New Patent Continuation and Claims Rules
September 25, 2007
On August 21, 2007, the U.S. Patent and Trademark Office (USPTO) published in the Federal Register the Final Rules pertaining to: (1) continued examination filings, (2) examination of claims in patent applications and (3) patent applications containing patentably indistinct claims. The Final Rules will go into effect on November 1, 2007 and are available in the Federal Register. The USPTO’s presentation on the Final Rules is also available at the USPTO's website.
The highlights of the Final Rules are as follows:
(1) Applicants Limited to 2 Continuing Applications and 1 RCE as a Matter of Right
The Final Rules provide that for applications filed on or after November 1, 2007, an applicant can file, in an initial non-provisional application filing and in each divisional application filing, 2 “continuing applications” (continuation or continuation-in-part applications) and 1 Request for Continued Examination (RCE) as a matter of right. For non-provisional applications pending prior to August 21, 2007 in which 2 “continuing applications” have already been filed, one more “continuing application” is permissible. The one more “continuing application” may be filed prior to or after November 1, 2007.
Additional continuing applications or RCE filings may only be permitted upon a successful showing that the amendment, argument or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application or prior to the close of prosecution in the application. If the showing is found to be insufficient, then the USPTO will refuse to enter a priority claim to any parent application and, as a result, the additional continuing application or RCE filing will only be entitled to its actual filing date.
In view of the foregoing, applicants should consider whether an RCE should be filed before November 1, 2007 in any pending patent applications in which a Final Office Action has issued and in which an RCE has already been filed within the application family. Please contact your attorneys at Lahive should you wish to discuss this option.
With regard to divisional applications, Applicants may file a divisional application if the prior filed application was subject to a requirement for restriction and the divisional application is filed with claims directed to a non-elected invention that has not been examined. A divisional application need not be filed during the pendency of the initial application as long the co-pendency requirement is satisfied. An applicant cannot rely upon a restriction requirement to file a divisional application if: (a) the applicant traverses[1] the restriction requirement; (b) the restriction requirement is provisional (e.g., a requirement for an election of a species); or (c) the claims to the non-elected invention may be re-joined.
(2) Examination Limited to 5/25 Claims Unless an Examination Support Document is Filed
The Final Rules provide that a non-provisional patent application filed on or after November 1, 2007, or a previously filed non-provisional patent application for which an Office Action on the merits has not issued by November 1, 2007, may not contain more than 5 independent claims or 25 total claims (the “5/25 rule”), unless an Examination Support Document (ESD) is provided by the applicant.
Further, if multiple pending (non-provisional) applications contain patentably indistinct claims and are commonly owned (see below), the USPTO will consider the multiple applications to be a single application for the purpose of determining whether more than 5 independent claims or 25 total claims are pending.
If a patent application does not comply with the 5/25 rule, an applicant may file a Suggested Requirement for Restriction (SRR) before the issuance of a Restriction Requirement or an Office Action on the merits by the USPTO. If a SRR is not filed, the USPTO will issue a notification that the application does not comply with the 5/25 rule. At this point, the applicant may either cancel claims or submit an ESD.
The Guidelines for an ESD as published by the USPTO are available at the USPTO's website. Careful consideration is warranted before the filing of an ESD because of the associated risks and expense.
(3) Commonly Owned Related Applications
The Final Rules require that the USPTO be informed of application(s) or patent(s) which are commonly owned, have a common inventor and have effective filing dates within two months of each other. The USPTO must be informed of such applications by the later of: (a) 4 months from the filing date or entry into the US national stage; (b) 2 months from the mailing date of the initial filing receipt in the application that is to be identified; or (c) February 1, 2008.
There is a rebuttable presumption that such identified application(s) or patent(s) contain at least one patentably indistinct claim if the application(s) or patent(s) have a substantially overlapping disclosure, the same filing or priority date, a common inventor and are commonly owned. If a rebuttable presumption exists, the applicant must either: (a) rebut the presumption by explaining how the application(s) or patent(s) have patentably distinct claims or (b) submit a terminal disclaimer (and, if the other application is pending, also explain why there are two or more pending applications which contain patentably indistinct claims).
For more information on the rules and to discuss strategies for addressing the rules in specific patent portfolios, please contact your attorneys at Lahive.
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[1] If the applicant traverses the restriction requirement and the Examiner maintains the requirement, a divisional application may be filed.
