November 01, 2007

At the end of yesterday’s hearing in Tafas/SmithKlineBeecham v. USPTO, Judge Cacheris of the U.S. District Court for the District of Virginia issued an oral decision to temporarily enjoin the USPTO from implementing the new set of patent rules that were expected to be effective today. The Court then followed the oral decision with the following Order, for which the entire text (less the caption) is reproduced below. It is my understanding that hearings on the matter will resume in January.



For the reasons stated in the accompanying Memorandum Opinion, it is hereby ORDERED:

1) Defendants’ Motion to Strike Exhibit E of the Memorandum in Support of Plaintiffs’ Motion for Preliminary Injunction is DENIED:

2) The Motions of American Intellectual Property Law Association, HEXAS, LLC, The Roskamp Institute, Tikvah Therapeutics, Inc., and Elan Pharmaceutical Corp. for Leave to File Amici Curiae Briefs in Support of Plaintiffs’ Motion for a Temporary Restraining Order and Preliminary Injunction are GRANTED;

3) Plaintiffs’ Motion for a Preliminary Injunction is GRANTED;

4) Defendants are preliminarily enjoined from implementing the Final Rules titled “Changes to Practice for Continued Examination Failings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications,” 72 Fed. Reg. 46716, 46716-46843 (Aug. 21, 2007)(to be codified at 37 C.F.R. pt. 1);

5) Defendants are preliminary enjoined from issuing new regulations restricting the number of continuing applications, the number of requests for continued examination, and the number of claims that may be filed with the PTO;

6) This Order shall expire upon the entry of a final judgment in this matter, unless otherwise ordered by the Court;

7) The Clerk shall forward a copy of this Order and Memorandum Opinion to all Counsel of Record.

October 31, 2007
Alexandria, Virginia

/s/ James C. Cacheris


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Mark Reichel
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I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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