USPTO shake-up derailed by injunction

No fair changing the rules during the game

By Lucy Sherriff • Get more from this author

Posted in Law, 1st November 2007 10:32 GMT

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New rules proposed by the US Patent Office have been blocked after pharmaceutical giant GlaxoSmithKline won a preliminary injunction against the proposed changes. The firm said it did not believe the US Patent and Trademark Office had the legal authority to redefine procedures like this.

The changes would have limited both the number of claims any one patent could hold, and the number of "continuations", or subsequent, related patent applications that can be made. At the moment there are not limits on either.

The USPTO says the streamlining of the application process is needed to help it clear the backlog of applications it has to deal with, as well as to encourage applicants to be clearer about what they are trying to protect. Other critics of the system, and supporters of the shake-up, say that the lack of limits on continuations has been abused by some filers.

GSK spokeswoman Nancy Pekarek told Reuters that the firm has around 100 pending patent applications which would be affected by the news rules.

Meanwhile the USPTO issued a statement explaining why the changes were needed. "They are part of a package of initiatives designed to improve the quality and efficiency of the patent process and move American innovation and our economy forward," it said.

The new rules were set to come into effect today (Thursday). ®

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