Glaxo wins court order halting new U.S. patent rules

By Diane Bartz

WASHINGTON (Reuters) - Pharmaceutical company GlaxoSmithKline Plc (GSK.L) won a preliminary injunction on Wednesday stopping the U.S. Patent and Trademark Office from implementing new rules to streamline the patent application process, the patent office and Glaxo said.

The rules were to have gone into effect on Thursday. They would put limits on both "claims," or how an applicant defines an invention, and on "continuations," the number of times an applicant can file on behalf of the same innovation.

Under the new rules, claims were to be limited to 25, while continuations were to be limited to three. In both cases, applicants are allowed to request more but must show cause.

Currently, there are no limits on claims or continuations.

"We filed the lawsuit because we don't believe the Patent and Trademark Office has the authority to make these changes under patent law," said Glaxo spokeswoman Nancy Pekarek.

Glaxo had about 100 pending patent applications which would be affected if the new rules went into effect, Pekarek said, because the rules were designed to be retroactive.

Glaxo was supported in the lawsuit by the American Intellectual Property Law Association, Pharmaceutical Research and Manufacturers of America and the Biotechnology Industry Organization.

U.S. Judge James Cacheris of the Eastern District of Virginia issued the injunction.

The U.S. patent office defended the rule changes as necessary.

"They are part of a package of initiatives designed to improve the quality and efficiency of the patent process and move American innovation and our economy forward," the patent office said in a statement.

The patent office has said that eliminating continuations would slash its crushing backlog of cases by 30 percent.