How broadly can you amend claims in a PPH case?

There is a very helpful listserv (email discussion group) for US patent practitioners.  it is called the EFS-Web listserv, originally created to help US practitioners survive the problems in the initial launch by the USPTO of the EFS-Web system.  The charter of the listserv has now broadened to encompass US patent prosecution practice generally.  Here’s a question that one loyal listserv member posted today:

I just had a case transferred in that was filed with a PPH request in the US, based on a PCT written opinion. I haven’t used PPH before, so don’t have much experience.

There is a pending office action, in which the Examiner found some art in the US that wasn’t in the original search report, and I think our best way forward is to amend the claims.

PPH requests appear to require that all claim amendments be within the scope of the claims held allowable in the PCT application.

What’s the procedure if I am going to add a claim limitation that’s not in the original claim set?

Here’s what I answered.

There’s the answer and then there’s the real answer.

As alert listserv member Ronni Jillions pointed out correctly, the PPH source documents say that supposedly a case that is on the Highway cannot have its claims amended to stray beyond the scope of the favorably treated claims in the Office of First Examination work product that got the case onto the Highway in the first place.  A reader of the PPH source documents would conclude that the only way to amend a claim more broadly in a Highway case would be to file a continuation and present the broadened claim in the continuation.

The real answer is that there are many, many issued US patents in which:

• the case was on the Highway and
• at least one issued claim strays in this way. 

What is the explanation for the existence of such issued US patents?  I imagine there are two factors leading to this observed result.

A first factor is the reality that most practitioners pay no attention to this supposed requirement in the PPH source documents, and most Examiners likewise pay no attention to it.  After all, when a practitioner files a claim amendment that strays in this way, who exactly at the USPTO is going to call him or her on it?  Not the nitpickers who mail out Notices of Non-Compliant Amendment.  They are checking for things like a micro-mistake in the strikethroughs and underscores.  Those people are not technically trained to sniff out an instance of a proposed claim amendment straying beyond the scope of the OFE work product.  Well, if they aren’t going to catch it, who is?  Yes, the Examiner could conceivably catch it.  But the Examiner is likely to snooze through it just as the practitioner probably snoozed through it.  Assuming that the proposed amendment doesn’t add new matter or otherwise present some formal defect (a misspelled word or lack of antecedent basis or whatever), the Examiner is likely to enter the amendment and examine the claim as a matter of routine.

Here’s a second factor.  Suppose the Examiner actually does catch it that your claim strayed in this way.  Will the Examiner call you on it?  Yeah, maybe, but maybe not.  Let’s assume for sake of discussion that the proposed amendment makes it super easy for the Examiner to collect a count (for example suppose the proposed amendment permits a quick allowance of the case).  In such a case, the Examiner faces two choices:

• dust off the PPH training materials from years ago and figure out how exactly to bounce the straying amendment while making use of exactly the correct magic words, thus postponing the count for at least another half a year, or
• mail the Notice of Allowance and collect the count.

I’m betting that on such a fact pattern, most Examiners would follow the “mail the Notice of Allowance” path.

But yes, if you try to file a straying claim in a Highway case, there is a chance the Examiner will call you on it.  And if so, to get the straying claim examined you would have to file a continuation.

There is a similar amendment constraint for cases filed under the little-known 37 CFR § 1.496.