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More new USPTO rules on the way, this time for information disclosure statements and Markush claims

August 10, 2007
Post by Blog Staff

The USPTO rulemaking machine just keeps chugging along. In today's Federal Register, there are new USPTO proposed rules regarding claims using "alternative language," such as Markush claims. Also, on July 27, the USPTO submitted new rules regarding information disclosure statements (IDSs) to the OMB for review. These rules look as though they adhere to the current USPTO theme: make applicants do more of the USPTO's work whenever possible.

The USPTO has already pursued rules regarding continuation applications and the number of claims, examination guidelines post-KSR, new rules for the BPAI, and even TTAB practice. There has been a flurry of rulemaking over the past several months at the USPTO.

All these new rules (other than the TTAB rules, of course) apparently stem from the USPTO's 2007-2012 strategic plan, where the USPTO stated that one of its goals was to "Explore examination reform through the rule making process to create better focused examination and enhance information exchange between applicant and examiner."

The USPTO has a press release on the rules here.

More detail about the most recent rules after the jump.

Alternative language claim rules

These proposed rules would impose several additional requirements on Markush and other "alternative language" claims. First, it would require such claims to be limited to a single invention. The applicable test for this comes from In re Harnisch. There, the CCPA held that the Markush group was proper because the elements in the group all shared a common characteristic: the presence of a coumarin group that made the compounds dyes. The USPTO will apply this test to determine whether a group is actually drawn to a single invention. Elements in a group that are prima facie obvious over each other may also be properly placed into a single Markush group, as it is improper to restrict claims that are obvious over one another in current practice.

Second, if there is no unity of invention based on the above test, examiners will be permitted to require intra-claim restriction. This would presumably require removal of the noncompliant items from the Markush group and resubmission of those in a new claim, likely in a separate application.

There are other technical requirements, such as requirements that each element of a Markush group be independent of each other, meaning that they do not overlap.

In addition, the proposed rules slips in an unrelated rule change to 37 C.F.R. § 1.75(d)(2), which would require, according to the notice (page 44997):

Paragraph (d)(2) is also proposed to be amended by adding the proviso that if an application seeks the benefit under title 35, United States Code, of a priorfiled application and discloses subject matter that was not disclosed in the prior-filed application, the applicant must identify which claim or claims in the application are disclosed in the manner provided by the first paragraph of 35 U.S.C. 112 in the prior-filed application.

Quite sneaky of the USPTO to try to slip this in among other, unrelated rules. Comments on these proposed rules must be received by the USPTO by October 9, 2007.

Information Disclosure Statements

The actual text of the revised IDS rules is not available online, but the abstract is available. Here it is, in its entirety:

The U.S. Patent and Trademark Office (Office) amends its regulations on information disclosure statement (IDS) requirements and other related matters to improve the quality and efficiency of the examination process. These changes would enable the examiner to focus in on the relevant portions of submitted prior art at the very beginning of the examination process, give higher quality first actions, and minimize wasted steps. This action would make the following changes relating to submissions of IDSs by applicants: Impose a requirement for the personal review of, and to provide information about, certain citations; eliminate the fees for, but permit only timely, IDS submissions; and only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted. The Office would also: permit third parties to submit prior art up until the mailing of a notice of allowance after application publication; no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE); permit, after payment of the issue fee, certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and revise the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties.

Looks like even if the Patent Reform Act of 2007 isn't passed which would increase the USPTO's rulemaking authority, the USPTO is going to try to require more and more disclosures like applicant quality submissions, but just add the requirements incrementally.

More on the new rules at the 271 blog and Patently-O.


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