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USPTO files opposition to Glaxo’s motion for preliminary injunction against new rules

Apparently the government's lawyers had a long weekend, because on Sunday, the USPTO filed its opposition to Glaxo's motion for preliminary injunction against the new claim and continuation limit rules. Included with the opposition were a whopping 34 attachments making up 7 exhibits. The USPTO makes the expected arguments. First, it argues that it is […]

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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 […]

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Fourth Circuit holds law prohibiting federal registration of Montana state nickname valid

In a decision Wednesday, the Fourth Circuit reversed a district court's decision finding a portion of a 2006 law invalid. The portion, a rider attached to an appropriations bill, prohibited any trademark registrations of a nickname of the state of Montana, "The Last Best Place." The Fourth Circuit reversed, holding that the law valid and […]

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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? […]

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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 […]

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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 […]

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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 […]

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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 […]

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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 […]

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New revision of MPEP now available

The USPTO today released the newest revision of the Manual of Patent Examining Procedure (MPEP). The new version is the Eighth Edition, Revision 6. Changes from the previous revision can be found here. No mention of KSR in this revision. The first mention of KSR regarding obviousness is not expected until the Ninth Edition, likely […]

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