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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
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