“5/25” Claim Trigger & Limits on Continuation Applications/RCE’s Permanently Enjoined

April 3, 2008

On April 1, 2008 the U.S. District Court for the Eastern District of Virginia permanently enjoined the U.S. Patent & Trademark Office from implementing Final Rules 75 and 265, which place limitations on the number of claims and number of continuation applications or requests for continued examination that patent applicants may file. The court in Tafas / GlaxoSmithKline v. Dudas and U.S. Patent & Trademark Office considered the new rules to be "a drastic departure from the terms of the Patent Act as they are presently understood." The new rules were found "substantive in nature" and "void as 'otherwise not in accordance with the law' and in excess of statutory jurisdiction [and] authority.'" The Patent & Trademark Office has filed an appeal with the Federal Circuit, challenging the district court's decision.

If you have questions, we invite you to contact an attorney at Marshall, Gerstein & Borun at 312.474.6300 or [email protected].