GlaxoSmithKline has succeeded in obtaining a preliminary injunction from a Virginian court that will prevent the USPTO from implementing the new rules concerning patent claims and continuations which were due to be implemented on 1 November 2007.
Judge James Cacheris of the Virginia District Court has granted a temporary restraining order and preliminary injunction today; one day before the USPTO’s new rules concerning the claims and continuations were due to take effect.
According to one of our US Associate’s Bruce Lilling, who has read up the briefs and ruling:
Briefly stated the Court determined that:1. There is a genuine possibility that GSK will succeed on showing that PTO exceeded its authority in promulgating these rules and that the rules do not comport with the Patent Act;2. The decision by the PTO to limit the number of continuing applications would run contrary to the mandate of 35 USC 120 and the law favors GSK on this point;3. No decision was made with regard to limiting RCEs;4. No decision was made with regard to claim limitations;5. Giving retroactive effect to the rules adversely affects the rights of applicants and there is a real likelihood of success by GSK on this point6. GSK has raised serious concerns as to whether a reasonably prudent person would be able to comply with the ESD requirements; and
7. The public interest is most served by continuing the status quo and giving the Court time to consider the validity of the Final Rules.
We are giving a seminar on the new rules at our offices next Thursday. Despite this ruling, we will go ahead, since the injunction is only temporary. It is likely that the new rules will go ahead in a modified form, perhaps not being implemented retroactively.