Public Interest Groups Back Federal Court Appeal to Implement New U.S. Patent Rules; Proposed Regulations Would Curtail Abusive Behavior by Patent Applicants

Wednesday, July 30, 2008 General News
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WASHINGTON, July 29 A coalition of consumer advocacy and public interest groups today filed legal papers supporting new U.S. Patent Office (USPTO) rules that would curtail abusive behavior by patent applicants and improve patent quality. The tactics are used frequently by drug companies to get patents they don't deserve.

In a friend-of-the-court brief filed in U.S. District Court of Appeals for the Federal Circuit in Washington, DC, the groups urged that a decision by the federal District Court for Eastern Virginia blocking the proposed rules be overturned. The groups urged the appeals court to implement the USPTO's proposed rules immediately.

The proposed regulations ask applicants to justify the need for more than two continuations per application and to assist the USPTO in performing initial technological research on applications that contain an excessive number of claims.

The groups joining in filing the Public Interest Amici brief are: The Public Patent Foundation ("PUBPAT"), AARPP, Computer & Communications Industry Association ("CCIA"), Consumer Watchdog (Formerly the Foundation for Taxpayer and Consumer Rights), Essential Action, Initiative for Medicines, Access & Knowledge ("I-MAK"), Prescription Access Litigation ("PAL"), Public Knowledge ("PK"), Research on Innovation ("ROI"), and Software Freedom Law Center ("SFLC").

"The public interest overwhelmingly supports the USPTO's Final Rules for at least two significant reasons," the brief said. "First, they will enable the USPTO to curtail abuses of the patent application process made by those patent applicants who seek to pervert the system to gain an unfair advantage. Second, the Final Rules will help the USPTO improve patent quality, which is a critical issue for ensuring the patent system benefits the American public."

The new rules were to have been implemented by the Patent Office on Nov. 1, 2007, but were blocked by suits brought by drug maker GlaxoSmithKline and inventor Triantafyllos Tafas.

Under current rules which allow unlimited continuations, USPTO examiners who have repeatedly rejected an application often face an endless stream of continuation applications that "may well succeed in 'wearing down the examiner', so that the applicant obtains a broad patent not because he deserves one, but because the examiner has neither the incentive nor will to hold out any longer," according to a study by Professor Mark A. Lemley of Stanford Law School and Kimberly A. Moore, now a Circuit Judge on the U.S. Court of Appeals for the Federal Circuit.

Pharmaceutical companies take advantage of continuations in order to help them keep monopolies over their drugs. According to the publication Nature Biotechnology, from 1995 to 1999, 41% of drug patents issued were based on continuations. In contrast only 22% of the patents issued in mechanical engineering were based on continuations.

The consumer and public interest groups' brief said the new rules would:

-- Curtail abuse of continuation applications

-- Help the USPTO improve patent quality.

-- Increase patent office efficiency.

The legal papers, available at or at, also noted that while briefs filed opposing the new rules claimed they were acting in the "public interest", in fact they represented the narrow interests of patent holders and patent attorneys.

"Congress has intentionally implemented a patent system that balances the incentives provided to patentees with the benefit to the public of the disclosure and ultimate dedication of the resulting inventions to society," the consumer groups said. "Thus, the public interest lies in an e

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