PTO Publishes Impact Analysis on "Alternative Claim Language" Proposal

Examination of Patent Applications That Include Claims Containing Alternative Language (RIN 0651–AC00), March 10, 2007

In August 0f 2007, the PTO issued a notice stating that Markush-type claiming and other alternative claiming formats were being restricted for practice before the PTO:

The Office is proposing to revise the rules of practice pertaining to any claim using alternative language because patent applicants sometimes use Markush or other alternative format to claim two or more independent and distinct inventions and/or to recite hundreds, if not thousands, of alternative embodiments in one claim. Such claims are confusing, difficult to understand, and frequently border on being unmanageable. Proper search of such complex claims, particularly those using Markush language, often consume a disproportionate amount of Office resources as compared to other types of claims. The prosecution of these complex claims likewise often requires separate examination and patentability determinations for each of the alternatives within the claim . . . the variety and frequency of alternatives recited in claims filed in applications pending before the Office, driven in part by trends in
emerging technologies, have exacerbated problems with pendency.

In light of comments recently received by the PTO, a study was conducted to see how the proposed rule would impact small entities, which are also affected by the proposed rule change.

The PTO estimated that 21.9% of all applications from small entities contain alternative language in the claims. Broken down by technology, 43.4% of biotech and chemical small entities use alternative language, with electrical/mechanical coming in at 15.8%.

Since each claim under the proposed rules must be limited to a single invention, claims with alternatives will require a new format similar to the PCT Guideline, i.e., requiring that the number and presentation of alternatives in the claim not make the claim difficult to construe, and requiring that each alternative within a list of alternatives must be substitutable one for another.
After conducting its analysis "the Office believes that an applicant would need to file at most approximately seven divisional applications following an examiner’s restriction requirement, even if more were needed to seek patent protection for the full scope of the originally claimed inventions."

Comments on the proposed rule changes in the Alternative Claims Notice of Proposed Rule Making should be addressed to markush.comments@uspto.gov

Read the Notice, which contains additional statistical analysis here (link).