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IP lawyers rejoiced last week as a federal judge rejected new rules for streamlining the patent process that had applicants apoplectic. Senior Judge James Cacheris of the U.S. District Court for the Eastern District of Virginia voided the rules because, he wrote in an April 1 opinion, the U.S. Patent and Trademark Office doesn’t have the authority to make the changes. “There’s a lot of good cheer going around,” says Hans Troesch, a veteran patent prosecutor with Fish & Richardson in Redwood City, Calif. “It’s a great relief to the practitioners.” The patent office was seeking to unclog the backlog of patent applications by reducing the number of claims, listed in each one to help define a patent, and the number of continuations, which are used to amend patent claims and contest those that are rejected. Claims would have been limited to 25, and continuations to just three. Currently, there are no limits. But patent lawyers criticized the new rules for unfairly limiting complex patents and for retroactively affecting pending applications. The rules were scheduled to go into effect on Nov. 1, 2007, but Triantafyllos Tafas, founder of medical technology company Ikonisys, and drug maker GlaxoSmithKline filed lawsuits last fall against the PTO and its director, Jon Dudas, to block them. Cacheris granted a preliminary injunction on Oct. 31, and GlaxoSmithKline and Tafas filed for summary judgment on Dec. 20. In granting summary judgment last week, Cacheris wrote that the patent office can’t make “substantive” changes to the rules, only “procedural” ones. “[B]ecause the Final Rules are substantive in nature, the court finds that the Final Rules are void as �otherwise not in accordance with law’ and �in excess of statutory jurisdiction [and] authority,’” Cacheris wrote. The patent office, which had argued that the changes were only procedural, said in a prepared statement that it did not agree with the court and is considering an appeal. “We are disappointed with this court’s decision, which rejects our view that the USPTO has the authority to implement the proposed rules about claims and continuations,” the statement reads. “The USPTO believes that these rules are consistent with existing statutes and will strengthen the U.S. patent system for all stakeholders.” MORE RULES The specter of the new rules had patent prosecutors scrambling to file applications before the Nov. 1 deadline and wondering what would happen next — even after Cacheris delayed the rules with a preliminary injunction. “There’s been some residual uncertainty based on the possibility that the rules in some form could go into effect,” says Ted Apple, a patent prosecutor with Townsend and Townsend and Crew in Palo Alto, Calif. “There were some prosecution steps that we were taking that were motivated by the conservative possibility that rules like this would go into effect.” Fish & Richardson’s Troesch says he was worried that the limit on continuations would put his technology company clients at a disadvantage. “In my kind of practice, it meant that the examiners’ failure to understand what an invention was really about would severely prejudice the applicant,” Troesch says. Gladys Monroy, a patent prosecutor with Morrison & Foerster in Palo Alto, says she was afraid that the limit on claims would cut short patents for her biotech clients. “It’s extraordinarily difficult to claim everything within 25 claims — you would’ve lost subject matter,” Monroy says. “When you look at the complexities of the biotech inventions, it’s very difficult to do that.” Cacheris wrote that the new rules would be a “drastic departure from the terms of the Patent Act as they are presently understood.” He also said a provision that would have allowed patent seekers to exceed the 25-claim limit only if they provide extensive research to the examiner would unfairly shift the burden from the PTO to the applicant. Patent lawyers are watching closely to see how the ruling affects the patent office’s efforts to implement new rules in the future. The office is moving forward with other, so-called information disclosure statement rule changes, which patent lawyers say is also an attempt to shift some of the burden of examination onto the applicant. “It will be interesting to see what effect this will have on the USPTO’s other rules going forward,” says Townsend’s Apple.
Zusha Elinson is a reporter with The Recorder , an ALM publication.

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