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Another lawsuit filed to stop implementation of new USPTO rules, this time by a heavy hitter

October 11, 2007

Pharmaceutical giant GlaxoSmithKline filed a lawsuit in the Eastern District of Virginia seeking to stop implementation of the new continuation and claim limit rules. The lawsuit, filed Tuesday, seeks a preliminary and permanent injunction against the rules' implementation. The complaint has eight counts:

1. The Rules are ultra vires because the USPTO does not have the statutory authority to issues substantive rules in the area
2. The USPTO "especially lacks the authority" to implement the continuation application limits
3. The rules impermissibly "retroactively change the legal consequences of already filed continuation applications and patent prosecution strategies"
4. The USPTO doesn't have authority to limit the number of claims that can be presented in an application
5. The restrictions on continued examinations are contrary to the Patent Act
6. The rules are defective for failing to provide the required notice and comment period before they were amended in ways that could not have been reasonably anticipated
7. The rules are impermissibly vague
8. The rules "work an unconstitutional, ultra vires, and arbitrary and capricious taking" of patent and patent application property rights

Click here to read the full complaint. With the power and motivation of a pharmaceutical giant like GlaxoSmithKline, the lawsuit will certainly be vigorously pursued, particularly given that pharmaceutical and biotech patents will be the most adversely affected by the new rules.

Hat tip to Gene Quinn at the PLI Patent Law Blog, who also provided the copy of the complaint.

Update (10/12): The Wall Street Journal Law Blog has picked up the story, and has a call in to the USPTO for comment. It will be interesting to see what the Office has to say.