By Christopher P. Singer --
As we reported on Friday, the U.S. Patent and Trademark Office published a "Proposed Rules" Notice entitled "Examination of Patent Applications That Include Claims Containing Alternative Language," (Markush claims) in the March 10, 2008 Federal Register. The Notice did not enact any Final Rule change, but rather provided an analysis of the impact of the proposed change to Markush practice on certain applicants. In particular, the Notice detailed an initial regulatory flexibility analysis (IRFA), performed by the USPTO, regarding the impact of the proposed rule changes specifically on small entity concerns. According to the Patent Office, it "continues to believe that a regulatory flexibility analysis is not required for the Alternative Claims Notice of Proposed Rule Making . . . however, [it] has decided to subject the proposed rules to a regulatory flexibility analysis to provide a further opportunity for comment on the small business impact of the proposed rules."
The Patent Office reiterated that the rationale behind the proposed rule change is to enhance the ability to grant quality patents in a timely manner. The IRFA detailed in the Notice sampled applications from fiscal year 2005 and found that in 95,018 applications filed by small entity applicants, 20,824 applications contained common alternative claim language. As expected, the percentage of applications employing alternative claim language was skewed heavily to the biotechnology and chemical arts.
For purposes of cost analysis, the Office describes four categories of applications which could fall under the proposed new rule: (1) applications with acceptable alternative claim language (no costs); (2) applications with multiple inventions in a single claim (divisional application costs); (3) applications with improper claim format (amendment costs); and (4) applications with multiple inventions in a single claim and improper claim format (divisional and amendment costs). Not surprisingly, the Patent Office concludes from its estimates that 82 percent of small entity applications in the biotech and chemical arts and 98 percent of small entity applications in the electrical and mechanical arts would not incur any notable incremental costs associated with the rule change.
Written comments on the IRFA or Alternative Claims Notice of Proposed Rule Making must be received on or before April 9, 2008. Comments relating to the IRFA presented in the recent notice are preferably sent by e-mail to [email protected], and comments on the proposed rule changes in the Alternative Claims Notice of Proposed Rule Making should be addressed to [email protected]. Comments may also be submitted by mail to:
Mail Stop Comments--Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
As another alternative, comments will be accepted by facsimile: (571) 273-7754, to the attention of Kathleen Kahler Fonda, Legal Advisor, Office of Patent Legal Administration. Comments will be made available for public inspection, so information that commentors do not wish to be made public, such as personal information, should not be included in the comments.
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