Tafas v. Doll: Drug Companies Face New Limits on Patents

Drug companies will be dismayed by a federal appeals court ruling that came down on Friday which gives the U.S. Patent and Trademark Office new powers to limit the way patents are filed.

The drug business depends heavily on its ability to patent chemicals and processes for defined lengths of time that give the patent-holder exclusive use of those products, protecting them from competition.

The ruling, in Tafas v. Doll, says that the USPTO does have the power to alter its own rules and restrict the way patents are filed. (BNET Technology’s Erik Sherman has an excellent summary of the decision here.) The new ruling would limit companies to:

… five unique claims and 25 total claims per invention, versus the historic lack of limit. Among other things, [the new rules] would also have restricted the number of requests to reconsider a decision to reject a patent application as well as the number of continuations, or chances to effectively amend a patent application already in process.

Companies believe the new, restricted rules will trigger more appeals of the rules — and thus make the process even longer.

You can see which drug companies opposed the new rules here. Among the opposition are Pfizer, Amgen, Biogen, Wyeth, Novartis, Novo Nordisk, Neurocrine, Isis, Medarex, Genentech, Eli Lilly and of course PhRMA.

A good summary of the new ruling can be found here, on the Patent Docs blog.