USPTO Proposes New Measure to Improve Patent Quality and Reduce Pendency
Require applicants to identify, with more specificity, the claimed invention to be examined

The Department of Commerce’s United States Patent and Trademark Office (USPTO) is proposing new rules in the Federal Register that will improve an examiner’s ability to focus the examination process for claims that contain more than one independent and distinct invention. 

“We believe such a rule change will lead to a more focused examination process that will effectively promote innovation,” noted Commissioner for Patents John Doll. 

The proposed rules focus on the current practice of listing multiple inventions in the alternative in a single claim.  Such “multi-invention alternative” claims are especially prevalent in the pharmaceutical, chemical, and biotechnology fields.  The USPTO is proposing rules that would require applicants to identify, with more specificity, the claimed invention to be examined, thus promoting examination quality. 

These proposed rules are in addition to the final rules pertaining to claims and continuations, which are expected to be published in the Federal Register later this month and are part of the USPTO’s ongoing effort to ensure patent quality, foster the examination process, and reduce pendency.   

The USPTO welcomes comments on the proposed rules, as well as further suggestions for changes that would improve the examination of such claims.  To be considered, written comments must be received on or before October 9, 2007.  No public hearing will be held.

The proposed rules are available in the Federal Register today.

>> View Federal Register notice [PDF]

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