A federal judge in Virginia tossed new regulations proposed by the US Patent and Trademark Office that would have limited the size of applications for new patents and reduce follow-up submissions. The decision is a boost for pharma, but particularly, Glaxo which last fall challenged the new rules that had been scheduled to go into effect last November.
At issue was one rule concerning the continuation of patent applications. Current US patent law allows an inventor to file several different types of patent applications to cover new improvements to their inventions, or to cover different aspects of their inventions. One type is a challenge, or continuation. The USPTO's proposed rule would have reduced the number of times a patent applicant can contest or amend rejected or pending patent claims.
In its lawsuit, Glaxo claimed the new rules were arbitrary and would have prevented it from pursuing patent applications and obtaining patents on one or more of its inventions, especially since the drugmaker has hundreds of various types of applications in the works. In essence, Glaxo feared the new rules would have made it harder to make such filings, therefore threatening its investments.
In rejecting the USPTO rules, US District Court Judge James Cacheris wrote in his 26-page ruling that the agency devised rules that were "in excess of statutory jurisdiction (and) authority.” This is the ruling.
In a statement, Glaxo says the ruling "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."