Ron Reardon

Rule changes that impact patent practice are in the same category as “death & taxes” – an absolute certainty! 

At the March 2007 Biotechnology and Chemical Pharmaceutical Customer Partnership Meeting, representatives from TC 1600 of the USPTO gave a “heads up” on proposed rule changes affecting “claims that recite alternatives.”  These proposed rule changes would apply to all alternative-type claims. 

Alternatives are commonly listed as:

·          “… elected from the group consisting of A, B and C.”

·          “… wherein the fastener is a nail, a screw or an adhesive.”

The motivation behind these proposed rule changes is that Markush claims are routinely filed encompassing:

·          Up to billions of species;

·          Species with multiple core structures;

·          Species with known, unknown, related and/or unrelated utilities;

·          Species that cannot be made or are non-functional;

·          Species so diverse that class/subclass lines are crossed, thereby stretching or exceeding the search and examination capabilities of the USPTO.

There is concern within the USPTO that the filing of burdensome alternative-type claim formats is increasing.

While the details of the proposed rule changes are not scheduled to be released until later this month, we were verbally given the highlights.  The practitioners in the audience, while understanding the Office’s position, gave very candid feedback as to the potential impact that some of the proposed rules could have.  These comments were taken under advisement.

Rest assured that NAPP’s Government Affairs Committee, led by Louis Hoffman, will review these proposed rule changes when they are released and craft a well-reasoned and balanced response.  If you want to help with this effort, contact me at napp@napp.org.

Rule Changes Related to PCT Practice

The USPTO is proposing to amend 37 CFR (including sections 1.17(t), 1.57(a)(2), 1.452(a), and 1.445(a)) to conform them to amendments to PCT Regulations (the latter effective April 1, 2007).  The USPTO’s proposed amendments relate to: requests by applicants for the restoration of a right to claim priority in certain applications; insertion by applicants of a missing portion of an international application, without losing the international filing date; and circumstances and procedures for the correction of an obvious mistake in an international application.  Also, the USPTO is proposing a revised search fee for international applications.  Further details are available at: www.uspto.gov/web/offices/com/sol/notices/72fr7583.pdf (Federal Register Notice (72 FR 7583), February 16, 2007).  The deadline for the submission of written comments (e-mail: AC9.comments@uspto.gov) is March 19, 2007. 

On February 6, 2007 Stan Antolin presented a NAPP® Teleconference on how to respond to USPTO correspondence.  The next NAPP® Teleconference will be announced in due course.

There are no member articles for this issue.

The Disclosure® welcomes the submission of articles on topics related to US and foreign patent practice.  To submit  an article to The Disclosure®, please contact the staff.
 

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The Disclosure® is published monthly and is made available to NAPP members and the general public.

Editor:  David Robeson

©2007 National Association of Patent Practitioners.  All rights reserved.

NAPP Officers:

President - G. Ron Reardon

Vice President - Sean Brennan

Treasurer - Jerry Miller

Secretary - Michelle Stempien

NAPP Directors:

Sharon Adams

Kevin Grierson

David Grossman

Tom Hamill

Louis Hoffman

The 2007 NAPP® Annual Meeting will be held in Las Vegas, NV, July 14-17, 2007.  Further details and registration information will be provided here.

 The next meeting of the Georgia chapter will be announced in due course.

The New Jersey Regional Chapter needs volunteers to help organize NAPP regional meetings in the New Jersey area.  If you are interested in volunteering, please contact us.