Complaint filed to enjoin USPTO from implementing new rules
Glaxosmith-Kline has filed a federal complaint in ED Virginia’s “rocket docket” seeking to enjoin the USPTO from implementing the new patent rules. The new rules address continuing applications, requests for continued examination, and examination of claims in patent applications. They amend 37 C.F.R. sec. 1.75, 1.78, and 1.114, and add 37 C.F.R. 1.267. GSK alleges that the Rules were promulgated without proper legal authority, and are also “vague, arbitrary and capricious.” Further, they “prevent GSK from fully prosecuting patent applications and obtaining patents on one or more of its inventions.”
GSK alleges that Congress has not empowered the PTO to promulgate such regulations. As a federal governmental agency, the PTO obtains its power soley from Congress, under 35 U.S.C. sec 2 (and Congress, in turn, derives its authority regarding patents from the U.S. Constitution art. 1 sec 8 cl 8.) Congress has not yet granted the PTO to make these rules, so GSK says that the PTO engaged in ultra vires rulemaking.
Further, GSK alleges, the new rules regarding continuing applications, requests for continued examination, and examination of claims in patent applications are inconsistent with current patent law passed by Congress. This action violates 35 U.S.C. sec. 2, which gives the PTO power to promulgate rules and establish regulations to govern conduct of proceedings in the PTO, as long as they are not inconsistent with the law. The extent of the PTO’s authority to promulgate rules is currently being debated in Congress.
Lastly, GSK argues that the Rules “pose an unconstitutional arbitrary and capricious regulatory taking of GSK’s patent and patent application property rights.”
These claims are much more serious than the complaint already filed on this issue. It will be interesting to watch this debate flush out in parallel to current Congressional action regarding patent law.