Claim to Fame: Alternative Language Claims in Patents

Introduction

Patent documents, when submitted finally to various patent offices, often contain a claims section, which is effectively the heart of the document. The claims in a patent application are the protection sought by the applicant, by means of the patent application. Several styles of claim drafting have been explored and some of these styles are accepted as classic drafting styles, defining best practices in drafting claims. Examples of these styles include means plus function claims, for systemic patent applications, Swiss style claims, product-by-process claims and Markush claims for the life-sciences applications, In the case of patents relating to chemical structures, Markush claims are used frequently and are the focus of this article. We present our discussions, keeping in mind case-law from the United States, where a lot of precedents have been set, when prosecuting a variety of patents. We contend that this is important for Indian companies, filing abroad, simply because our own patent system is gaining critical mass when it comes to setting legal precedents, evidenced by the recent news with respect to Novartis, TVS, etc.

The USPTO has recently put forth an amendment in its treatment of claims, which utilize alternative language. The vast majority of such claims include the ones specified by the Markush drafting style, approved in 1925 [1]. Using Markush language, an applicant can specify a group of entities, which are incorporated in one single claim, using the phrase selected from the group consisting of, followed by the listing of specific group members. Such claims can be used to include a variety of chemical groups, biological species etc. The debate on increased pendency, caused by the use of Markush claims is an ongoing one, worldwide. Alternative language claims are a superset of Markush claims however, and are used in a variety of inventions, for example, with the use of means-plus-function formats, where the scope of the claim is broadened implicitly [2]. In its most recent communication, the USPTO has proposed a set of rules for the general class of alternative language claims, which can be summarized as follows:

Unless the unity of invention can be established, claims cannot refer to one another.

  • All alternatives specified in the claims must be substitutable.
  • The alternatives thus specified may not allude to other alternatives or be a set of other alternatives.
  • The USPTO also put forth recently a rule for Claims and Continuations wherein rule changes were proposed to restrict the number of continuations and independent claims allowed, per patent application.

    This article seeks to deconstruct the merits of the restrictions posed by the USPTO on the general class of alternative language claims and the specific class of Markush claims. We argue that the Claims and Continuations amendment (which faced severe objection and subsequent opposition stalling its taking effect), combined with the proposed restrictions on alternative language claims, will: (a) prove to be an expensive proposition for the applicants, (b) shift a large burden of search and establishing all alternatives surrounding a single inventive concept, onto the applicants and (c) create unnecessary overheads in areas of technology, utilizing alternative language claims, without the breadth or complexity of Markush language. The time taken to file patent applications will also be put on hold, for a lot longer, proving to be counter-productive for both the public and the applicants.

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