On August 21, 2007 the United States Patent and Trademark Office (USPTO) published a new set of rules associated with the filing and “prosecution” of US patent applications. Although the new rules were scheduled to take effect November 1, 2007, a judge for the Eastern District of Virginia issued a preliminary injunction on October 31, which temporarily prevents the USPTO from implementing the rules. Nevertheless, this injunction may be lifted at any time, and it seems reasonable to suppose that the USPTO will eventually succeed in getting some or all of the rules implemented.

The new rules are intended to improve the quality and efficiency of the US patent examination process. The mechanism by which the new rules seek to effect improved quality is by limiting the number of claims in any given patent application, limiting the number of related patent applications and limiting the number of requests to continue examination of the same patent application.

The rules effectively limit the number of claims in an application to 25 total claims, of which up to five claims can be independent claims. Patent practitioners have begun to refer to this as the “5/25 limit.” This is an effective, though not absolute, limit. In theory, one could prosecute a higher number of claims in an application, but in order to do so an applicant must submit an Examination Support Document (ESD), discussed below. For various reasons, filing an ESD will often be impractical and, consequently, the total number of claims in any application typically will not exceed the 5/25 limit.

USPTO’s Remedial Steps

One way that patent applicants may attempt to avoid this 5/25 restriction is by breaking a patent application into several applications and prosecuting the desired claims in 5/25 groups. The USPTO has anticipated this workaround and has indicated that it will take at least four remedial steps.

The first step is to require that patent applicants inform the USPTO about applications that have at least one common inventor, the same assignee and a filing or priority date within two months of the filing or priority date of a given application. This should help the USPTO identify potentially related applications and, in particular, applications that have been filed to circumvent the 5/25 limit through the use of multiple applications.

The second step is to create a rebuttable presumption that patent applications with the same filing or priority date, one inventor in common and overlapping disclosure contain at least one claim that is not “patentably distinct” from at least one of the claims in the other application. The patent applicant(s) under such circumstances are required to rebut the presumption or file a terminal disclaimer. This step appears to be aimed at avoiding the USPTO’s burden of proof in establishing that claims are invalid for obviousness-type double patenting. As it is clear that the USPTO has the burden of positively establishing the unpatentability of claims, it is not certain whether this provision will withstand litigation challenges by patent applicants.

The third step is to permit the USPTO to require the cancellation of all patentably indistinct claims from all but one of related applications that have patentably indistinct claims.

A fourth step is to permit the USPTO to count all claims in all applications that are related in the sense of having patentably indistinct claims from one another in the aggregate in each application. In other words, if a first application has five claims and a second application has six claims, and at least one claim from each application is patentably indistinct from at least one claim of the other application, the USPTO will treat each application as having 11 claims for the purpose of compliance with the 5/25 limit.

Accordingly, if an applicant wishes to prosecute claims in excess of the 5/25 limit, the USPTO has effectively limited this prosecution to either the filing of an ESD or the filing of serial continuation applications.

Restrictions on Continuation Applications

Filing serial continuation applications has also been made more difficult by the USPTO. The number of continuation applications that can be filed has been limited to two. Furthermore, the USPTO has placed a limit of one Request for Continued Examination (RCE). The RCE is a procedural mechanism that is frequently used to present a new or amended set of claims for examination.

In theory, up to 75 total claims (of which up to 15 could be independent claims) could be issued on an original application and the two continuation applications. One challenge of this approach is that it requires drafting claims in a manner designed to obtain an allowance in a minimal number of exchanges between the patent applicant and the patent office. If the initially presented claims are not found allowable by the USPTO, the patent applicant generally has one opportunity to amend the claims in order to place them in condition for allowance. Any further amendments will typically require the filing of either an RCE or a continuation application.

In essence, every RCE and continuation filing will result in an immediate loss of procedural rights for a client. Consequently, the limits on the number of continuations and RCEs are likely to change the way patent practitioners view RCEs and continuations: as a scarce resource to be preserved rather than a cost of prosecuting an application. The result is expected to be an increase in the number of administrative appeals and petitions within the appellate structure of the USPTO, as well as, perhaps, an increase in the number of appeals from the USPTO to the federal courts.

It may be possible to file additional continuation applications or additional RCEs. The USPTO has left open the possibility that such applications and RCEs would be permitted if the patent applicant could show that the amendment, evidence or argument could not have been submitted previously. It seems that this standard will be difficult to meet in virtually all cases.

Filing an Examination Support Document (ESD)

In the event that more than 25 patentably indistinct claims need to be examined at one time, it will be necessary to file an ESD. The requirements for an ESD include, among other things, conducting a thorough search of the prior art, listing the references identified in the search as most relevant, identifying where each reference teaches each limitation of the claims (for whichever limitations of the claims are taught in the references) and explaining in detail how the independent claims are patentable over the cited references. Certain small entities, small local governments and non-profit organizations can omit the identification of where each reference teaches each limitation of the claims.

The requirements for an ESD will be viewed as onerous by most patent applicants. Conducting a thorough search of the prior art is a first barrier, both because of cost and because the search requires identifying all of the limitations of the claims and giving the claims their “broadest reasonable interpretation.” These requirements may result in prosecution history estoppel, as features that were not subject to search may later not be deemed limitations of the claims and interpretations of the claim scope that exceed the scope used for the search may likewise be prevented.

Furthermore, the detailed explanation of the patentability of the independent claims may pose a second barrier. The detailed explanation may create immediate patent prosecution history estoppel, just as any response to an Office Action may create patent prosecution history estoppel, because it will be necessary to distinguish the claims from the cited references.

Finally, for entities other than small entities, small local governments or non-profit organizations, the requirement of identifying all of the limitations of the claims that appear in each of the cited references may be extremely time consuming and expensive. In addition, simple oversight of the teaching of a single or several claim limitations in any one of the cited references may later be construed as an attempt to mislead the USPTO. In short, meeting the requirement of identifying all of the limitations of the claims in each of the cited references would seem to require creating an enormous amount of prosecution history estoppel, and risking the enforceability of any patent that may issue based on the application due to alleged fraud on the USPTO.

Increasing Claims

Despite the barriers noted above, it may be possible to increase the 15/75 maximum issued claims based on the same original application filing. This opportunity may arise if it can be successfully established that various groups of claims to the invention disclosed in the application are patentably distinct. The traditional way that such a grouping of claims was established was through an Examiner-Initiated Restriction Requirement, grouping the claims into various groups and requiring election of one group for prosecution.

In addition to the traditional technique, the USPTO has provided a new process whereby the patent applicant can suggest a restriction requirement to the examiner. A Suggested Restriction Requirement (abbreviated as SIR by the USPTO) can be filed any time before a first Office Action on the merits (or before an Office Action that is a Restriction Requirement or the like). The SIR will identify proposed groups of claims, and suggest that the USPTO examine the groups of claims separately. If the USPTO agrees with the suggestion, one group (chosen by the patent applicant) will be examined immediately and the other groups can be prosecuted in divisional applications.

Divisional applications that are the result of USPTO restriction (or acceptance of a SIR) will not be considered continuation applications for the purposes of the one RCE and two continuation rules discussed above. Thus, each “independent and distinct” group of claims can provide the basis for up to 75 total claims, including 15 independent claims.

One possible option to attempt to get around some of the severity of the rules package would be to draft independent claims using large amounts of alternative language – such that one claim would essentially serve the purpose of two or more claims. In a set of rules directed to the use of alternative language that has not received much attention, the USPTO indicated that there would be some tightening of the standard to avoid what the USPTO views as inappropriate use of alternative language in claims.

In conclusion, it appears that the new patent prosecution rules will increase innovators’ reliance on high quality patent prosecution attorneys and agents to walk them through the potential procedural minefields introduced by the rules. Squire Sanders has many experienced patent practitioners that can help to guide patent applicants through the process, from drafting the 25 most suitable claims for prosecution to preserving the rights to file an RCE or continuation through appropriate use of appellate mechanisms.