Patent application final rule will not apply retroactively if PTO wins lawsuit

RICHMOND, Virginia The Patent and Trademark Office will not retroactively apply a final rule affecting patent application procedures if an injunction against the rule is removed.

The U.S. District Court for the Eastern District of Virginia permanently enjoined the rule in April after Triantafyllos Tafas and GlaxoSmithKline challenged it. Tafas, an inventor listed on several patents, sued the PTO in August 2007, and GSK filed suit that October. The two cases were later consolidated.

The rule would create a presumption that inventions are patentably indistinct if an applicant files multiple submissions to the PTO that include common inventors or overlapping disclosures on the same date or within two months of a previous filing. Applicants would be required to identify all related patents and applications.

Tafas alleged that the government agency issued rules that were “arbitrary, capricious, an abuse of discretion, otherwise not in accordance with law, contrary to plaintiff’s constitutional rights and in excess of the USPTO’s statutory jurisdiction and authority,” according to court documents.

In its decision, the district court found the final rule is “substantive in nature and [exceeded] the scope of the USPTO’s rulemaking authority.”

The PTO has appealed the case to the U.S. Court of Appeals for the Federal Circuit. If the court lifts the injunction, the new rule would apply only to applications filed on or after a future effective date, according to the PTO’s notice.