Sweeping procedural changes planned by the U. S. Patent and Trademark Office for Nov. are on hold as the result of last-minute federal court order issued Oct. 31.
SmithKline Beecham Corporation (d/b/a GlaxoSmithKline), the pharmaceutical giant, filed a lawsuit in the U.S. District Court for the Eastern District of Virginia to stop the PTO from implementing the new rules. This company, like many others who depend heavily on U.S. patents as part of their business strategy, believes the new rules, some of which applied retroactively to applications filed before Nov. 1, would hamper their profitability.
GlaxoSmithKline alleges the new rules are invalid because the PTO, which is only authorized to make procedural rules, is attempting to make rules about what can be patented.
The Virginia federal judge ruled that the lawsuit is likely to be successful on at least some points and that GlzxoSmithKline would suffer grave harm if the new rules went into effect. The judge issued a temporary restraining order forcing the PTO to postpone implementing the new rules until further notice.
For the time being, patent applicants will continue interacting with the PTO under the old rules.

Highlights of proposed changes

The new rules are designed to help the PTO improve its efficiency in handling patent applications and improve the quality of the patents it issues. Under the proposed rules, which were published in final form on Aug. 21, new applications and many on file before Nov. 1 would not have been examined if they contained a total of more than 25 claims, or if they include more than 5 independent claims.
To obtain a waiver of these limits, the applicant would have to submit an examination support document containing an outline of a thorough prior art search and provide a detailed analysis of the search results. A similar document is already required for applicants who want expedited handling of their applications, and the burden (and cost) of producing these documents is significant.
The new rules would also impose limits on certain procedures patent applicants frequently employ to make sure their applications receive full consideration by a patent examiner before a rejection is appealed or an application is abandoned. These procedures include requests for continued examination (RCEs) and the filing of continuing applications.
Under the new rules, applicants would be allowed just two continuing applications and one RCE at their own discretion. Under the old rules there is no limit (except where it is clear an applicant is abusing the system to prolong patent pending status. Under the new rules, further RCEs and/or continuations will be allowed only when an applicant can show why the amendment, argument or evidence being presented in the continuing application could not have been submitted sooner.
The ownership of patent applications that are similar to each other would also be curtailed under the new rules. PTO procedure has been fairly tolerant of multiple filings for various aspects of an invention or for minor variations of the invention. The new rules, however, would force applicants to consolidate their patent filings so that all of their pending applications are drawn to distinctly different inventions.
For example, claims of patent applications for similar inventions would be grouped together for purposes of the limits on claims mentioned above. Applicants might also have been required to cancel conflicting claims for similar inventions in different applications.

Tumultuous year

Adapting to the new rules in relation to newly filed applications would have been a challenge for many regular customers of the PTO. However, the new rules require that numerous applications already on file also be brought in line with the new standards. As a result, many owners of currently pending applications were scheduled to receive notices of no-compliance from the PTO.
As the planned implementation of the new rules approached, patent attorneys and many other business professionals were investing much effort in understanding all the implications of the new rules and in making changes to their strategies for handling patent applications.
In addition to the new rules and the present order against their implementation, 2007 has been a tumultuous year for intellectual property in the U.S., in light of an important decision by the U.S. Supreme Court concerning what inventions qualify for patents, as well as another round of PTO rule changes on the horizon (concerning how applicants disclose prior art that is relevant to their inventions).
Frederick A. Spaeth is senior patent counsel with Michaud-Duffy Group, an international intellectual property law firm based in the greater Hartford, Conn. area that serves corporate clients in New England, throughout the United States, and around the world. He can be reached at 860.632.7200 ext. 310 or at [email protected]. The Michaud-Duffy Group concentrates solely in patent law, trademark law, trade secret law, copyright law and related transactional issues.