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

By Matthew Siegal and Jeffrey Mann of Stroock & Stroock & Lavan LLP

Matthew W. Siegal (, is a partner in the Intellectual Property Practice Group of the New York office of Stroock & Stroock & Lavan LLP, and Jeffrey Mann (, an associate in Stroock’s Intellectual Property Practice Group.

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) ...

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