US court re-opens debate on controversial rule to limit size of patent applications
This article was originally published in SRA
A US court decision has reopened the debate surrounding four controversial rules issued by the Patent and Trademark Office in 2007 that seek to limit the size of patent applications1.
The rules, which have been the subject of intense litigation and strongly opposed by the life sciences industry2,3, were largely upheld by a panel of the Federal Circuit that issued a split decision on the matter on 20 March this year. Deemed as a major victory for the PTO, the panel court partially upheld the PTO’s authority to impose strict new limits on patent applications. Now, an 11-member en banc panel of the Court of Appeals for the Federal Circuit has voted to rehear the case.
Independent innovator Triantafyllos Tafas was the first to challenge the rules and GlaxoSmithKline later supported Dr Tafas’s complaint. The life sciences industry, as a whole, has been opposing the rules on the grounds that they could stifle innovation and stand in the way of obtaining adequate patent protection.
Among other things, the rules placed limits on the number of continuations and claims an applicant could file per patent application.
The panel order struck down the proposed rule limiting the number of continuing patent applications that an applicant may file. However, in a surprise to many patent attorneys, it upheld the right of the PTO to limit the number of claims in each patent application to no more than five independent claims and 25 total claims and the number of requests for continued examination that an applicant may file, says law firm Banner & Witcoff4.
The en banc order has vacated the panel decision. It is likely the judge will change some aspects of the [panel order] decision, as it is unlikely they would take a case en banc only to endorse the majority view, Banner & Witcoff added5.
References
1. US Court of Appeals for the Federal Circuit, Tafas v Doll (formerly Tafas v Dudas), Docket number: 2008-1352, 6 July 2009, www.cafc.uscourts.gov/opinions/08-1352o.pdf
2. The Regulatory Affairs Journal – Pharma, 2009, 20(1), 63
3. The Regulatory Affairs Journal – Pharma, 2008, 19(5), 344-345
4. Banner & Witcoff, Recent News, 7 July 2009, www.bannerwitcoff.com/index.php?option=com_bwnews&id=373
5. Banner & Witcoff, Recent News, 19 July 2009, www.bannerwitcoff.com/index.php?option=com_bwnews&id=377