Keep an Eye on Whether the USPTO Appeals a Decision Barring Rules Changes

By Jessica Kallipolites, Nerac Analyst

In April, the District Court for the Eastern District of Virginia barred the U.S. Patent and Trademark Office from instituting the sweeping rules changes it proposed to limit the number of continuing applications, requests for continued examination (RCEs), and claims that an applicant could make. Even so, it is important to keep an eye on this case. The USPTO is considering an appeal.

The case stems from a proposal that was to take effect Nov. 1, 2007. Among the new provisions, applicants would have been limited to two continuations or continuation-in-part applications and one RCE after the first application. Applicants also would have been restricted to submitting 25 claims, five of which could be independent. The old rules, which remain in effect, allow for an unlimited number of continuing applications, RCEs, and claims.

The USPTO claimed the new rules would make the process of examining patents more efficient. The agency argued that the number of continuation applications that were being filed was increasing as well as the number of complex claims in new applications. The USPTO argued that by limiting the number of continuation applications and claims that could be filed, the process would be able to proceed more smoothly.

Before the new rules could take effect, however, Triantafyllos Tafas, Ph.D., the chief technology officer at Ikonisys, and Smithkline Beecham Corp. filed separate suits in the district court. The court then granted Smithkline Beecham’s motion to prevent the rules from taking effect until the case was resolved. The two suits were consolidated and attracted more than 20 friends-of-the-court briefs arguing that the USPTO exceeded its authority in issuing the rules. The court agreed.

Had the court ruled for the USPTO, companies filing for patent protection would have had to alter their strategies. Rather than filing a broad application and narrowing the invention claimed by filing continuing applications thereafter, they would have been forced to narrow their inventions before filing and risk losing some protection. By voiding the rules, the court maintains the current practice by which patent applicants can file for continuations and RCEs without restriction. They also can continue to write their claims as they have in the past without having to alter their strategy and risk weaker patent protection.