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Federal District Court Halts Limitations on Claims and Continuations

April 28, 2008

On April 1, 2008, the Federal District Court in Alexandria, Va., sided with challengers to the U.S. Patent and Trademark Office’s (PTO) proposed new rules limiting claims and continuations in patent applications. In the order issued by the court, the PTO was permanently enjoined from implementing the new rules.

Historically, patent applicants had the ability to file multiple patent applications with different sets of claims based on earlier pending patent applications. These continuation applications, also known simply as continuations, permit a patent applicant or owner to claim priority to the original filing while filing new claims. The new claims must only cover aspects of the invention that were disclosed in the original or parent patent application. This continuation practice allows patent applicants to apply for and receive multiple patents covering various alternatives and embodiments of inventions disclosed in a parent patent application.

Further, patent applicants had the right to file as many claims as desired in their patent applications. Claims totaling over certain numbers might require the payment of additional filing fees to cover the added cost of examining greater numbers of claims, but applicants were not limited as to the number of claims that could be filed.

Limitations of the Proposed Rules

The proposed new rules limited applicants to no more than three continuation applications based on an original parent application, and most often would have limited applicants to only two additional applications. The proposed rules also severely restricted the number of claims that could be pursued in any given patent application. No additional fee payments would have permitted the filing of additional claims or of additional continuations. Clearly, these new rules would have dramatically restricted the rights currently available to patent applicants in the United States.

These new rules were scheduled to take effect on November 1, 2007, and the prospect of the rule enactment sent shockwaves through the business and legal community. Inventors, patent owners, and patent attorneys were all struggling to understand the impact of these new rules and determine how best to adjust their standard practices to comply.

On October 31, 2007, the eve of implementation, the Virginia federal court temporarily enjoined the PTO from enforcing the rules based on a lawsuit filed by an individual, Mr. Tafas, and joined by pharmaceutical giant Smithkline Beecham. As noted above, the court has entered its final order in this matter and made the injunction permanent.

Representatives of the PTO have reported that the PTO plans to appeal the ruling. For now, the rules regarding continuations and the number of claims permitted in an application remain unaltered.

In other news, there are competing patent reform bills in both the U.S. House of Representatives and in the Senate that may provide the PTO with the power to impose these and other substantive rules. The potential appeal and these pending legislative patent reform efforts may have a tremendous impact on the strategy for acquiring and enforcing intellectual property rights in the near future. Any decisions made today regarding filing for patent protection should be made with an eye toward these possible changes to the regime of patent law in the United States.

For more information contact Alan R. Stewart at (920) 831-6364 or or any member of the Intellectual Property Team.

Godfrey & Kahn Named a Top Trademark Firm for 2007

Godfrey & Kahn was listed in a recent IP Today magazine ranking as one of the top trademark firms in the United States. Firms are ranked based on the number of trademark registrations issued in 2007. The list included over 300 firms and individuals this year.

Godfrey & Kahn’s intellectual property attorneys advise clients in a wide variety of matters relating to trademarks and advertising, ranging from trademark clearance searching to analysis of advertisements and entire campaigns. Godfrey & Kahn counsels clients on the selection of brand names, and the design of non-infringing products. Godfrey & Kahn has also created sophisticated protection schemes for advertising campaigns, product designs and trade dress.
For more information contact Brian G. Gilpin at (414) 287-9317 or or any member of the Intellectual Property Team.

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