In general every patent claim is considered a separate invention. However, in certain instances, multiple claims are grouped together and the patentee's rights are determined with respect to these "representative claims." This article examines the representative claims procedures utilized in patent prosecution and litigation. The recent changes in the rules governing the appeals of a rejected patent claim before the Board of Patent Appeals and Interferences are highlighted first, followed by an examination of the use of representative claims in patent litigation and proposals for some guidelines for the selection of representative claims.
The statutes creating the patent system, expressly sanctioned by the Constitution, (1) represent an affirmative policy choice by Congress to reward inventors. (2) Each patent claim is considered a separate invention and is viewed as a distinct property right. (3) However, in certain instances, the Patent & Trademark Office ("PTO") and the courts are permitted to group claims together and reach a determination concerning an inventor's patent rights on the basis of a few "representative claims." (4) These procedures are justified as promoting efficiency and relieving judicial frustration and jury confusion. (5)
This article will examine the representative claims procedures utilized in patent prosecution and litigation. Section II discusses the use of representative claims when a patent applicant appeals a rejection of its claims to the Board of Patent Appeals and Interferences ("the Board"), and highlights recent changes in the rules governing that procedure. Section III examines the use of representative claims in patent litigation, including the effect of validity and infringement determinations on other, non-representative claims and whether a court-imposed representative claims procedure is a violation of the Constitutional rights of the patentee. Section III concludes with a discussion of potential strategic advantages enjoyed by a patent owner which tries its case on the basis of representative claims and proposes a few guidelines for the selection of representative claims.
II. REPRESENTATIVE CLAIMS IN APPEALS TO THE BOARD
During prosecution of a patent application, the patent examiner is required to evaluate each claim separately. (6) The examiner may not focus solely on the independent claims or on a general conception of the invention when determining whether patent claims should be allowed. (7)
However, when an applicant's claims have been twice or finally rejected by the examiner, the applicant may file an appeal to the Board. (8) On appeal, when multiple claims subject to the same ground of rejection are argued as a group by the appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal, rather than reviewing each claim separately. (9) That is, for each separate ground of rejection stated by the examiner, the Board may select one claim that it considers representative of the group and may decide the appeal of the rejection on the basis of its evaluation of the selected claim alone. (10) In a departure from prior practice, the failure of the appellant to argue claims separately is deemed a waiver of any argument that those claims should be subject to separate treatment. (11)
A. A Prior Version Of The Rules Created A Limited Representative Claims Procedure To Be Utilized In Appeals To The Board
In late 2004, the PTO enacted significant changes to the rules governing proceedings before the Board, including the rules authorizing the Board to decide an appeal on the basis of a representative claim. (12) Prior to September 2004, when those changes took effect, if an appellant did not wish to participate in the "representative" claims process, it was required to state its objections in an appeal brief. (13) The rules provided that, within two months after filing a notice of appeal, the applicant was required to file a brief containing a number of specific items, including a "grouping of claims. …