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Court mostly backs new patent office rules
March 20, 2009 / 11:10 PM / 8 years ago

Court mostly backs new patent office rules

WASHINGTON (Reuters) - A U.S. appeals court has largely sided with the Patent and Trademark Office over new rules aimed at cutting a backlog of patent applications.

The U.S. Court of Appeals for the Federal Circuit said all but one of the four rules were within the patent office’s rulemaking authority and overturned a summary judgment victory against the rules won by drugmaker GlaxoSmithKline Plc (GSK.L) in a lower court.

The 2-1 decision sent the case back to the U.S. District Court for the Eastern District of Virginia for further proceedings.

The rules include a limit on the number of claims that an inventor can make in support of a patent, to try to cut the size of applications, which sometimes consist of two dozen boxes of documents.

The patent office had set a limit of five independent claims and 25 claims total, unless the patent applicant could give a good reason to submit more.

Another change would put limits on continuations, procedures that allow inventors to make follow-up filings. The patent office had said it would allow just three follow-up filings unless an applicant could give a good reason for more.

But in a win for Glaxo, the federal circuit said the patent office could not implement a rule limiting ordinary continuations to two because that rule conflicted with a portion of the Patent Act. But it allowed the office to allow just one continuation made after a patent is rejected.

The rules have been set aside during the court fight.

Glaxo had argued that the rules were substantive and beyond the scope of the patent office to change unilaterally.

“While we do not purport to set forth a definitive rule for distinguishing between substance and procedure in this case, we conclude that the final rules challenged in this case are procedural,” said the majority ruling for the court.

Because the new rules were to be retroactive, companies like Glaxo feared they would have to refile applications that exceeded the new limits.

Glaxo said that it was reviewing its options.

“We are disappointed with the court’s rulings that the final rules adopted by the Patent Office are procedural, given their dramatically negative effect on a wide range of industries and innovations,” a spokeswoman for Glaxo said in an emailed statement.

The appeals court said numerous issues remained for the district court to decide, including whether the rules for impermissibly retroactive, or arbitrary and capricious.

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

Reporting by Diane Bartz, editing by Gerald E. McCormick and Tim Dobbyn

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