[Ip-health] Court rejects Patent Office's new rules, sides with GSK

[robert weissman]

http://www.reuters.com/article/domesticNews/idUSN0129350820080401

Court rejects Patent Office's new rules
By Diane Bartz
WASHINGTON (Reuters) - A U.S. court has thrown out new U.S. Patent and
Trademark Office rules which were designed to limit the size of patent
applications and reduce a growing backlog of patent requests.

The ruling issued on Tuesday was a victory for Europe's biggest
drugmaker, GlaxoSmithKline Plc, which had challenged the rules, and
other companies which have large patent portfolios.

Because the new rules were to be retroactive, companies like Glaxo
feared they would have to refile applications that exceeded the new
limits, at a time when the patent office takes 32 months on average to
either approve or reject a patent.

The patent office had argued the limits were needed to reduce a large
and growing backlog of applications, which sometimes consist of two
dozen boxes of documents.

"The court finds that the final rules are substantive in nature and
exceed the scope of the USPTO's rulemaking authority," wrote Judge James
Cacheris, of the U.S. District Court for the Eastern District of
Virginia, in a 26-page order.

Cacheris issued a temporary injunction against the rules on October 31,
a day before they were to have gone into effect.

"We are pleased that the court has considered our arguments and decided
that the PTO lacks the necessary authority to implement the proposed
rule changes," Glaxo said in a statement on Tuesday. "This is a judgment
in support of innovation across all industries."

The patent office had no immediate response to the ruling.

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

Under the new rules, the number of claims in each patent application
would have been limited to 25. A patent claim is a statement which
describes an element of a patent.

The rules would have also limited follow-up filings, known as
continuations, to three. Applicants could have asked for more, but would
have had to show cause.

Currently, there are no limits on claims or continuations.

The decision comes amid general discontent among many U.S. companies
with the U.S. Patent and Trademark Office as the backlog of applications
has risen steadily in the past four years. In the communications sector
it takes an average of 43.1 months for a patent application to be
approved or rejected, according to patent office figures.

Congress is considering overhauling the patent process, but its focus is
not on the patent office backlog but on reducing the number of patent
infringement lawsuits.

A bill passed the U.S. House of Representatives in September but has
stalled in the Senate because of opposition from drug firms like Eli
Lilly & Co, seed and herbicide company Monsanto Co and smaller tech
companies.

Other congressional patent proposals are aimed at stopping
forum-shopping, or choosing court venues that are fast or plaintiff
friendly. The House bill would allow public review of patents after they
are granted and would lessen the punishment for failing to inform the
patent office of information relevant to patentability. The punishment
now is loss of the patent.

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Court rules for GlaxoSmithKline in US Patent and Trademark Office case

Philadelphia, PA (April 1, 2008) =96 The US District Court for the Eastern
District of Virginia has granted summary judgment to GlaxoSmithKline
[NYSE:GSK] and Tafas, ruling in support of GSK=92s challenge to final
rules issued by the US Patent and Trademark Office (PTO) on August 21,
2007.  Those rules would limit the number of continuation patent
applications and claims that can be presented to the PTO, and
significantly change other patent laws. The Court has decided that the
proposed rules are substantive in nature, and since the PTO authority
does not extend to making substantive rule changes, the PTO has exceeded
its rulemaking authority under the law.

The following is GSK=92s statement regarding the Court=92s decision:

We are pleased that the Court has considered our arguments and decided
that the PTO lacks the necessary authority to implement the proposed
rule changes. This is a judgment in support of innovation across all
industries. It reaffirms that all who want to patent their inventions in
the United States will be allowed to seek protection on the full scope
of their discoveries.

GlaxoSmithKline - one of the world's leading research-based
pharmaceutical and healthcare companies - is committed to improving the
quality of human life by enabling people to do more, feel better and
live longer.  For company information, visit GlaxoSmithKline on the
World Wide Web at  www.gsk.com.