Continuation Rules Would Cause GSK Irreparable Harm
Yesterday, I blogged briefly about the Eastern District of Virginia's injunction preventing the PTO's new continuation rules from taking effect today, November 1st. But the Court's order was not available yet. The order has been issued -- click here for a copy -- and it is very interesting. The Court held that plaintiff GSK had shown a likelihood of success on the merits regarding several issues:
- That limiting the number of continuations a party can file violates 35 U.S.C. Section 120, which states that later filed applications have the same effect as their parent applications.
- That the new rules are impermissably retroactive because the limits on numbers of claims and continuations will change the terms of the bargain struck between inventors currently prosecuting their applications and the PTO when those inventors filed their applications, prior to the new rules going into effect.
- That the requirements for Examination Support Documents ("ESD") are impermissably vague because they do not sufficiently define the paramters of the search required.
The Court also held that GSK would be irreparably harmed by implementation of the rules because GSK has about 2,000 pending applications and GSK's rights in each of those applications would be materially altered by the new rules.
[Updated with more links after the jump.]
The balance of hardships weighed in GSK's favor. The PTO's losses were sunk costs -- updating computer systems and training staff. But if the PTO wins the suit and later implements the continuation rules, the new computer systems and the employee training will still be valuable. On the other hand, the entry of the continuations rules will materially limit GSK's rights in its 2,000 pending patent applications.
Finally, the public interest is in maintaining the status quo, rather than allowing the implementation of a new set of rules which could be reversed by the Court in a matter of months.
For more on the preliminary injunction and thoughts about whether the PTO will file an emergency appeal with the Federal Circuit, check out:
- Patently-O
- FileWrapper
- 271 Patent Blog
- WSJ Law Blog
- Patent Practice Center Patent Blog
- Patent Baristas
- Patent Docs and here
- Patent Prospector
- PHOSITA
- Washington State Patent Law Blog
I will continue to update this post with coverage of the injunction and any appeals throughout the day.
