Skip over navigation

By e-mail to: regreform@uspto

Assistant Commissioner for Patents

Washington, D.C. 20231

Re: Changes to Implement the Patent Business Goals

Comments on Proposed Changes


I respectfully submit the following comments on "4. Limiting the number of claims in an application (37 CFR 1.75)."

It is evident from reviewing your statistics that some are filing patent applications with an excessive number of claims. And it is my experience that it would be easy to draft an excessive number of claims on any complex and significant invention.

However, it may be that your statistics on the number of claims filed in all patent applications tend to lead to erroneous conclusions. That is, by including patent applications on inventions that are marginally patentable, and that most likely will not benefit the inventor more than a bronze placque on a walnut board, it makes the inclusion of a reasonable number of claims, on complex and significant inventions, appear to be rare and extreme.

It seems to me that the purpose of the United States Patent Office is not the granting of as many patents on marginal inventions as can be granted in a period of time, but of encouraging creativity, and of assisting inventors and companies in procuring patents that will reward both creativity and investment.

Since I file and prosecute inventions almost exclusively for corporate clients that have technically complex and marketably significant inventions, some of which are on the cutting edge of technology, not infrequently, I find that it is difficult to restrict the total number of claims below sixty or sixty-five, and on one that I am presently preparing, I have labored to limit it to seventy-nine claims. Therefore, as I see it, an absolute limit of forty claims would handicap my efforts to protect my clients.

If the USPTO were to consider, as far as "a total number for filing," a multiple-dependency claim to be "a single claim," then a total of forty claims might be reasonable.

In writing multiple dependency claims, it is easy to see that they are truly dependent on their respective parent claims and their patentability. Therefore it seems to me that the examiners would rather examine, and could more quickly examine, forty multiple-dependent claims than they could examine eighty single-dependency claims.

Reverting back to my discussion of the total number of claims, if the total number of claims were limited, and this number were to be sharply reduced by a requirement for election, the number remaining in prosecution could be woefully inadequate.

Therefore, if a decision is made to limit the total number of claims and a requirement were made for restriction, it would be extremely helpful if applicants were given three months to amend their claims, adding additional claims up to the total originally filed, thereby having an opportunity to provide strength that was denied by limiting the total number of claims, as originally filed.

I would not see it unreasonable if an extra fee were charged for this amendment. However, to be left with an inadequate number of claims, and without an opportunity to strengthen the case, seems to me to be counterproductive to the main purpose of the USPTO.

Comments on "14. Providing for presumptive elections (37 CFR 1.141)":

In view of the above discussion, I also oppose the proposal "Providing for presumptive elections (37 CFR 1.141)." If the main purpose and goal of the USPTO were the number of patents issued, and the speed of issue, then this proposal would be a good one. But since the purpose of the USPTO is to provide an opportunity for inventors to adequately protect their inventions, this proposal seems to be counterproductive to anything except speed.

In summary:

I would consider a limit of eight or ten independent claims and eighty or one-hundred total claims to be reasonable. Or half that many total claims if multiple dependent claims were counted as single claims for purposes of meeting the maximum number of claims. However, reducing the total number of independent claims below eight would be a troublesome restriction for patent practitioners who file and prosecute important patent cases.

Finally, the USPTO could encourage multiple dependent claims by removing the surcharge for multiple dependent claims.

Respectively submitted

Wendell E. Miller

Registration No. 26,572

November 20, 1998

1506 Tippecanoe Drive, D-1

Warsaw, Indiana 46580

Tel. (219) 267-2729

FAX (219) 268-2729

e-mail wmiller@kconline.com_

United States Patent and Trademark Office
This page is owned by Office of Patent Legal Administration.
Last Modified: 7/4/2009 4:55:11 PM