[Ip-health] Wall Street Journal Health Policy: Glaxo Returns to Court in Fight Over Patent Procedures

[Thiru Balasubramaniam]

http://blogs.wsj.com/health/2008/12/04/glaxo-returns-to-court-in-fight-over=
-patent-procedures/

December 4, 2008, 3:58 pm
Glaxo Returns to Court in Fight Over Patent Procedures
Posted by Scott Hensley

GlaxoSmithKline goes to Washington tomorrow to argue in a federal
appeals court that government rules intended to curb abuse of the U.S.
patent system aren=92t such a hot idea after all.

The drugmaker will carry the legal flag for Big Pharma and other
patent-intensive industries in a case about procedural changes the
U.S. Patent and Trademark Office devised last year to streamline the
patent application process and to unclog a backlog.

The rules, as our pals at WSJ=92s Law Blog explained it, would reduce
the number of claims and continuations allowed in a patent
application. Claims help define a patent, while continuations let an
applicant amend claims and contest those that get rejected.

Critics say continuations are clogging up the works at the patent
office, where 700,000 patent applications sits unexamined, Dow Jones
Newswires reports.

But Glaxo and its intellectual property allies say the rules, adopted
last year, undermine incentives for risk-taking in the development of
new drugs and other products, Dow Jones writes.

The rules got tossed this year when a district judge determined the
PTO doesn=92t have the power to make substantive changes to the patent
process. Now the PTO will try again in the U.S. Court of Appeals for
the Federal Circuit. (The case is Tafas v. Dudas, and you can see the
Glaxo brief here.) General Electric, biotech firm Elan and Monsanto
have filed briefs in support of Glaxo.

Stanford University law professor Mark Lemley told Dow Jones that if
the patent office loses, any reforms in the patent system will have to
come from Congress, which hasn=92t been able to get legislation done in
recent years. =93It=92s a significant piece of any patent-reform effort to
try to weed out abuses of the continuation process,=94 Lemley said. =93If
the patent office can=92t do this, it=92s not clear what can be done.=94
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Read more: Biotech, Patents, Drugs

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Thiru Balasubramaniam
Geneva Representative
Knowledge Ecology International (KEI)
thiru@keionline.org


Tel: +41 22 791 6727
Mobile: +41 76 508 0997