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A patent application must contain only one "independent and distinct" invention. The author examines how this phrase has been interpreted by courts and the US Patent and Trademark Office.

The author examines the role of the Noerr/Pennington doctrine in patent law and concludes that the use of the doctrine may fade as the volume of patent applications increases and the validity of more patents is called into question.

Determining whether the decisions of a given federal court regarding ex parte patent prosecutions are binding on the US Patent and Trademark Office requires determining whether the court's jurisdiction includes appeals of patent matters. Decisions of the Supreme Court, the Court of Appeals for the Federal Circuit and the Court of Claims are all binding precedent under stare decisis. Decisions from the Court of Customs and Patent Appeals, other Courts of Appeals, the District Court for the District of Columbia, and the Board of Patent Appeals and Interferences may also be controlling.

The United State Patent and Trademark Office (PTO) has issued examination guidelines for computer related inventions' applications, beginning in 1995 and prompted by four US Court of Appeals decisions. Previously, the Freeman-Walter-Abele two part test had been used to determine claims containing mathematical subject matter, but the court decisions have moved toward relying on primary authorities. The guidelines have been issued to ensure uniformity and consistency in determining exactly what the applicant has invented and its patentability.

A patent examiner evaluating a drawing, submitted as sole support of a claimed limitation in a patent application, relies on existing statutory and case law guidelines regarding support and enablement in order to analyze the disclosed limitation. The examiner must consider the degree of refinement in the state of the art to determine whether or not the drawing actually supports the mathematical expression that it represents. The examiner's task is difficult if the drawing is the sole support for an object whose shape is expressed in purely mathematical terms, especially when the drawing contains possible ambiguities.

The Patent and Trademark Office has set new goals with the Clinton administration. Commerce Sec Ron Brown gave a mission statement with three parts, including legal administration, policy and advice on intellectual property. Special activities will help with the Japan Trade Framework Agreement and the proposed information superhighway. Special focus will also go to patent harmonization, system automation and policy mechanisms.

On June 21, 2004, the Patent and Trademark Office (PTO) issued an "interpretation" of a final rule that it recently issued revising provisions of its rules of practice concerning patent [...]