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U.S. Federal Law Authors: Jason Bloomberg, marlin xp, Maureen O'Gara

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Court Strikes Down PTO's New Rules

PTO Wanted to Limit the Number of Claims a Patent Could Make

Patent lawyers are partying.

The US Patent and Trademark Office was stopped dead in its tracks Tuesday from changing the rules by a federal judge.

In the name of reducing its swelling patent filing backlog, the PTO wanted to limit the number of claims a patent could make to 25 and the number of continuation filings that could be made to three. The changes would have been retroactive. Currently there are no limits.

In a summary judgment District Court Judge James Cacheris found that – under the Patent Act – such tinkering exceeded the PTO’s statutory authority and so is null and void under the law.

The agency, he said, is limited to changing “procedure” rules, not “substantive” ones that alter individual rights and obligations. Such changes have to be mandated by Congress.

His decision was made in answer to the suits against the PTO – backed by many in high tech – (there were more than two dozen amicus briefs) – that GlaxoSmithKline and Dr Triantafylios Tafas of ikonisys filed last year.

Cacheris issued a preliminary injunction last October that stopped the new rules from going into effect on November 1.

The PTO, which argued that the changes are merely procedural, says it’s thinking about appealing.

Critics object that the PTO is trying to shift the examination burden onto the patent applicant – as does its newfangled information disclosure rules.

The 26-page decision can be found at http://pdfserver.amlaw.com/dc/USPTO.pdf.

More Stories By Maureen O'Gara

Maureen O'Gara the most read technology reporter for the past 20 years, is the Cloud Computing and Virtualization News Desk editor of SYS-CON Media. She is the publisher of famous "Billygrams" and the editor-in-chief of "Client/Server News" for more than a decade. One of the most respected technology reporters in the business, Maureen can be reached by email at maureen(at)sys-con.com or paperboy(at)g2news.com, and by phone at 516 759-7025. Twitter: @MaureenOGara

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