Court Grants Preliminary Injunction to Block New USPTO Rules

On the eve of the effective date for the United States Patent and Trademark Office's (USPTO) new rules regarding claiming and continuations practice, Judge James Cacheris of the Eastern District of Virginia issued a preliminary injunction to prevent the rules from going into effect.

The main rule changes centered around limiting the number of continuations that an applicant may file and the number of claims that an application may contain, and many portions of the rules were to apply retroactively to about 700,000 pending applications. The USPTO readied to effect the rules on November 1, 2007. However, several corporations as well as the American Intellectual Property Law Association (AIPLA) filed amici briefs opposing the rule changes in the months leading up to the effective date. The corporations argued that prior court decisions warned against any blanket prohibition on the number of continuations that an applicant may file and contended that the USPTO lacks substantive rulemaking authority. Further, they argued that owners of pending applications would need to take prompt action to either abandon, limit or amend claims to comply with the proposed claim limit.

The USPTO countered by claiming that the rules are within the USPTO's regulatory authority and that the Office already made a substantial investment in training the examiners.

Nevertheless, Cacheris issued the injunction, which temporarily blocks the USPTO from implementing of all the proposed rules. The injunction is effective until there is a final judgment in the case.