Legal News

Patent Lawyers Do the Boogie as Court Shoots Down PTO Rules

By Dan Slater

The patent crowd is an excitable bunch. Whenever a big ruling is handed down, the Law Blog typically receives a few helpful e-mails from lawyers in that practice area giving us their thoughts. But this morning, we were flooded with notes from patent lawyers who could barely contain their glee over a Virginia district court’s ruling in Tafas v. Dudas.

Here’s what they’re so pumped about: The PTO was seeking to streamline the application process and unclog a backlog of patent applications by reducing the number of claims and continuations allowed in a patent application. (Claims help define a patent, while continuations are used to amend patent claims and contest rejected patent claims.) Critics of the rules, according to reports, felt that the limitations on patent claims would mean that more complex patents would lose substance.

Yesterday, in a nod to administrative law, district judge James Cacheris voided the rules because, he wrote, the PTO doesn’t have the power to make the changes. Why? He ruled the changes were substantive, not procedural. Here’s a report from The Recorder, and here’s some nice analysis from the Patently-O blog, which also provides a link to the opinion. Click here for more discussion at the Patent Prospector blog.

The rules were scheduled to go into effect last November, but Triantafyllos Tafas, founder of medical technology company Ikonisys, and drug maker GlaxoSmithKline filed lawsuits against the PTO and its director, Jon Dudas, to block them. Judge Cacheris granted a preliminary injunction on Oct. 31, and GlaxoSmithKline and Tafas filed for summary judgment on Dec. 20. In granting summary judgment Tuesday, Cacheris wrote that the patent office can’t make “substantive” changes to the rules, only “procedural” ones.

Representing Glaxo: Kirkland & Ellis’s Daniel Sean Trainor and Elizabeth Locke. Representing Tafas: Kelley Drye’s William Golden, Steven Moore and James Nealon.

“There’s a lot of good cheer going around,” Fish & Richardson’s Hans Troesch told The Recorder. “It’s a great relief to the practitioners.”

“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,” said the PTO in a statement. “The USPTO believes that these rules are consistent with existing statutes and will strengthen the U.S. patent system for all stakeholders.”

Full post as published by Law Blog - WSJ.com on December 31, 1969 (boomark / email).