Rule tweak quells patentee panic

The United States Patent and Trademark Office (USPTO) announced on 7 August that it will adjust the retroactive element of a clause in its Claims and Continuation Final Rule, in response to widespread criticism from firms with large patent portfolios. Published last year, the rule stipulated that patentees would have to provide lists of related applications in their filings, plus statements of why those applications were not claiming the same invention. Filing documents were also required to be shorter.

Concerns over the mounting patent backlog prompted the rule, but the Patent Office was soon litigated by major firms that feared the potential financial implications – in labour terms – of re-filing past patents. First to litigate was GlaxoSmithKline (GSK), controller of a vast array of interrelated patents for drugs and household goods. In October 2007, a major ally arrived in the form of the American Intellectual Property Law Association (AIPLA), which filed an amicus curiae brief backing GSK’s move to force an injunction on the clause. The AIPLA brief was, in turn, backed by IBM, who signed a declaration of support. Since then, the USPTO rule has been effectively frozen.

The injunction will remain in place pending the resolution of the USPTO’s appeal in the US Court of Appeals for the Federal Circuit. In the meantime, however, the USPTO has rethought the rule’s content and altered the retroactive element in favour of an as-yet undecided, future-effective date. USPTO deputy director, Margaret Peterlin, said in a statement: ‘Our primary duties are to ensure quality and efficiency. This change to the applicability dates, while delaying aspects of the rule’s quality and efficiency effects, should allay some concerns regarding applicant requirements in the interim.’