Lawyers Defeat Patent Office Bid To Limit Follow-on Patents

Biotech execs and patent lawyers are cheering a decision this week by the new head of the U.S. Patent and Trademark Office, David Kappos. Under pressure of a lawsuit filed by attorneys unhappy with the proposed rules, Kappos yesterday scrapped procedural changes proposed during the Bush Administration that were designed to streamline operations and reduce the backlog of unsettled patent applications. For example, the planned "continuation rules" would have limited the number of times an application could be resubmitted for review without extensive justification. Other changes would have limited the number of claims per application. Opponents—significantly including GlaxoSmithKline—sued to block the changes.

Daniel Ravicher of PubPat said he was disappointed with the ruling: "The regulations tried to rein in abuses of the patent system; without them, the abuses will continue."

Kappos said the proposals were unworkable: “These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public.”

Patent blogger Donald Zuhn says attorneys who have lobbied fervently against the rules feel vindicated by PTO's retreat.

Patent reform advocate Josh Lerner of Harvard writes:

I can certainly appreciate the frustrations of the patent bar with the proposed continuation and application rules—they were a blunt and perhaps inflexible approach. But, however imperfectly, they addressed what remain very real problems with the patent system—the "gaming" of the patent application process by firms eager to get overly broad patent claims and the backlogs in the patent review process. If these proposed reforms to these extremely important issues are to be abandoned, it is my hope that alternative solutions will be rapidly promulgated and implemented.