Some food for thought:
- GSK made two successful legal arguments against the new rules: (1) that the limitations on continuations are substantively contrary to 35 USC 120 and associated precedent; and (2) that the retroactive nature of applying the new rules to already pending applications exceeds PTO authority.
- Even if the rule challengers win on those two arguments, the PTO would still be able to implement portions of the new rule that limit the number of claims in newly filed applications.
- Furthermore, the retroactive nature of the claim rules is less compelling than for the continuation rules. The proposal does not truly limit the number of claims. Rather it only requires an “examination support document” be filed if the claim count exceeds the 5/25 limit. While many have noted these so called ESD’s are onerous, at least one company claims an automated approach (Link). This would increase applicant’s cost, but arguably would not harm any property rights. Modestly increasing regulatory cost does not constitute an unlawful retroactive effect.