New Patent Office Rules on Claims and Continuations
August 22, 2007
In our June 27, 2007 e-Bulletin, “Winds of Change in U.S. Patent Law,” we warned that the United States Patent Office would be implementing significant rule changes during the Summer of 2007. The first set of such rule changes has been published by the USPTO on August 21, 2007 and most will be effective on November 1, 2007. These new rules pertain primarily to the number of claims that may be filed in any given patent application and to the number of continuation applications that will be allowed for any given patent application.
The USPTO’s purported reasoning for these new rules is to allow the USPTO to conduct more thorough and reliable examinations of patent applications. The rule changes affect continuation applications, applications having more than five independent claims or more than twenty-five total claims, and related applications having overlapping or substantially similar disclosures under which the claims find support. Many of these rule changes are effective November 1, 2007, but many others are effective retroactively (for example, the new rules pertaining to the limitation on the number of patent claims in any patent application are effective as to any pending non-provisional patent application that has not yet received a first Office action on the merits by November 1, 2007).
Limitation on Continuations: The new rules allow for one request for continued examination (“RCE”) and two continuations / continuations-in-part for each patent application family as a matter of course. Any third or subsequent continuation application and any second or subsequent RCE in an application family must be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted. For purposes of the revised rules, an application family includes the parent/initial application and its continuations. Similar rules apply to divisional applications, where each divisional patent application is considered to be the parent/initial application. The revised rules also make explicit that to qualify as a divisional application, the claimed subject matter must have been the subject of a restriction requirement issued by the USPTO.
Limitations on the Number of Claims: Also, under the new rules, each patent application is allowed five independent claims and twenty-five total claims as a matter of course. If the application contains more than five independent claims or more than twenty-five total claims, the revised rules require an applicant to file an examination support document (“ESD”) that covers all of the claims in the application. The ESD must include a preexamination search statement, a listing of references deemed most closely related to the subject matter of each claim, an identification of all claim limitations disclosed by each reference, a detailed explanation of why each independent claim is patentable over the prior art disclosed, and a showing of support in the application for each limitation, pursuant to 35 U.S.C. § 112, first paragraph. The ESD must be filed prior to the first Office action on the merits.
Multiple Applications with Indistinct Claims: The USPTO has also revised the rules of practice with respect to multiple applications that may contain patentably indistinct claims. Applicants are required to identify any other commonly owned applications or patents that have a common inventor and a filing or priority date within two months of the filing or priority date of the subject application. If any other commonly owned application or patent also has a substantially overlapping disclosure and the same filing or priority date, the application is presumed to include at least one patentably indistinct claim. However, the patent applicant may rebut this presumption by explaining how the claims are distinct or filing a terminal disclaimer and explaining why multiple applications claiming allegedly indistinct subject matter should be maintained. All of the claims in applications having at least one patentably indistinct claim are counted together for purposes of the ESD requirement. Additionally, the USPTO may require the applicant to eliminate the patentably indistinct claims from all but one of the applications.
Expected Increase in Examination Appeals: While not specifically recited in these revised rules, the USPTO has taken an interesting turn and suggested to patent applicants that “for an applicant faced with a rejection that he or she feels is improper, the appeal process offers a more effective resolution than seeking continued examination before the examiner.” (Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, 72 Fed. Reg. 46,716, 46,720 (August 21, 2007)).
New Rules for Information Disclosure Statements: These revised rules did not address the expected changes in the rules for Information Disclosure Statements. These additional rule changes will most likely issue later this year or early next year.
The USPTO’s purported reasoning for these new rules is to allow the USPTO to conduct more thorough and reliable examinations of patent applications. The rule changes affect continuation applications, applications having more than five independent claims or more than twenty-five total claims, and related applications having overlapping or substantially similar disclosures under which the claims find support. Many of these rule changes are effective November 1, 2007, but many others are effective retroactively (for example, the new rules pertaining to the limitation on the number of patent claims in any patent application are effective as to any pending non-provisional patent application that has not yet received a first Office action on the merits by November 1, 2007).
Limitation on Continuations: The new rules allow for one request for continued examination (“RCE”) and two continuations / continuations-in-part for each patent application family as a matter of course. Any third or subsequent continuation application and any second or subsequent RCE in an application family must be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted. For purposes of the revised rules, an application family includes the parent/initial application and its continuations. Similar rules apply to divisional applications, where each divisional patent application is considered to be the parent/initial application. The revised rules also make explicit that to qualify as a divisional application, the claimed subject matter must have been the subject of a restriction requirement issued by the USPTO.
Limitations on the Number of Claims: Also, under the new rules, each patent application is allowed five independent claims and twenty-five total claims as a matter of course. If the application contains more than five independent claims or more than twenty-five total claims, the revised rules require an applicant to file an examination support document (“ESD”) that covers all of the claims in the application. The ESD must include a preexamination search statement, a listing of references deemed most closely related to the subject matter of each claim, an identification of all claim limitations disclosed by each reference, a detailed explanation of why each independent claim is patentable over the prior art disclosed, and a showing of support in the application for each limitation, pursuant to 35 U.S.C. § 112, first paragraph. The ESD must be filed prior to the first Office action on the merits.
Multiple Applications with Indistinct Claims: The USPTO has also revised the rules of practice with respect to multiple applications that may contain patentably indistinct claims. Applicants are required to identify any other commonly owned applications or patents that have a common inventor and a filing or priority date within two months of the filing or priority date of the subject application. If any other commonly owned application or patent also has a substantially overlapping disclosure and the same filing or priority date, the application is presumed to include at least one patentably indistinct claim. However, the patent applicant may rebut this presumption by explaining how the claims are distinct or filing a terminal disclaimer and explaining why multiple applications claiming allegedly indistinct subject matter should be maintained. All of the claims in applications having at least one patentably indistinct claim are counted together for purposes of the ESD requirement. Additionally, the USPTO may require the applicant to eliminate the patentably indistinct claims from all but one of the applications.
Expected Increase in Examination Appeals: While not specifically recited in these revised rules, the USPTO has taken an interesting turn and suggested to patent applicants that “for an applicant faced with a rejection that he or she feels is improper, the appeal process offers a more effective resolution than seeking continued examination before the examiner.” (Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, 72 Fed. Reg. 46,716, 46,720 (August 21, 2007)).
New Rules for Information Disclosure Statements: These revised rules did not address the expected changes in the rules for Information Disclosure Statements. These additional rule changes will most likely issue later this year or early next year.
