Patent Baristas

The United States Patent and Trademark Office is moving ever onward with its proposed revision to the rules of practice pertaining to any claim using alternative language to claim one or more species. That is, if the claims use Markush or other forms of alternative language.

Markush claims, officially sanctioned since 1924, is a claim drafting technique using the phrase ‘‘selected from the group consisting of’’ followed by a closed listing of specific members of the group.  These types of claims allow an applicant to describe an invention where there is no available wording for the group. 

According to the USPTO, the search and examination of such claims consume a disproportionate amount of Office resources as compared to other types of claims.  I guess as opposed to claims that don’t use big words.

Specifically, the USPTO is complaining about applications claiming compounds by their chemical structure (read: they’re gunning for the Chemical and biotech arts).  The proposed rules would allow the Office to require new application for each listed item.

After publishing a notice proposing to revise the rules (Alternative Claims Notice of Proposed Rule Making), the Office received several comments/complaints concerning the impact of the proposed rules on small businesses and independent inventors.  So, the Office prepared an analysis on this proposed change to the rules of practice.

Description and estimate of the number of affected small entities:

Using the preceding definition of small entity, the Office screened these published applications for commonly used alternative language (e.g., ‘‘contains one selected from the group consisting of’’) and identified 20,824 small entity applications as containing alternative language and, therefore, as potentially affected by the proposed rule. The Office estimates that this represents approximately 31% of total applications containing alternative language.

As you could guess, a larger proportion of applications containing alternative language is concentrated in the biotechnology/chemical arts since those are the arts where there isn’t a good word to describe a group of related elements(43.4% small entity applications in the biotechnology/chemical arts and 15.8% electrical and mechanical arts).

Description of the projected reporting, recordkeeping and other compliance requirements of the proposed rules:

The proposed rule could potentially impact applicants in two ways:

First, it would require that a claim must be limited to a single invention. Consequently, if a submitted application contains a single claim that defines multiple independent and distinct inventions, then the examiner may apply an intra-claim restriction — applicants who want patent protection for the full scope of the initial application would have to file a divisional application for each additional invention defined in that original claim.

Second, the proposed rule allows examiners to require applicants to make amendments to simplify the presentation of claims.

The Office thinks that an applicant would need to file at most seven divisional applications following an examiner’s restriction requirement, “even if more were needed to seek patent protection for the full scope of the originally claimed inventions.” Basically, they decided on seven because stating the real cost would just sound bad and have decided that applicants don’t really need to pursue protection on “the full scope” of inventions.

Using this arbitrary point, the Office states that the cost of seven divisional applications would have present value of approximately $42,000. However, the Office’s analysis showed some applications would have required more than 100 divisional applications to maintain scope.

That is, their own estimates show it could cost $600,000 and that is an unrealistically low estimate for the costs. The Office’s own analysis states that the estimated cost for applications needing one divisional application and one amendment to correct the format of the claim(s) would run $14,287. Even for the seven divisional median they are touting, this puts the increased cost at over $100,000 per application. with very complex applications topping $1.4 million.

Oh, and if your considered a large entity, the Office has apparently decided that you can afford to fork over all the extra money so it really isn’t interested in hearing your whining.

To be fair, the Office did say it looked at alternatives but said that “none of these alternatives would accomplish the stated objectives of applicable statutes with a lesser economic impact on small entities,” e.g.,

1. Hiring more examiners: No can do.
2. Charging additional fees for applications containing claims using alternative language: Fun but no.
3. Limiting the number of species that may be presented in an application: You would just have to file all your applications sooner.
4. Exempting small entities (or take no action): No way.

If you want to (try to) make your voice heard, written comments must be received on or before April 9, 2008. No public hearing will be held.

• Comments on the analysis should be addressed to markush-irfa.comments@uspto.gov
• Comments on the proposed rules should be sent to markush.comments@uspto.gov.

Proposed rule, request for comment on initial regulatory flexibility analysis

See also:  USPTO to Limit Markush (Alternative) Claims: Serious Cost Increase in the Forecast