"Alternative History: PTO Attempts to Limit Use of Alternative Claim Language"

Under the guise of reducing its workload, on August 10, 2007 the United States Patent and Trademark Office (“PTO”) proposed to change its patent rules by limiting an applicant’s ability to include alternative language in patent claims.  When coupled with the new rules limiting the total number of claims in an application, this rule could severely restrict the way applicants describe the detailed subject matter of their inventions.

Traditionally, alternative claims have been used most frequently in claiming chemical compositions in which the alternatives might comprise dozens of alcohols or potentially hundreds of organic compounds.  For example, a magnet made from iron, lead, and fluorine, chlorine or iodine traditionally would have been claimed as follows: a magnet comprising iron, lead, and a halogen selected from the group consisting of fluorine, chlorine and iodine.  Thus, in order to anticipate or infringe such a claim, the infringing magnet would need to comprise a magnet, which had (1) iron; (2) lead; and (3) fluorine, chlorine, or iodine.  A magnet with iron, lead and a different halogen such as bromine or astatine would not be covered.

Alternative claiming also can occur in other fields, such as a computer system involving a communication component selected from the group consisting of ethernet switches, firewalls, channel switches, broadband switches and routers.

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