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Proposed Rules Regarding Claims Containing Alternative Language.

Posted in Practice Commentary by Jake Ward on August 10, 2007

In today’s patent news, the USPTO is proposing new rules to “improve an examiner’s ability to focus the examination process for claims that contain more than one independent and distinct invention.”

Specifically, the proposed rules would limit “the practice of listing multiple inventions in the alternative in a single claim.”  These “multi-invention alternative” claims are know as Markush claims in the patent practice.  A Markush claim recites alternatives in a format such as “selected from the group consisting of A, B and C,” and is currently an acceptable form of alternative expression at the Patent Office.  See also the previous AT! post, titled Alternative Expressions in Claims.

In general, the proposed rules would limit each claim to a single invention and define” acceptable” formats for claims that set forth alternatives. 

The proposal of limiting each claim to a single invention includes the following language: 

[W]hen subject matter that reads on multiple species is defined in a single claim using alternative language, the claim is limited to a single invention when at least one of the following two conditions is met: (1) All of the species encompassed by the claim share a substantial feature essential for a common utility, or (2) all of the species are prima facie obvious over each other.

Among the proposed acceptable formats are the following:

1)  The number and presentation of alternatives in the claim should not make the claim difficult to construe;
2)  Each alternative within a list of alternatives must be substitutable one for another;
3)  No alternative may itself be defined as a set of further alternatives; and
4)  No alternative may be encompassed by any other alternative within a list of alternatives, unless there is no other practical way to define the invention.

These proposed rules appear to be designed to both facilitate examination AND shut down a potential loophole in the proposed rules that would restrict initial examination to a limited number of claims.  As the proposal states:

The search and examination of such claims often consume a disproportionate amount of Office resources as compared to other types of claims, because determining the patentability of these claims often requires a separate examination of each of the alternatives within the claims. . . .  Applicants should [also] not be permitted to circumvent the proposed claims rules by presenting a single claim that sets forth multiple independent and distinct inventions in the alternative.

The proposed rules are published in the Federal Register, found here.  Written comments and suggestions must be received on or before October 9, 2007, and may be sent to markush.comments@uspto.gov.  No public hearing will be held.