of the new USPTO rules regarding claim and continuation limits. The court has set a hearing for October 26, which the USPTO has requested by extended to October 31 in order to give it the […] Continue Reading →
No more first office actions for applications with 25+ claims? As noted on Patently-O, it appears the USPTO has stopped issuing first office actions on the merits in applications that exceed the 5/25 claim limitations. An example: This news, combined with the fact that the new rules may be considered by USPTO management as their fix for the Office's examination woes, expect the Office to […] Continue Reading →
Another lawsuit filed to stop implementation of new USPTO rules, this time by a heavy hitter Pharmaceutical giant GlaxoSmithKline filed a lawsuit in the Eastern District of Virginia seeking to stop implementation of the new continuation and claim limit rules. The lawsuit, filed Tuesday, seeks a preliminary and permanent injunction against the rules' implementation. The complaint has eight counts: The Rules are ultra vires because the USPTO does not have the […] Continue Reading →
USPTO gives applicants a bit of a break during transition to new continuation and claim limit rules In an announcement yesterday, the USPTO clarified some aspects of the new continuation and claim limit rules. Of particular note are the following: For applications filed before November 1, 2007, applicants need not identify all applications and patents having a common inventor, common assignee, and a priority date within two months. Applicants will still have […] Continue Reading →