Controversial New Patent Rules Blocked - Commentary by Milord A. Keshishian

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The new patent rules, which were criticized as stifling American innovation by limiting the scope of patent protection to inventors, were set to go into effect on November 1, 2007. On the eve of the rules' implementation, in the U.S. District Court for the Eastern District of Virginia, pharmaceutical company GlaxoSmithKline won a preliminary injunction against the U.S. Patent and Trademark Office ("PTO"), temporarily blocking the enactment of the new patent rules. The patent rules were largely criticized in solicited commentary to the PTO because the new rules would increase the cost of seeking patent protection and limit the rights of applicants.

serious concerns as to whether the Final Rules comport with the Patent Act;

Patent attorney, Milord A. Keshishian, offers an analysis of Glaxo's preliminary injunction victory. According to Keshishian, the PTO's new patent rules limited the number of "claims" that an applicant could file, thereby limiting the scope of protection afforded an invention. Also, the new rules limited the number of "continuation" applications that could be filed as an offshoot of an original application. Continuation applications are very common in the pharmaceutical industry because, after conducting tests, new information is discovered that needs to be added to the original application via a continuation application.

In the written ruling blocking the PTO's implementation of the new rules, Judge James Cacheris stated that Glaxo raises:

  • "serious concerns as to whether the Final Rules comport with the Patent Act;" and
  • "serious concerns as to whether a reasonably prudent person would be able to comply with the [Examination Support Document] requirements."

Click here to read the order:

According to Keshishian, the court's ruling was sound because the PTO itself estimates that the cost of preparing an examination support document will be in the range of "$2,563 to $13,121" and that additional expense is "not expected to result in a significant impact" on small entities. "In the practical world, however, having represented independent inventors and start-ups, that additional expense will either dissuade inventors from filing additional claims that sufficiently protect their inventions or force them to abandon the notion of patent protection," said Keshishian. He added that "the loss of patent protection negatively impacts innovation because without patent protection, there is no incentive to invest in research and development."

The court battle will now move to the summary judgment stage, where Glaxo will ask the court to permanently block the new rules. The summary judgment hearing is currently scheduled for December. Keshishian predicts that Glaxo will also be victorious at the summary judgment phase.

About Milord & Associates, PC
Milord & Associates is a law firm that protects its clients' businesses, innovations and investments by both litigating and filing for intellectual property protection. Focusing exclusively on intellectual property law, the firm is well versed in all aspects of trademark, copyright, patent, trade secret, unfair competition and domain name law. Additional information can be found at

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