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Federal appeals court to rehear patent rules challenge

[JURIST] A federal appeals court on Monday ordered [text, PDF] an en banc rehearing of a patent case that challenges new US Patent and Trademark Office (PTO) [official website] rules [text, PDF]. The US Court of Appeals for the Federal Circuit [official website] will reexamine a previous ruling [opinion, PDF; JURIST report] that upheld three of the rules but rejected a fourth after all four were struck down [opinion, PDF; JURIST report] by a district court. The rules upheld would limit the number of times that someone can request a re-examination of a patent and require applicants with several claims to submit additional materials among other provisions aimed to address the "large and growing backlog of unexamined patent applications." The three-judge panel for the court rejected one rule [37 CFR § 1.78(d)(1)(i) text] that requires a person pursuing more than two continuation applications to file a petition showing that the added information could not have been provided previously, removing all references to the prior application if the requisite showing is not made. The panel ruled that this fourth rule was inconsistent with 35 USC § 120 [text], which entitles patent applicants to use the filing date of the previously-filed application. The original action was brought by plaintiffs Smithkline Beecham Corporation, doing business as GlaxoSmithKline [corporate website], and Dr. Triantafyllos Tafas [TradeVibes profile] against the PTO and the office's former director Jon Dudas [professional profile].

In addition to rules aimed at slowing down the influx of applications, the scope of patentable subject matter may affect the number of patents being filed in the future. In June, the US Supreme Court [official website] granted certiorari [JURIST report] in the controversial case of Bilski v. Doll [docket; cert. petition, PDF] to review the scope of patentable subject matter. In Bilski, the Court will rule on the rejection of a business method patent that sought to protect a method of hedging risks in commodities trading. The Federal Circuit narrowly defined [opinion, PDF; JURIST report] the "machine-or-transformation" test to be used in determining business method patent eligibility.

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