Wednesday, October 10, 2007

General principles of the new rules on continuing applications

From a USPTO PowerPoint to USPTO employees on the new rules:

The USPTO presents four general principles of the new rules-->

#1. Each application, or any group co-pending of “indistinct applications” to one invention, is subject to 5/25 claims requirement.
#2. Expect more serial (not parallel) prosecution on same invention.
#3. Requirements of two CON/CIP applications and 1 RCE reduces opportunities for extended prosecution on the same invention. But, petition available for additional CON/CIP and RCE.
#4. Applicants have a new requirement regarding identifying applications with potentially patentably indistinct claims.

Information on the Final Rule is available on the USPTO website at:

Should you or any USPTO employee receive any questions on the Final Rule from applicants, please refer them to or have them call 571-272-7704.

--> Limitations on continuing applications appear in Rules 1.78 & 1.114

--> Of limitations on claims (Rule 1.75):

The claims in each application may not exceed 5 independent claims or 25 total claims absent the applicant assisting the examination process through the filing of an Examination Support Document (ESD).

--> Of co-pending applications:

The applicant must identify other commonly owned pending applications or patents that: (1) have a claimed filing or priority date within two months of the claimed filing or priority date of the application; and (2) name at least one inventor in common with the application. In addition, for those applications that have the same claimed filing or priority date and substantial overlapping disclosures, the applicant must also file a terminal disclaimer or explain how the applications (or application and patent) contain only patentably distinct claims.

--> Rule 1.78(d)

If applicant presents a benefit claim that is not permitted by § 1.78(d)(1):
The Office will refuse to enter the improper benefit claim and refuse the benefit of the filing date of the prior-filed application.
The application will be treated as entitled only to the actual filing date and will be subject to prior art based on the actual filing date of the application.
For example, if the prior-filed application is published more than 1 year prior to the actual filing date of the application, the publication can be used as prior art under 35 USC 102(b).

--> As to a petition for more than 2 cons/ 1 RCE

Applicant may file a third or subsequent CON or CIP application or a second or subsequent RCE if applicant files:
A petition in compliance with § 1.78(d)(1)(vi) or 1.114(g);
The petition fee set forth in § 1.17(f);
An amendment, argument, or evidence; and
A 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.

--> Suggested requirement for restriction (SRR)

If an application contains claims to more than one inventions, applicants may file a suggested requirement for restriction (SRR) under § 1.142(c).
An SRR must be:
Accompanied by an election without traverse of an invention to which there are no more than 5/25 claims, identifying the elected claims; and
Filed before the earlier of a FAOM (first action on merits) or restriction requirement.
If the SRR is accepted, applicant will be notified in an Office action that contains a restriction requirement.

--> If no FAOM before Nov. 1, 2007 and MORE THAN 5/25:

For applications in which a FAOM was not mailed before November 1, 2007 and that contain more than 5/25 claims without an ESD:
The notice will set a two-month time period that is extendable under § 1.136(a), up to maximum of six months.
To avoid abandonment, applicant must:
File a SRR;
File an ESD in compliance with § 1.265; or
Amend the application to contain no more than 5/25 claims.

-->Patentably indistinct claim in multiple applications (37 CFR 1.75(b)(4) )

For commonly owned applications containing at least one patentably indistinct claim (that is not a withdrawn claim),

The Office will treat each application as having the total number of claims present in all of the applications (and not just the claim that is patentably indistinct), for the purposes of determining whether each application exceeds the 5/25 claim threshold.

For example, applications “A” and “B” are commonly owned and each contains 3/20 claims.
If application “A” contains a claim that is patentably indistinct from the claims in application “B”,
The Office will treat each application as having 6/40 claims.
In response to a notice under § 1.75(b), applicant must:
Cancel the patentably indistinct claim(s) from all but one application;
File an ESD before FAOM in applications “A” and “B”; or
Amend the application(s) such that both applications taken together contain no more than 5/25 claims.

--> Examination support document [ESD, 37 CFR 1.265 ]

An ESD must include:
A preexamination search statement;
Listing of references deemed most closely related to the subject matter of each claim;
Identification of claim limitations disclosed by each reference;
Detailed explanation of patentability; and
Showing of support under 35 USC 112, ¶ 1.

--> Identification of commonly owned applications (37 CFR 1.78(f)(1)(i) )

For example, if application “A” and application “B” are commonly owned, have at least one common inventor, and claim the benefit of the same prior-filed nonprovisional application,

Applicant for application “A” must identify application “B”; and
Applicant for application “B” must identify application “A”.

--> Rebuttable presumption (37 CFR 1.78(f)(2)(i) )

A rebuttable presumption will exist that the application and the other commonly owned application(s) or patent(s) contain at least one patentably indistinct claim,
If the other application or patent has:
An inventor in common with the application;
A claimed filing or priority date that is the same as the claimed filing or priority date of the application; and
Substantial overlapping disclosure with the application.
Substantial overlapping disclosure exists if the other application or patent has support for at least one claim in the application.

If the rebuttable presumption under § 1.78(f)(2) exists, applicant must either:

Rebut the presumption by explaining how the application contains only patentably distinct claims; or
Submit a terminal disclaimer.

If the other application is pending, applicant must also explain why there are two or more pending applications which contain patentably indistinct claims.

--> Final rejection on first office action (72 Fed. Reg. 46722)

The Office proposed to eliminate first action final practice when it proposed allowing an applicant to file one CON/CIP or one RCE.
Since the Office is not implementing that threshold, the Office is retaining the first action final rejection practice in a continuing application or after an RCE.
Applicants may guard against a first action final rejection by seeking entry of the amendment, argument, or new evidence after final rejection under § 1.116.

--> Rules on making final rejections in second or later action

A second or subsequent Office action may be made final, except when the action contains a new ground of rejection that is not:
Necessitated by an amendment of the claims, including an amendment to eliminate unpatentable alternatives;
Based on an IDS filed after a FAOM with the fee;
Based upon a double patenting rejection;
Necessitated by an identification of claims in a CIP application that is supported by a prior-filed application; or
Necessitated by a showing that a claim element is a means- (or step-) plus-function claim element.

--> Filing before November 1, 2007

The rule changes to continuing application practice under § 1.78(a) and § 1.78(d) are applicable to:
Applications* filed on or after November 1, 2007; and
Applications entering the national stage on or after November 1, 2007.
Applicant may file “one more” continuing application, without a petition and showing, for:
Applications* filed before August 21, 2007; and
Applications entering the national stage before August 21, 2007.

Applicant may not file an extra (i.e., third) continuation or CIP application on or after November 1, 2007, without a petition and showing if applicant filed fewer than two continuation or CIP applications before August 21, 2007.

The rule changes to examination of claims practice under § 1.75 are applicable to:
Applications* filed on or after November 1, 2007;
Applications entering the national stage on or after November 1, 2007; and
Applications* in which a FAOM was not mailed before November 1, 2007.
For example, applicant is required to file an ESD in an application that contains more than 5/25 claims if a FAOM was not mailed before November 1, 2007.

The rule changes to § 1.78(f) are applicable to:
Applications pending on or after November 1, 2007.

For applications filed before November 1, 2007,
Applicant must comply with the requirements under §§1.78(f)(1) and 1.78(f)(2):
Within the time periods set forth in §§ 1.78(f)(1) and 1.78(f)(2); or
By February 1, 2008, whichever is later.

Patent docs has some updates on the rules.


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