Eight months after being handed a stinging defeat, the US Patent Office will today attempt to convince a federal appeals court to overturn a ruling that prevented controversial new regulations for limiting the size of applications for new patents and reducing the backlog of follow-up submissions.

At issue is continuation of patent applications. Current law allows an inventor to file several different types of patent applications to cover new improvements to their inventions, or to cover different aspects of their inventions. One type is a challenge, or continuation. The USPTO’s proposed rule would reduce the number of times an applicant can contest or amend rejected or pending patent claims.

In its lawsuit, Glaxo claimed the new rules were arbitrary and would have prevented it from pursuing patent applications and obtaining patents on one or more of its inventions, especially since the drugmaker has hundreds of various types of applications in the works. In essence, Glaxo fears the new rules would make it harder to make such filings, therefore threatening its investments.

“Discovery and development of just one new drug can take more than 10 years and a billion dollars or more in upfront investments,” Glaxo argues in its brief. “Companies like GSK rely on the robust patent protection provided by the current patent laws to recoup their significant investments.”

In rejecting the USPTO rules, US District Court Judge James Cacheris last April ruled the agency devised rules that were “in excess of statutory jurisdiction (and) authority.” This is the ruling.

However, in its brief, the USPTO argues that, “in recent years, the backlog of unexamined applications has more than tripled, growing from 224,446 in 1998 to 701,147 in 2006. The growing backlog has had a crippling effect on the Office’s ability to examine new applications. The average time that an application remains pending before first Office action has grown to 22.6 months, and up to 43.9 months in certain areas.

“Such delays have a particularly acute effect on industries such as computer software and hardware technologies, where product life cycles are short and new improvements can quickly make the technology obsolete…As the USPTO spends more time reviewing applications that are a repetition of prior applications that have already been examined, it is necessarily diverted from reviewing new applications disclosing new technology and innovations.

Hat tip to IPWatchdog