I just heard from Gene Quinn of IPWatchdog.com regarding the outcome of the GlaxoSmithKline v. USPTO case. GlaxoSmithKline, has sued the United States Patent Office challenging the Final Rules on Claims & Continuations, set to go into effect on November 1, 2007. GlaxoSmithKline is seeking both preliminary and permanent injunctive relief.
He writes in a PLI post:
John White, known to many patent attorneys across the nation as the guy who helped them pass the patent bar examination, played the role of ace reporter live from the Eastern District of Virginia. According to John, "there was an audible sigh in the courtroom when Judge Cacheris said the rules were enjoined." No doubt, those in attendance were quite happy that Judge Cacheris kept the status quo.
In any event, what John just told me via telephone is that Judge Cacheris did not make any statements about the likely merits of the case when making his ruling from the bench. He will, however, be issuing a formal written opinion which will be entered sometime this afternoon. As soon as we receive that ruling we will post it together with our analysis.
The attorney representing the Patent Office made some interesting arguments according to John. Once again the argument that a patent application creates no rights was made. I don't know whether John was quoting the argument or just paraphrasing, but he said that the PTO attorney said "a patent application confers no rights because it is not a completed transaction." The response from the Glaxo attorney was simply that the statement is 100% wrong and perhaps something to the effect of - how would she know anyway, she isn't even a patent attorney. How could the PTO send an attorney who is not admitted to the patent bar to argue this case with this set of complicated rules? Astounding!
John also pointed out that when the question of the number of claims came up the PTO attorney said that there was no limit on the number of claims because all the applicant has to do is file "an extra document" in order to get as many claims as they want. How could anyone call the Examination Support Document simply "an extra document"? Outrageous!
Also playing a big role in the hearing was Senator Schumer's recent letter to Under Secretary of Commerce Jon Dudas regarding his concerns regarding these rules. The PTO attorney tried to argue that Senator Schumer was referring to the proposed rules, not the final rules, despite the fact that his letter clearly mentions the final rules announced in the Federal Register on August 21, 2007.
Read the full post here and obtain information on the PLI briefing on Friday, November 2, 2007 by John White and Bob Sparr, who is the recently retired Director of the Office of Patent Legal Administration at the U.S. Patent and Trademark Office.