As the patent world prepares to deal with the new claims and continuation rules promulgated by the USPTO, some are taking it better than others. Ed Taylor and Dan De Vos of Blakely Sokoloff Taylor and Zafman, voiced their concerns with the rules, but believe the PTO got a lot right with the changes. Other parties, however, are not taking it well and do not have such a positive outlook on the new rules. GlaxoSmithKline has had enough time to review the rules and call shenanigans on their legality. It is GSK’s contention that the rules exceed the PTO’s authority and are unconstitutional. The complaint , courtesy of Mr. Quinn at IPwatchdog.com, states that power to pass rules of such scope and nature rests only with Congress. Of particular interest in the complaint are references to the pending house patent reform bill (H.R. 1908) as proof that the rules are ultra vires. The argument is that the bill includes a provision to ensure the “quality and timeliness” of applications:

Congress has not yet granted the PTO the authority to make rules of practice that restrict continuing applications–if Congress had already given the PTO such authority in 35 U.S.C. Section 2, then Section 14 of H.R. 1908 would be redundant and meaningless.

GSK also weighed in on the Senate version of the bill, applauding the absence of a provision to expand PTO rulemaking authority in S. 1145. Between the GlaxoSmithKline suit and the one previously filed (Tafas v. Dudas), it will be interesting to see how the Eastern District of Virginia handles these two similar cases.

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