The PTO has a backlog of patent applications, and felt that the growing number of continuations — material that supplements the original disclosure submitted after the original application — and applications with many claims that it received severely hindered its ability to examine newly filed patents. The PTO had hoped the changes would result in greater efficiency in the examination of patent applications. GSK brought about the action as it believed that the PTO did not have the rule-making authority to impose such changes. In the US district court, the PTO asserted that the final rules do not affect the eligibility requirements for obtaining a patent, and therefore they should be allowed to make the changes. However, the court sided with GSK, holding that GSK had raised serious concerns as to whether the final rules are in accord with the US Patent Act.
GSK is reported to have about 2,000 pending applications, of which ∼130 contain two or more continuations. The company claimed that it would suffer irreparable harm if the final rules went ahead, and that they would be unable to file further claims for patents that were developed under the current system. Although the PTO contended that these harms were speculative, and that they themselves would suffer costly problems if the changes were blocked, the court again sided with GSK. In ruling, the court noted that “innovation is encouraged when patent holders and applicants have certainty about how their patents will be treated”. Therefore, the court felt that by allowing the implementation of rules — that depending on later court decisions may or may not remain in effect — is likely to cause uncertainty and a “squelching of innovation”. Accordingly, they granted a preliminary injunction to prevent the new rules going into effect.
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