Attention: Hiram H
Attention: Hiram H. Bernstein
Comments regarding the limit to 6 independent claims in an application:
I have reviewed the proposed changes to the regulations to limit the number of independent claims to 6 in any single application. This type of limit appears to make sense for independent claims that are presented for complete examination.
However, there are many situations where dependent claims are indicated as being objected-to (but otherwise allowable) in an Office Action or Final Office Action. In these instances, the independent claims are often amended to overcome the rejection and the dependent claims are rewritten into independent form using the un-amended independent claim to place the dependent claims in condition for allowance. Therefore, we would like to suggest a limit of 6 independent claims for claims that are being present for a first search and review. However, the applicant should be able to amend existing, objected-to dependent claims by rewriting them into independent form regardless of the number. This makes sense to expedite prosecution, since claims can be placed in condition for allowance at an early stage of prosecution. In addition, the applicant will not be forced to file continuation applications if objected-to claims result in more than 6 independent claims, and will reduce the likelihood that the applicant will fight for minor amendments to avoid the necessity of going over the 6 independent claims. This is not viewed as being unduly burdensome to the Patent Office, since the Patent Office has already indicated that these claims would be allowable and no new substantive issues will be raised by this amendment. This also would not be unduly burdensome on the public, since a review of the prosecution history will clearly show which claims were previously dependent and an analysis of these claims would be required (independent or dependent) in any case. Finally, the applicant would still continue to pay a fee for over 3 independent claims.
Paul H. Kovelman; Reg. No.: 35,228
Director of Intellectual Property & Patent Counsel MiniMed Inc.
12744 San Fernando Road
Sylmar, CA 91342
Tel: (818) 362-2358 ext. 3313
Fax: (818) 367-1460