USPTO Agrees to Withdraw Claims & Continuations Rules

By Gene Quinn
October 8, 2009

PRESS RELEASE:

GlaxoSmithKline (NYSE: GSK) today announced that it has reached agreement with the United States Patent and Trademark Office (USPTO) to join the USPTO’s motion to dismiss its litigation over Final Regulations published in August 2007 (Triantafyllos Tafas and SmithKline Beecham Corporation, SmithKline Beecham PLC and Glaxo Group Limited vs. David J. Kappos and the United States Patent and Trademark Office). GSK and the USPTO will file a joint motion with the U.S. Court of Appeals for the Federal Circuit to dismiss the litigation and to vacate the previous decision in this case by the U.S. District Court for the Eastern District of Virginia. The USPTO is withdrawing all regulations under dispute.

“We applaud the Patent and Trademark Office for its leadership in deciding to withdraw these rules, which we believe would have harmed innovation across all industries, and specifically would have deprived GSK and other manufacturers of the patent protection necessary to promote medical research and innovation,” said Sherry Knowles, Senior Vice President and Chief Intellectual Patent Counsel, GlaxoSmithKline. “We look forward to working with David Kappos, the recently appointed Director of the USPTO, and others at the Patent and Trademark Office to ensure a patent law framework which promotes the investment that is essential to all innovation, and importantly, to discovering, developing and bringing lifesaving medicines to patients.”

In October 2007, GSK filed and was granted a motion to preliminarily enjoin the PTO from implementing new rules related to patent applications. Those rules were due to become effective in November 2007. In April 2008, the district court ruled on the merits of GSK’s and co-plaintiff Tafas’s challenge and permanently enjoined the USPTO from implementing them on the basis that they were substantive in nature and exceeded the USPTO’s procedural rulemaking authority. In March 2009, on appeal, a divided panel of the Federal Circuit affirmed that judgment in part, and reversed it in part. In July 2009, the Federal Circuit vacated the divided-panel decision and agreed to hear the matter en banc.

The withdrawal of the Final Regulations means that the patent system that had been in place before this litigation will remain in place.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 4 Comments comments.

  1. John White October 8, 2009 10:58 pm

    So, when did you write the post that asked the PTO to withdraw the rules? Really, they need to keep up! But, at least they did come to their senses post election. Hopefully the folks working on Patent Reform will listen ahead of time as opposed to after-the-fact. The system needs tweaks here and there not wholesale reform.

  2. EG October 9, 2009 8:59 am

    Gene,

    Good riddance. Tafas, GSK, David Boundy, Richard Belzer, and Ron Katznelson are to be commended for resisting this monstrous abuse of authority by the prior PTO hiearchy. What a collossal waste time and money for all involved. And a complete “thumbs down” on ever granting the PTO substantive rulemaking authority!

  3. scrappy October 9, 2009 9:44 am

    Hooray! Now we can re-start SOLVING problems in the system rather than expending energy fighting those who would only desire to create them!

  4. wtr October 9, 2009 10:37 am

    Great news. I just hope my state doesn’t require me to give back the CLE credit I got for going to seminars on the new rules. A huge waste of time and money indeed.