Skip over navigation

Topic 4

Topic 4. Limiting the number of claims in an application (37 CFR 1.75)

The ANPR states that "While the applications that contain an excessive number of claims are relatively few in percentage (less than 5%), these applications impose a severe burden on PTO clerical and examining resources, as they are extremely difficult to properly process and examine."

I must question the "severity" of the burden imposed by this

relatively small percentage of applications. Given that some

inventions may have many patentable features which may be obvious

in light of the application disclosure, this requirement will virtually

require that multiple applications be filed and consequent

double-patenting rejections be overcome to fully cover the

invention's novelty. This does not reduce the burden on the PTO,

but rather increases it! By having all the claims in a single


a single examiner is allowed to become acquainted with the

application and perform all the searching. Dividing the application will

result in excessive duplication of effort. The "average pendecy per application" may be reduced, but the actual effect is an increased examination time per invention.

So in reply to the assertion that "the rule change under

consideration will benefit the overwhelming majority of applicants,

since it will stop a relatively small number of applicants from


an inordinate amount of PTO resources" - I disagree! The relatively

small number of applicants will file an increased number of applications

to more than offset any efficiency gain realized by this change, and the

majority of applicants will suffer longer delays. (In other words, the mean time may decrease, but the mode will increase).

Perhaps the applications could be subdivided, i.e. multiple sets of claims submitted in association with a single disclosure. Each set of claims could be treated as an individual application by the examiner, but the collective group would be administratively treated as a single application, e.g. be assigned to a single examiner. The examiners could then be awarded their "credits" in a manner more directly related to their workload.

The PTO's concern about the burden due to excessive claims is not necessarily misplaced, but limiting to an absolute number does not seem to be the way to go. After all, "6/40 for all applications" is arbitrary, and what is reasonable surely depends on the invention. Perhaps an additional per-claim monetary charge that increases in stair-step fashion for claims above a set number would provide the necessary disincentive to excessive multiplication of the claims?

The proposal of the use of a 1.183 petition has the fault that the petition process would lengthen the prosecution of many applications, and most inventors would presumably pursue the filing of separate applications.

Topic 8. Permitting electronic submission of voluminous material (37 CFR1.96, 1.821)

I strongly support this change. I think that this also could be an ideal way to submit IDS material e.g. in a searchable electronic format. CD-ROMs should probably be mentioned as the archival storage medium of choice.

Topic 9. Imposing limits/requirements on information disclosure statement submissions (37 CFR 1.98)

I have no objection to the first requirement.

With regard to the second requirement, there are circumstances in which a practitioner may suspect that a pending application is relevant and may not have access to that pending application. As one example, an issued patent refers to an abandoned application in such a way as to suggest relevance. However, the abandoned application is part of a file wrapper continuation (or CPA), and is not available to the public. In this circumstance, the practitioner would be unable to comply with this requirement.

With regard to the third requirement, requiring that the practitioner characterize the references when the practitioner may not be an expert in the area (and may consequently be prone to mis-characterization and be more vulnerable to malpractice accusations) is unfair. The unique description requirement calls for the practitioner to identify differences between references to avoid submitting duplicative material. In essence, the practitioner has to perform a novelty examination of the references in light of each other! Not only is this unduly burdensome, the practitioner has been educated by the inventor only to the extent that the practitioner is aware of differences between the invention and the references. It is the Examiner who is expected to be competent to examine the applications in relation to the prior art, whereas the practitioner is merely expected to competently present the invention for examination.

In attempting to reduce the burden on the PTO, an excessively magnified burden is imposed on the Applicants. This will result in a substantial increase in the average cost of pursuing an application, and thereby provide a dis-incentive to the public for using the patent system.

The Examiner is charged with the responsibility of determining the novelty of the invention in light of the prior art. It is ironic to say that when examples of prior art are provided, the difficulty of the Examiner's job is increased! The reverse should be true. At the heart of the matter is the fact that the Examiners rely on searching systems of limited scope to determine the relevance of prior art. If the prior art examples are in that system then (in theory) nothing is gained or lost by separate submission. The documents which are submitted, therefore, need to be made part of a searching system available to the Examiners.

Several methods of doing this suggest themselves. One exemplary method is to require electronic submission of the IDS material in searchable form. Another is to cite the documents as being part of a given searching system (e.g. document XX, available on Lexis-Nexus). Documents which aren't part of any searching system can then be submitted as special cases, and if necessary, the description of why the practitioner believes the document may be relevant could then be required.

If indeed it is perceived as necessary to describe the references, the impact on patent practice could be minimized by increasing the maximum number of references submitted without description to at least 20, rather than 10.

10. Refusing information disclosure statement consideration under certain circumstances (37 CFR 1.98)

I support this change, although the scope seems rather arbitrary. Perhaps some specification could be made in the rule of what constitutes a "burdensome" IDS?



Dan Krueger, Ph.D. Conley, Rose & Tayon, P.C.

Direct Line:(713)238-8055 600 Travis, Suite 1800

Facsimile: (713)238-8008 Houston, TX 77002-2912

United States Patent and Trademark Office
This page is owned by Office of Patent Legal Administration.
Last Modified: 7/4/2009 4:48:43 PM