Court Supports New Patent Office Rules

The U.S. Court of Appeals for the Federal Circuit has largely overturned a lower court's decision to set aside rule changes adopted by the U.S. Patent & Trademark Office in 2007 that seek to improve patent quality and reduce a large and growing backlog of unexamined applications. In a 2-1 decision, the appeals panel said three of the four regulations were within the patent office's authority. GlaxoSmithKline challenged the rules before they took effect, arguing that PTO can issue procedural rules but cannot make substantive changes to the patent process. The regulations upheld by the appeals court put limits on the number of claims an inventor can make about what a patent covers and on the number of times an inventor can request a reexamination of a rejected patent application. But the court struck down a rule that would have limited the number of times an inventor can file a "continuation," the process used to amend a patent application. Briefs filed in support of GSK's lawsuit by pharmaceutical and biotechnology trade associations contend that the new PTO rules will undermine the strong patent protection that encourages financial investment in new drug development. GSK says it is disappointed with the outcome and is reviewing its options.