Client Alert

Court Order Temporarily Stops New U.S. Patent Rules

November 2, 2007

On October 31, 2007, a U.S. District Court issued a Temporary Restraining Order ("TRO") stopping the U.S. Patent Office from implementing a series of new rules that would have drastically changed the patent application process on November 1, 2007. For additional detail regarding the new rules, please view our recent client alert.

The U.S. Patent Office published a series of new rules on August 21, 2007 that would have been effective November 1, 2007. Despite significant debate throughout the industry, many aspects of the new rules remained unclear. First, there was significant debate regarding how the new rules would affect currently pending patent applications. Second, the Patent Office provided minimal and often ambiguous 'guidance' as to how aspects of the new rules would be implemented in practice. Third, it remained unclear whether the Patent Office, itself, had the proper authority to implement such sweeping changes that might curtail and/or contradict the current patent laws passed by Congress.

Ultimately, the Court determined that "the public interest is most served by continuing the status quo and granting the TRO" after examining these three issues, among others. The TRO effectively sets the stage for further court proceedings that could result in a permanent injunction preventing the Patent Office from ever implementing the new rules in their current form.

However, there is no guarantee that any permanent injunction will be granted. Patent applicants are likely well-advised to continue their preparations in the event that the patent procurement rule changes are ultimately implemented. As such, patent applicants may wish to consult counsel for further direction regarding their particular circumstances and patent portfolio.