Are U.S. Law Idiosyncrasies Destroying Your PCT Applications?

摘要

Suppose a business's patent strategy makes studied use of the Patent Cooperation Treaty application: draft one master application to serve as the basis for filing throughout the world. Coverage is required in the United States, so the business is advised to enter national phase prosecution in the U.S. Patent and Trademark Office - but this is where the trouble begins. Although the application was allowed in the originating jurisdiction, the USPTO has unexpectedly lodged a set of arcane rejections against the application. The claims have been rejected as failing to recite statutory subject matter under 35 U.S.C. § 101; and as being fatally indefinite under 35 U.S.C. § 112(f)/(b) because the claims recite function without proper support. Seemingly neither of these rejections has anything to do with the prior art. Moreover, the claims have been drafted in this style for years and never before received such rejections. What should be done?