Proposed USPTO Claims and Continuation Rules Rejected

A Virginia District Court rejected the USPTO’s proposed rules on patent applications, stating that the rules are "not in accordance with law" and "in excess of statutory jurisdiction [and] authority." The proposed rules, initially scheduled to become effective on November 1, 2007, sought to limit the number of claims an applicant could present in a single patent application as well as limit the number of "continuing applications" originating from a patent application. Judge James C. Cacheris of the Eastern District of Virginia stated that the proposed rules were substantive in nature and the USPTO’s rulemaking authority does not extend to substantive rules.

The lawsuit against the USPTO was filed by pharmaceutical company GlaxoSmithKline and was supported by several organizations including the American Intellectual Property Law Association and the Biotechnology Industry Organization.

The full text of the opinion is here.