About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Court Report | Main | USPTO News: USPTO e-Commerce Update »

March 03, 2008


Thanks for all the great posts. However, my browser is not showing the contents of this article for some reason.


The post should be displayed now.


On the alternative claiming rules, it's easy to see why people have been distracted. But let's face it - how necessary are they? If a claim covers 10(14) compounds, that (a) makes it really easy for an examiner to find a 102 reference, and (b) ought to make the claim a prime candidate for a 112 enablement over the scope of the claim rejection. And if neither of these is feasible, maybe the claim is good and should be allowed.

Did anyone think to ask Mr. Kisliuk why this "problem" suddenly exists? For decades, applicants have been able to claim generic chemical compounds that encompassed hundreds of millions of possible species, and the patent office was able to deal with them. Isn't this just another manifestation of the office deciding "there are too many patents" or that "patents are too easy to obtain" in the face of political pressure, and looking for ways to dramatize the problem?

It seems to be simple: either the claims are not patentable due to prior art or 112 issues, as in Derek's comment, or they are patentable given the best information available at the time they are examined. The office will never be able to grant a perfect patent that can never be challenged, and that shouldn't be the standard. Applicants and the office want the most "bullet-proof" patents (each for their own reasons), expecially in the biotech area where a patent may be the only asset a company has. All the rest of this is political philosophy masquerading as policy, and bad policy at that.

The comments to this entry are closed.

June 2024

Sun Mon Tue Wed Thu Fri Sat
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29