July 7, 2009 / 3:40 PM / 10 years ago

U.S. court to rehear spat over patent office rules

WASHINGTON, July 7 (Reuters) - A U.S. appeals court has said it would rehear a fight between drugmaker GlaxoSmithKline Plc (GSK.L) and the patent office over new rules aimed at cutting a backlog of patent applications.

The U.S. Court of Appeals for the Federal Circuit had largely sided with the Patent and Trademark Office on March 20, upholding all but one of the four rules that Glaxo had opposed.

But the court vacated that ruling in an order dated July 6 and said it would rehear the case en banc, which means 12 judges will consider the case. The original panel was three judges.

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

The new rules were designed to force companies to submit shorter patent applications, but a decision to make those rules retroactive prompted fears from companies like Glaxo that they would have to refile applications that exceeded the new limits.

The rules were set aside during the court fight.

The rules include a limit on the number of claims that an inventor can make in support of a patent as part of the Patent and Trademarks Office effort to cut the size of applications, which can 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.

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 Matt Daily

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