No Patent Reform: Court Blocks New Patent Rules

Last summer, the US Patent Office issued a package of new rules for patent applications. On Monday, the U.S. District Court for the Eastern District of Virginia decided to permanently block the changes.

The reactions from patent lawyers are mainly upbeat. “We are still dancing—it came out yesterday and we thought it was a cruel April Fool’s joke,” David Resnick, a partner at Nixon Peabody in Boston, told us in an e-mail yesterday. The Wall Street Journal’s Law Blog reports that “this morning, we were flooded with notes from patent lawyers who could barely contain their glee.”

The rejected rule package would have radically changed the way the U.S. patent system works. The goal was to ease the Patent Office’s workload, reduce its backlog, and speed up the review process, by limiting the number of claims and possible continuation applications. (Continuations contain additions to a patent’s original claims, or contest the office’s rejection of a patent.)

Big software companies have pushed the reforms. But in the pharma and biotech industry, the new rules met strong opposition. In these sectors it’s common to submit new empirical data from experiments and clinical trials in continuation applications.

Pharma giant GlaxoSmithKline and inventor Triantafyllos Tafus, founder of New Haven, CT-based biotech startup Ikonisys, both took the Patent Office to court to try to stop the proposal. On October 31, the day before the rules were going to be implemented, the Virginia court decided to put the whole package on hold. That preliminary ruling has now been confirmed.

But while this week’s decision is being called “permanent,” the Patent Office might still get its way. The Patent Baristas blog compares the Office with a B-movie villain who always comes back, and warns against premature celebrations.

The court’s decision can be found on the Patent Docs blog.

Erik Mellgren is a Swedish journalist who worked for Xconomy Boston in 2008 as part of the Stanford Innovation Journalism Fellowship program. His real job is with Ny Teknik, a leading technology and innovation magazine in Sweden, but he loved seeing the Red Sox at Fenway. Follow @

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