US court rules largely for patent office on Glaxo

The article is reproduced from the “Alibaba.com”). WASHINGTON, March 20 – A U.S. appeals court largely overturned on Friday GlaxoSmithKline Plc’s summary judgment win in a fight against new patent office rules.

The U.S. Court of Appeals for the Federal Circuit held that three of the rules to which Glaxo and other patent holders had objected were valid, while a fourth was invalid.

Glaxo had won the four points on summary judgment in an earlier proceeding. The appeals court sent the case back to the U.S. District Court for the Eastern District of Virginia.

The Federal Circuit upheld rules that limit the number of claims that an inventor can make. A patent claim is a statement which describes an element of a patent.

The U.S. Patent and Trademark 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.

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 rules were temporarily set aside early in the court fight.

The appeals court agreed to let the patent office put some 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 to request more.

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.

While the companies’ primary objection to most of the rules was that they were retroactive, the court arguments focused more on whether the patent office had the right to put restrictions on what could be filed.

Glaxo had argued that the rules were substantive, not procedural, and beyond the scope of the patent office to change unilaterally.

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