News

End in sight for claiming alternatives in the US

28 March 2008

There was much excitement in the second half of 2007 over the proposed US law changes relating to limiting the number of continuation applications and requests for continued examinations. Such rule changes would make it harder and more expensive to obtain broad protection for inventions in the US. An injunction was obtained by GSK at the 11th hour (see http://www.marks-clerk.com/attorneys/news_one.aspx?newsid=148). We expect to receive confirmation as to whether or not these rule changes will go ahead later this year.

However, further changes have been proposed by the USPTO concerning the use of claims containing alternative language. These changes could have the same financial impact for applicants as the changes to continuations. An example of claims with alternative language are so-called Markush type claims which contain the phrase "... selected from the group consisting of a, b and c" or something similar. In this type of claim, a, b and c will be functionally equivalent entities. Such claims are well used in the chemical field where often they may contain hundreds if not thousands of alternatives.

A recent notice from the USPTO concerning claims which contain alternatives arising from applicants who are small entities (universities, single inventors and small companies) suggests that although over 40% of biotechnological and chemical patent applications contain such claims, 16% of electrical and mechanical applications also contain this type of claim. Therefore, these changes to the US rules are relevant to virtually all technical sectors.

The proposed changes to the rules are long and complex. However, if implemented, US Examiners will have more grounds upon which to force applicants to limit claims and file divisional applications. This will obviously involve increased costs for obtaining broad protection in the US.

When this notice was first published in August 2007, a deadline of 9 October 2007 was set for filing comments. There was a backlash from small entities which necessitated a second notice published on 10 March 2008 containing an in-depth analysis of the potential financial impact of these changes on small entities. However, it is important to note that these rules will apply to all applicants.

A deadline of 9 April 2008 has been set for receiving further comments on the proposed changes.

We will keep you informed of further developments as and when they arise. If you require any further information or are interested in making your submissions to the USPTO, please contact your usual Marks & Clerk attorney.

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