New Patent Rules Preliminarily Enjoined on Eve of Effective Date: What's next?

Denise M. Kettelberger, Ph.D.is a partner with Merchant & Gould. She practices general Intellectual Property law with an emphasis on biotechnology and pharmaceutical patents. She can be reached at 612-332-5300.

In what some are calling the most important patent law decision of the year, the Eastern District of Virginia granted a preliminary injunction against the USPTO on October 31, 2007 in the consolidated cases of SmithKline Beecham Corp. v. Dudas and Tafas v. Dudas (Memorandum Opinion, October 31, 2007). The injunction blocked implementation of controversial Final Rules on Continuations and Claims (“Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications”, 72 Fed. Reg.  46716-46843 (August 21, 2007) (to be codified at 37 C.F.R. pt.1) on the eve of the November 1 effective date.  Status quo is maintained until the Court renders a final decision on the merits.

At present, the Final Rules are dangling in the Courts, and much uncertainty remains.  This article seeks to summarize the issues and views of those involved, and proposes ultimately that now is the time for all involved to engage in meaningful discourse on workable alternative strategies to assist the USPTO with its backlog issues while m...