The Office of Management and Budget (OMB) approved two new patent rules proposed by the US Patent and Trademark Office (USPTO) limiting the number of continuation applications that may be filed (RIN 0651-AB93), and the number of claims in a patent application (RIN 0651- AB94). A July 12, 2007 OMB notice (available at www.reginfo.gov) shows that the rules were approved July 9, with changes. The OMB process was quite active, including meetings with BIO, Cantor Fitzgerald, and others objecting to the rules.

Despite the laudable intention of the rules – to streamline patent examination – this is the least popular reform of patent rules in recent history.

The proposed continuation rules would limit applicants to one continuation application absent good and sufficient reason. Comments by USPTO officials and blog reports suggest that the final rule may allow one RCE (request for continued examination) plus two continuations for new cases, or three continuations for cases that have received an office action, but exact details are unavailable.

The proposed rules on claims would require applicants to provide a patentability report for any application containing more than 10 claims (most applications), and would limit examination to representative claims. Comments suggest that the final rule may permit 25 claims in all, with five independent claims, but again the details are not publicly available.

Under federal administrative procedures, the final rules will soon be published in the Federal Register. The publication date depends on USPTO efforts, and could be days to months after the OMB approval. The effective date for the final rules will likely be the default of 30 days from publication, but there is a slight possibility that the rules might be effective immediately upon an appropriate showing by the USPTO that the delay would encourage applicants to "game" the system by filing new continuations. A later effective date is also possible. Thus, the effective date may be as early as July, but will most likely be in late August or early September. Trade associations are likely to challenge the final rules in court. 

Many patent applicants are reviewing their pending applications to determine whether it is desirable to file continuation applications before the new rules take effect. For example, it may be advisable to file a continuation application in a patent family in which there have already been three or more continuations on the assumption that no more would be allowed under the new rules. Also, in situations where there is already an intention to file a continuation application, it may be advisable to do so now rather than later. As to the claim number limitations, one option would be to add more claims now rather than after the effective date. After the transitional period, it is likely that patent prosecution will become yet more complex and, unfortunately, more expensive.