View Rule

View EO 12866 Meetings

Printer-Friendly Version Download RIN Data in XML

DOC/PTO

RIN: 0651-AB94

Publication ID: Fall 2007

Title: Changes to Practice for the Examination of Claims in Patent Applications
Abstract: A small but significant minority of applications contain an excessive number of claims, which makes effective examination of such applications problematic. The U.S. Patent and Trademark Office (Office) revises the rules of practice to share the burden of examining applications containing an excessive number of claims. Specifically, the Office amends the rules to provide that if an application contains more than ten independent claims, the applicant must provide a patentability report that covers all of the independent claims in the application. In addition, the Office amends the rules to provide that the Office will give a separate examination only to those dependent claims expressly elected for separate examination, and that the applicant must provide a patentability report that covers all of the independent claims and elected dependent claims in the application if the number of independent claims plus the number of dependent claims elected for examination is greater than ten. The changes would allow the Office to apply the patent examining resources currently absorbed by applications that contain an excessive number of claims to the examination of new applications, and thus allow the Office to reduce the backlog of unexamined applications. This would mean faster more effective examination for the typical applicant without any additional work on the applicant's part, but a small minority of applicants who consume a disproportionate share of agency resources will be required to share the burden they place on the Agency.
Agency: Department of Commerce(DOC)	Priority: Other Significant
RIN Status: Previously published in the Unified Agenda	Agenda Stage of Rulemaking: Long-Term Actions
Major: No	Unfunded Mandates: No
CFR Citation: 37 CFR 1
Legal Authority: 35 USC 2(b)(2)

Legal Deadline: None

Timetable:

Action	Date	FR Cite
NPRM	01/03/2006	71 FR 61
NPRM Comment Period End	05/03/2006
Final Action	08/21/2007	72 FR 46716
Next Action Undetermined	To Be Determined

Regulatory Flexibility Analysis Required: No	Government Levels Affected: None
Small Entities Affected: No	Federalism: No
Included in the Regulatory Plan: No
RIN Data Printed in the FR: No
Related RINs: Merged with 0651-AB93
Agency Contact: Robert W. Bahr Senior Patent Attorney Department of Commerce Patent and Trademark Office Mail Stop Comments-Patents, Commissioner for Patents, P. O. Box 1450, Alexandria, VA 22313 Phone:571 272-8800 Email: robert.bahr@uspto.gov