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[George White]

Of course omnibus claims are not compliant with 112 2, but I thought it was clear that they looked enough like a claim that they got you a filing date. I'm sure I was taught that in the patent bar class I took.

 I am in the process of converting a PPA to an NPA (it was filed pro-se on the anniversary of a provisional application - the inventor intended it to be seen as an NPA but the PTO decided it was a PPA). The application had an omnibus claim so I did not amend in a "real" claim with the conversion request. The request was dismissed today for lack of an amended in claim complying with 112 2. Ok - maybe what a claim needs to be to convert is more than what it needs to be to get a date.

  I see that the minimum to get a filing date on a regular application is in 1.53(b). It says "at least one claim pursuant to § 1.75, "  1.75 says "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.". This is not word-for-word 112 2 but the few words that are different do not make much difference. So, is an omnibus claim enough to get a filing date?

thanks,

George White

[patentatt]

Of course omnibus claims are not compliant with 112 2, but I thought it was clear that they looked enough like a claim that they got you a filing date. I'm sure I was taught that in the patent bar class I took.

 I am in the process of converting a PPA to an NPA (it was filed pro-se on the anniversary of a provisional application - the inventor intended it to be seen as an NPA but the PTO decided it was a PPA). The application had an omnibus claim so I did not amend in a "real" claim with the conversion request. The request was dismissed today for lack of an amended in claim complying with 112 2. Ok - maybe what a claim needs to be to convert is more than what it needs to be to get a date.

  I see that the minimum to get a filing date on a regular application is in 1.53(b). It says "at least one claim pursuant to § 1.75, "  1.75 says "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.". This is not word-for-word 112 2 but the few words that are different do not make much difference. So, is an omnibus claim enough to get a filing date?

thanks,

George White

You raise a fascinating question:

What is the minimum requirement for a claim to obain a filing date, as opposed to the requirements for a claim to be patentable?

Obviously, the two standards are not the same - an unpatentable original claim will still secure a filing date.

I don't know the answer to your question, but I bet that there is previous case law on the subject.  I would be very interested to know the answer.

[khazzah]

I bet that there is previous case law on the subject.  I would be very interested to know the answer.

Indeed. OP, please post here if you find out.

[JimIvey]

Yeah, very interesting.

Imagine you file an application with a single claim that is given the filing date, then 3 years later you receive a rejection under 112p2 (e.g., for lack of antecedent basis or the use of something like "substantially") and you amend the claim in response, perhaps implicitly conceding that the sole original claim failed to meet 112p2.

Could you lose your filing date?  I'd be very alarmed to learn that you could.

Regards.

[ChrisWhewell]

Most excellent point, Mr. White.  Does this cast doubt on the validity of all issued patents that had received a section 112 rejection on all independent claims in a first OA, for which Applicant had admitted so on the record, by amending to overcome same, defendants in suit arguing that the PTO had erroneously accorded a filing date to a non-compliant Application ?   Or, is it an instance where the office (OIPE), by indicating a filing date on a filing receipt, has acquiesced that the application is entitled to a filing date ?   

Next time you get a 112 on all of your independent claims, as filed (hopefully never), just write in your rebuttal to the examiner that since the Office has accorded a filing date to the application, it is clearly in compliance with 1.75 and there can therefore be no section 112 issues present.

[khazzah]

you amend the claim in response [to a 112p2 rejection], perhaps implicitly conceding that the sole original claim failed to meet 112p2.

Could you lose your filing date?  I'd be very alarmed to learn that you could.

We'd all be alarmed! I'm not familiar with any case law where the court retroactively took away a filing date for any reason.

[George White]

(OP) Before encountering this problem converting a PPA to an NPA I assumed the requirement to get a filing date was something that on its face appeared to be a claim. Apparently that is the criteria for a PCT filing

Article 11 1(i) e) "a part which on the face of it appears to be a claim or claims."

If I dig into this I will post whatever I learn here.

--George

[fb]

Any answer to this? It is a very useful too to be able to get a filing date at minimal effort... sort of a pumped up provisional, with a lot longer than 12 months to work with. It would be great for spinoff inventions, where you don't know if you want to pursue it but something needs to be done right away.

[NJ Patent1]

fb:  Sorry, no answer (but I did look fo one).  I think George White may have indeed gotten screwed.  I thought that OIPE was supposed to examine the appliction to determine if all the parts required for exam were there. Period.  They do perform some "examination", for example to determine if, in their view, a drawing is required.  Ominibus claims are to be "rejected", but is OIPE in the business of "rejecting" claims?  I sometimes (reluctantly) file what used to be called informal drawings and still get a date (true, no statutory distinctness and particularity requirements for figs).   I guess the problem is omnibus claims are so easy to spot.  I wouldn't try your "strategy".  Just file one narrow claim with a preamble, a transition phrase, and something in the body to make it look like a US claim.  The client must have some idea of a likely direction?

[fb]

So, is there a consensus on omnibus claims? If a core invention gives 10 spinoff inventions, and the core invention gets a dedicated (proper) application, can the 10 unrelated spinoff inventions be put into one application and thus effectively get a filing date (and thus three years of breathing room) ?

[trw]

I've never heard of an appln not being given a filing date because of the form of the claim(s).  The issue should be whether there are any claims, not their form.  The "Godly Powers" appln (11/161,345) had crazy 112 issues when it was filed, but the OIPE* assigned it a filing date nevertheless.  (*I think this office is now known as the OPAP).

And, yes, you can put 10 different inventions in one application, they'll just be restricted out by the examiner. 

[fb]

This is perfect then. The spinoffs are needed immediately so as to enable the core invention, yet there is no IP prosecution money for them. So by putting all 10 of them into one $500 application, we can start using/publishing them right away, and, we'll have three years to develop or license or continue individual prosecution of them before we have to think about them again, all for about $50 each.

[khazzah]

I've never heard of an appln not being given a filing date because of the form of the claim(s).  The issue should be whether there are any claims, not their form.  The "Godly Powers" appln (11/161,345) had crazy 112 issues when it was filed, but the OIPE* assigned it a filing date nevertheless.  (*I think this office is now known as the OPAP).

And, yes, you can put 10 different inventions in one application, they'll just be restricted out by the examiner. 

Yes, you can put as many inventions as you want in a single application. And note that the risk of restriction arises only if you have *claims* to multiple inventions. If you file an original app with claims directly solely to invention #1, then a series of continuations with claims, each with claims directed solely to inventions #2-#N respectively, you will never have a restriction problem.

BTW, this has nothing to do with omnibus claims, since "omnibus claim" is a term of art with a narrow meaning, ie, a claim of the form "an apparatus substantially as shown and described."