Skip over navigation

I would like to offer comments in response to the notice of proposed rule making:

I would like to offer comments in response to the notice of proposed rule making:

[Federal Register: October 5, 1998 (Volume 63, Number 192)]

[Proposed Rules]

[Page 53497-53530]

From the Federal Register Online via GPO Access []


[[Page 53497]]

In general, it appears that many of the proposed rules are intended to reduce cycle time within the PTO. While this is a desirable goal, cycle time should not be reduced at the expense of significantly added cost to the applicant either in prosecution or in use of the patent rights after grant. In some areas, the proposed rules do not strike the proper balance.


These limitations are not required. There is already a fee for filing excess claims, which should deter undue multiplicity and provide PTO revenue to ensure adequate staffing to timely review the application. Further, as a practical matter, cases filed with large numbers of claims often result in restriction requirements such that all of the claims are rarely examined in the initial application.

These limitations also unreasonably increase the cost of getting the full patent protection to which an applicant is entitled. It is important that applicants be allowed to write claims to as many inventive concepts as they feel are described in a specification. Cases such as Gentry Gallery v. Berkline Corp., 134 F.3d 1473 (CA FC, 1998) suggest that a prudent patent practitioner should strive to include in the first filed application any claim which the applicant might later want to present. The risk of later presenting a claim that was not originally presented is that the claim will be declared invalid because it failed to include "essential elements of the invention".

Thus, if the number of claims is limited, it will force applicants to file multiple applications initially to ensure all of the inventive concepts are included in the claims of at least one application. Thus, the applicant will be forced to bear the costs of added initial filings. In the long run, this will be more costly than initially paying the excess claims fee and later filing divisional applications. The interchange between the PTO and the applicant in the initial application provides important insight and guidance to the applicant in determining which claims to file in a later divisional application. As a result, in practice, only some of the claims subject to restriction from an initial application are later filed in divisional applications. Thus, fewer applications are filed later.


Any requirement that would significantly reduce the ability to present prior art for the PTO to consider should be avoided. If the PTO has not considered some pieces of prior art, the value of the patent is significantly decreased. It raises questions about the validity of the claims over the prior art or the enforceability of the patent because of possible inequitable conduct. Applicants will be forced to accept the reduced value of their patents in licensing discussions or bear the added costs of enforcing their patents in litigation. Alternatively, the changes will force applicants to file more continuing applications for the purpose of allowing the PTO to consider prior art. Forcing applicants to file more continuing applications might significantly reduce the PTO cycle time PER APPLICATION, but this would be a false saving because the cost and time for obtaining a patent would be increased.

Some aspects of the proposal require applicants to be selective about the information disclosed or to summarize the significant features. While it would be desirable to find ways to focus patent prosecution on only the relevant issues, it will be impossible in practice. Reasonable minds will differ on which portions of a reference are significant, which references are cumulative and the relevant teachings of any particular reference. These differences of opinion will simply spill over into litigation, reducing the value of patents and the costs of enforcing them.


One month to file formal drawings is unreasonably short. Many draftsmen require 4 to 6 weeks to prepare drawings. If the time for mailing and processing is considered, a one month time for response would either require the payment of late fees or payment for formal drawings before it is known whether a patent will be granted.

Starting the time period to supply drawings when the notice of allowability is mailed would be a reasonable compromise. However, the full 3 months should be allowed.


The idea of a presumptive election should not be included in the rules. It places an undue burden on the patent practitioner to anticipate the restriction requirement.

Presumptive election deprives the applicant of the opportunity to amend the claims in response to a restriction requirement. In some instances, restriction requirements are based on semantic differences in the claims, rather than differences in substance. A restriction requirement might be avoided by reconfiguring the claims so that there is clearly a linking or generic claim.

Alternatively, Applicants will sometimes know that the can not afford to file a divisional application to include the claims that have been restricted out and a response to the restriction requirement, which might change the claim strategy.

It is more cost effective for the applicant to allow these claim changes at the time of responding to the restriction rather than after prosecution on the merits has begun.

  • Respectfully Submitted,
    Edmund J. Walsh
  • United States Patent and Trademark Office
    This page is owned by Office of Patent Legal Administration.
    Last Modified: 7/4/2009 4:57:35 PM