By Donald Zuhn --
On Friday, the U.S Patent and Trademark Office (USPTO) announced that it was proposing new rules that "will improve an examiner's ability to focus the examination process for claims that contain more than one independent and distinct invention." According to the USPTO announcement, the proposed rules, which were published in the Federal Register, "would require applicants to identify, with more specificity, the claimed invention to be examined, thus promoting examination quality." The USPTO characterized the new rules as part of the Patent Office's "ongoing effort to ensure patent quality, foster the examination process, and reduce pendency."
According to the USPTO's notice in the Federal Register, the Patent Office is seeking to:
revise the rules of practice pertaining to any claim using alternative language to claim one or more species. The search and examination of such claims often consume a disproportionate amount of Office resources as compared to other types of claims, because determining the patentability of these claims often requires a separate examination of each of the alternatives within the claims. The Office expects that requiring applicants who choose to draft claims that read on multiple species using alternative language to maintain a certain degree of relatedness among the alternatives will enable the Office to do a more thorough and more reliable examination of such claims.
The proposed changes for the examination of "multi-invention alternative" claims appear to have been prompted by rules changes proposed by the USPTO earlier this year which would limit the number of claims the Patent Office will examine. In particular, the Patent Office notice states that "Applicants should not be permitted to circumvent the proposed claims rules by presenting a single claim that sets forth multiple independent and distinct inventions in the alternative."
The proposed rules would require that each claim be limited to a single invention. The USPTO notice indicates that when alternative language is used to define multiple species in a single claim, such claims will be considered to be limited to a single invention when at least one of two conditions is met:
1. "All of the species encompassed by the claim share a substantial feature essential for a common utility."
2. "[A]ll of the species are prima facie obvious over each other."
The notice describes a substantial feature essential for common utility as being "a common structure, material, or act necessary for at least one shared specific, substantial, and credible utility." The new rules would also require that "the number and presentation of alternatives in [a] claim not make the claim difficult to construe, and requiring that each alternative within a list of alternatives must be substitutable one for another." In addition, the proposed rules would also prohibit claims from reciting an alternative that would itself be defined as a set of further alternatives.
Those wishing to comment on the proposed rules or make suggestions for improving the examination of "multi-invention alternative" claims can do so by sending comments or suggestions by e-mail to [email protected], by facsimile to 571-273-7754, by regular mail to Mail Stop Comments - Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, or by using the Federal eRulemaking Portal (http:// www.regulations.gov). Comments or suggestions sent by facsimile or regular mail should be marked to the attention of Kathleen Kahler Fonda, Legal Advisor, Office of the Deputy Commissioner for Patent Examination Policy. Comments or suggestions must be received by the USPTO on or before October 9, 2007. The USPTO also indicated that no public hearing on the rules changes would be held.
The USPTO announcement also noted that the final rules pertaining to claims and continuations would be published in the Federal Register by the end of August.
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