USPTO/PCT/EPO In the October 18 Official Gazette, the PTO announced that it was sending some of its work to the EPO: In an experiment to permit the PTO to more effectively address the growing workload of international searches in international applications filed under the Patent Cooperation Treaty, and to take advantage of the current workload shortage at the European Patent Office, searches in selected international applications will be conducted by EPO examiners in the Hague. Applications will be selected from among those applications that do not claim priority of an earlier application, that do not select the EPO as the International Searching Authority, and contain a designation for a European Patent. The Search Report in these selected applications will be signed by the examiner in the PTO, and mailed from the PTO. Although the international search fee charged by the EPO is higher than that charged by the PTO, applicants will continue to pay the international search fee charged by the PTO in these selected applications. Accordingly, fees paid to the PTO will not be affected during this experiment. You know, it is bad enough that US corporations are shipping jobs overseas, but does the US government have to engage in the same practices? I am kind of surprised if the PTO employee union (if there is one) did't complain :-) Admittedly, Congress keeps on stealing money from the PTO budgets, causing the PTO to consider using the EPO's surplus staff. But I would rather see the PTO and inventing community in the US lobby Congress to let the PTO retain all of the income it gets from our fees, and at the same time let the Europeans worry about the management and staffing problems at EPO. If it is not obvious, I am not exactly enamoured about the way governments around the world treat both their Patenting Offices and their inventors. >From the results of PCT searches that I have seen, that EPO examiners conduct prior patent searches as well as US examiners, and conduct prior non-patent searches as not-so-well as US examiners, so quality wise there is little to be worried about. GROUP 1200 (some more comments from Director Terapane from the BPLA talk) Restriction Practice An indentifiable feature in many patent applications assigned to Group 1200 is he presence of Markush groups in the claims. Approximately 50% of all applications have at least one claim containing a Markush group, many of which are broad in scope and complex. This frequently leads to an election/restriction requirement. Applications that have Markush groups in claim one cause processing problems, since in theory the examiner is supposed to consider all embodiments, which for some Markush groups can end up being millions of combinations (for example 6 functional organic group sites where anyone of ten molecules can be attached). Obviousness and Broad Disclosures The recent decision "In re Baird", 29 USPQ2d 1550, raised the issued as to when a broad disclosure is sufficient to establish obviousness. The Court concluded that the disclosure of the reference used to reject claims did not teach or fairly suggest the claimed compounds in reversing the Board of Patent Appeals and Interferences. The Federal Circuit cited "In re Jones", 21 USPQ2d 1941, as support for rejecting the argument that any species falling within a broad genus is obvious. "In re Bell" 26 USPQ22d 1529, was also cited for the holding that a disclosure of millions of compounds does not render a few compounds within that broad disclosure obvious, particularly when the disclosure indicates a preference leading away from the claimed componds. On March 22, 1994, the PTO issued a notice instructing examiners to disregard the Baird decision for applying an improper standard of patentability and being inconsistent with applicable binding precedent, which includes "In re Susi", 169 USPQ 493, and "Merck vs. Biocraft Laboratories", 10 USPQ2d 1843, where obviousness rejections over broad disclosures were affirmed. GROUP 2300 Mathematical equation patents There is a common mantra you will hear from the PTO, Federal judges and patent lawyers that mathematical equations can't be patented, best summed up by a PTO Federal Register comment: There are three general categories of exclusions to patent eligibility that are particularly relevant to software-related inventions. The first, and most commonly applied exclusion, is the exclusion of mathematical algorithms, per se, from patent eligibility. For a summary of the law governing this exclusion, and for guidance on how the PTO applies this exclusion in the context of its examination procedures, see "Patentable Subject Matter, Mathematical Algorithms and Computer Programs",1066 OG 5, (Sept. 5, 1989) and "Note Interpreting In re Iwahashi," 1112 O.G. 16 (March 13, 1990). Unfortunately, not only is this not true literally (because such patents have been issued where the bulk of the specification and claims dealt solely with the implementation of a mathematical algorithm), but recently the PTO issued a patent for manufacturing the SHAPE of a specific mathematical equation. While the latter is interesting for it humor value, the former issue is of increasing importance to the graphics and multimedia industry, where their trade secrets tend to be tricky algorithms for quickly calculating some of the mathematical equations at the heart of their programs. Many such firms are being told they can't patent such algorithms/equations when in fact they can. More on why and how mathematical equation patents are issued by the PTO. Greg Aharonian Internet Patent News Service (for subscription info, send 'help' to patents@world.std.com ) (for prior art search services info, send 'prior' to patents@world.std.com ) (for WWW patent searching, try http://sunsite.unc.edu/patents/intropat.html )