1. I was under the impression that the Examiner would not allow adding a boat load of claims after a first office action or really consider them. I have added 2-3 before and that has been fine, but 10+. Are there any rules against this kind of thing?
Not that I'm aware of. While I haven't done it lately, I've added Beauregard and computer system claims in a preliminary amendment to an applicatin that had only method claims -- tripling the number of claims. No problems. However, the limitations were pretty nearly exactly what was already pending. I've also filed applications with a single claim and filled in the rest by preliminary amendment -- going from 1 claim to over 20. Still, no problems.
If that's no longer acceptable practice, I'm not aware of the change or rule that makes it so.
2. When you say ""not risk having the claims removed from consideration later." What exactly do you mean?
Example. In your first Office Action on the merits, suppose 5 years after originally filing, you get a restriction requirement. You must elect claims directed to one invention, even if all your claims are really directed to one invention. The rest of the claims will be removed from consideration -- they won't be examined.
Typically, the only way to get those claims examined is to file a divisional application. It could wait another 5 years before being examined. Theoretically, it would limit your term on the claims originally withheld from consideration to 10 years max.
In some arts, I've heard of 100-way restrictions meaning that the examiner asserts that there are 100 separate inventions in the application. I've only heard of it in chemical/biotech arts -- often using S 112, p 6 to find numerous separate inventions in a single claim. Imagine having only 1% of you claim coverage examined and having the other 99% deferred by years!
I hope that makes sense...
Regards.
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Topic: prosecution hypo: benefits (Read 973 times)
