<b>BREAKING NEWS:</b> Patent Rules Put on Hold by VA Judge

Patent lawyers started breathing again on Oct. 31, as the specter of new patent rules was chased away ' at least for a little while ' by a Virginia court.

U.S. District Judge James Cacheris granted pharmaceutical giant GlaxoSmithKline's motion for a preliminary injunction blocking the U.S. Patent and Trademark Office from implementing rules set to go into effect on Nov. 1.

The new rules would reduce the number of claims, which help define a patent, and the number of continuations, which are used to amend patent claims and contest those that are rejected. Claims would be limited to 25, and continuations to just three. The current rules imposed no limits.

“I won't be alone in being among the patent attorneys who are very pleased with the injunction that was granted today,” said Neil Smith, a veteran IP lawyer at Sheppard, Mullin, Richter & Hampton in San Francisco. “Anyone who cares about the strength of patents and about innovation itself saw those rules as causing some real problems ' it's a good day for the patent system.”

The patent office says the rule changes are meant to speed up the patent process and eliminate the enormous backlog of applications. But opponents say the changes could weaken patents by not allowing sufficient continuances to cover ever-evolving innovations. They also say the new rules would have unfairly been retroactive on pending applications.

Brigid Quinn, a spokeswoman for the patent office, said it was reviewing the opinion and declined to comment on the agency's next moves.

“The USPTO continues to believe that the rules are an important component of modernizing the patent system,” Quinn said in a prepared statement. “They are part of a package of initiatives designed to improve the quality and efficiency of the patent process and move American innovation and our economy forward.”

In recent weeks, patent prosecutors have been extraordinarily busy preparing for the rule changes, filing some applications under the old rules and going back to redo others.

“Many inventors filing patent applications planned on submitting their papers today, which would have been the last opportunity to do so under the PTO's old rules,” said James Gatto, a Pillsbury partner who heads the firm's IP practice. “The court's action today gives inventors and their attorneys more time to plan and file for patents, while the future of the PTO's new rules remain in question.”

Glaxo filed its suit against the U.S. Patent and Trademark Office and its director, Jon Dudas, earlier in October. The company plans to seek a permanent injunction.

In a 39-page opinion handed down late on Oct. 30, Cacheris sided with Glaxo's lawyers at Kirkland & Ellis. He agreed there probably would be irreparable harm to Glaxo if the injunction weren't granted. The company has about 100 pending patent applications that would be affected. Cacheris said the new rules tilt the balance of hardships unfairly toward Glaxo, and might in general be harmful to the public interest.

“I think it's an indication of a relatively weak position by the PTO, at least with regard to at least some aspects of the rules,” said Ted Apple, a patent prosecutor with Townsend and Townsend and Crew in Palo Alto, CA.

Many patent prosecutors say they hope the injunction will cause the patent office to reconsider the new rules.

“I hope that this will be an opportunity for the patent office to develop a more workable set of rules for the patent applicant community,” said Hans Troesch, a veteran patent prosecutor with Fish & Richardson in Palo Alto.

Zusha Elinson writes for The Recorder, the San Francisco-based ALM affiliate of Patent Strategy & Management.

Patent lawyers started breathing again on Oct. 31, as the specter of new patent rules was chased away ' at least for a little while ' by a Virginia court.

U.S. District Judge James Cacheris granted pharmaceutical giant GlaxoSmithKline's motion for a preliminary injunction blocking the U.S. Patent and Trademark Office from implementing rules set to go into effect on Nov. 1.

The new rules would reduce the number of claims, which help define a patent, and the number of continuations, which are used to amend patent claims and contest those that are rejected. Claims would be limited to 25, and continuations to just three. The current rules imposed no limits.

“I won't be alone in being among the patent attorneys who are very pleased with the injunction that was granted today,” said Neil Smith, a veteran IP lawyer at Sheppard, Mullin, Richter & Hampton in San Francisco. “Anyone who cares about the strength of patents and about innovation itself saw those rules as causing some real problems ' it's a good day for the patent system.”

The patent office says the rule changes are meant to speed up the patent process and eliminate the enormous backlog of applications. But opponents say the changes could weaken patents by not allowing sufficient continuances to cover ever-evolving innovations. They also say the new rules would have unfairly been retroactive on pending applications.

Brigid Quinn, a spokeswoman for the patent office, said it was reviewing the opinion and declined to comment on the agency's next moves.

“The USPTO continues to believe that the rules are an important component of modernizing the patent system,” Quinn said in a prepared statement. “They are part of a package of initiatives designed to improve the quality and efficiency of the patent process and move American innovation and our economy forward.”

In recent weeks, patent prosecutors have been extraordinarily busy preparing for the rule changes, filing some applications under the old rules and going back to redo others.

“Many inventors filing patent applications planned on submitting their papers today, which would have been the last opportunity to do so under the PTO's old rules,” said James Gatto, a Pillsbury partner who heads the firm's IP practice. “The court's action today gives inventors and their attorneys more time to plan and file for patents, while the future of the PTO's new rules remain in question.”

Glaxo filed its suit against the U.S. Patent and Trademark Office and its director, Jon Dudas, earlier in October. The company plans to seek a permanent injunction.

In a 39-page opinion handed down late on Oct. 30, Cacheris sided with Glaxo's lawyers at Kirkland & Ellis. He agreed there probably would be irreparable harm to Glaxo if the injunction weren't granted. The company has about 100 pending patent applications that would be affected. Cacheris said the new rules tilt the balance of hardships unfairly toward Glaxo, and might in general be harmful to the public interest.

“I think it's an indication of a relatively weak position by the PTO, at least with regard to at least some aspects of the rules,” said Ted Apple, a patent prosecutor with Townsend and Townsend and Crew in Palo Alto, CA.

Many patent prosecutors say they hope the injunction will cause the patent office to reconsider the new rules.

“I hope that this will be an opportunity for the patent office to develop a more workable set of rules for the patent applicant community,” said Hans Troesch, a veteran patent prosecutor with Fish & Richardson in Palo Alto.

Zusha Elinson writes for The Recorder, the San Francisco-based ALM affiliate of Patent Strategy & Management.