On August 10, 2007 the United States Patent and Trademark Office ("USPTO") announced that it is proposing new rules for the examination of any claim using alternative language directed to more than one independent and distinct invention. The USPTO believes the new rules will improve an examiner’s ability to focus the examination process for these types of claims.

When alternative language is used a single claim can contain multiple species. For example, a claim that recites using methods A, B, or C to produce products D, E, or F uses alternative language and includes nine different possible species (AD, AE, AF, BD, BE, BF, CD, CE, and CF.)

The USPTO states that "[a]pplicants sometimes use Markush or other alternative formats to claim multiple inventions and/or to recite hundreds, if not thousands, of alternative embodiments of a single invention in a single claim." According to the Patent Office searching such claims consumes a disproportionate amount of Office resources as compared to other types of claims.

In order to lessen the strain on the USPTO's limited examining resources, the Patent Office is proposing several rules related to claims containing alternative language. Under the proposed rules each claim would be limited to a single invention. The proposed rules also define acceptable formats for claims that set forth alternatives. Additionally, applicants will be encouraged to explain why a claim that employs alternative language is directed to a single invention.

Under the proposed rules, if an applicant files an application claiming priority to an earlier-filed application, and the later-filed application discloses matter not disclosed in the earlier-filed application, the applicant must identify which claim or claims in the later-filed application were disclosed in the earlier-filed application.

The USPTO also proposes adopting language similar to PCT Guidelines, which require that the number and presentation of alternatives in a claim not make the claim difficult to construe. Additionally, the Guidelines also require that each alternative within a list of alternatives must be a substitute for any other alternative under the proposed rules. In other words, each of the alternatives should perform a similar function. The USPTO also proposes requiring that no alternative may itself be defined as a set of further alternatives.

Finally, the USPTO proposes requiring that the alternatives are mutually exclusive from each other unless there is no other practical way to define the invention. Accordingly, a single claim that contains alternatives that fully or partially overlap may be subject to an objection.

Comments on the proposed rules will be accepted until October 9, 2007.

USPTO Press Release: http://www.uspto.gov/main/homepagenews/bak2007aug10.htm

Federal Register Notice: http://www.uspto.gov/web/offices/com/sol/notices/72fr44992.pdf