USPTO Continuation and Claim Rules: AIPLA Request Injunction to Halt New Rules

Feeling some pressure from its members, the AIPLA has now filed an amici brief in support of GSK’s motion for a preliminary injunction to stop enforcement of the PTO’s new rules on continuations and claim count.

A preliminary injunction requires the moving party to satisfy a four factor test of equitable relief:

Likelihood of success on the merits of the case;
Irreparable harm that will persist without relief;
Balance of hardships weights in favor of relief; and
The public interest supports relief.

In its brief, the AIPLA focused on how the new rules work to destroy established interests. The brief focuses on a tradeoff between patents and trade-secrets — indicating that the inventions embodied by many currently pending applications would have been kept as trade-secrets but for the longstanding “guarantee of a full and fair opportunity to seek a spectrum of patent protection.” According to the AIPLA, the limitations on claims and and continuations severely inhibit that guarantee and thus create an irreparable harm to current applicants.

David Kappos, Chief of IP at IBM, filed a declaration in support of the AIPLA brief. Kappos noted the incredible cost that it will incur to review its 25,000+ pending patent applications to ensure compliance. Writing on behalf of SanDisk, two attorneys noted that the technology company will lose at least $200,000 in filing fees due to required consolidation. Writing as a paid expert for SKB, former PTO Director Harry Manbeck has filed a declaration explaining why, in his view, the new rules are illegal.

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