In January 2006, the United States Patent and Trademark Office (USPTO or the “Office”) published a proposed rule revising patent practice with respect to continued examination filings, patent applications with patentably indistinct claims, and examination of claims in patent applications. Following the submission of written comments and public meetings, the Office published its final rule on August 21, 2007. 72 Fed. Reg. 46716 (Aug. 21, 2007) (to be codified at 37 C.F.R. pt. 1). The final rule differs in many respects to the originally proposed rule, and the final rule includes a number of significant changes to patent practice.

As discussed in greater detail below, the final rule places a number of restrictions on various aspects of patent practice. Although the portions of the final rule discussed here are likely to have the most sweeping impact on patent practice before the USPTO, it is important to note that these are not the only changes to patent practice included in the final rule. In addition, there are nuances to many aspects of the final rule that are beyond the scope of this advisory and will not be discussed here. Rather, the purpose of this advisory is to provide the reader with a broad understanding of the changes being promulgated by the final rule, as well as considerations that may need to be taken into account from now until the final rule becomes effective on November 1, 2007, and going forward beyond November 1. For further details regarding the final rule, the reader’s attention is directed to the rule itself as well as the number of papers published by the Office for the purpose of summarizing and explaining the final rule, all of which may be found on the Office’s Web site:  http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/clmcontfinalrule.html.

I. Continued Examination Filings

As part of its final rule, the USPTO has revised patent practice with respect to “continuing” applications, including continuation and continuation-in-part (CIP) applications, and requests for continued examination (RCE), as well as with respect to divisional applications. See 72 Fed. Reg. 46837-81 (to be codified at 37 C.F.R. § 1.78, and § 1.114). As provided in the final rule, an applicant may file up to two continuing applications and one RCE in an application family, or up to two continuation applications (not including CIP applications) and one RCE in a divisional family, without any justification. However, any additional continuing application or RCE must include an amendment (including a new claim), argument or evidence and will only be entered on a petition and showing why that amendment, argument or evidence could not have been presented in a prior-filed application.

As to divisional applications, the final rule provides that a divisional application may only be filed from an application subject to a requirement for restriction and requires that such a divisional application only include claims to non-elected invention(s) that have not yet been examined. Although the final rule does not provide for a “voluntary divisional,” such a divisional may be filed as a continuation application (and be subject to the two continuing application provisions above). As further provided, a divisional application may be filed in parallel or in series with the prior-filed application subject to the restriction and from which the divisional application is filed. Also, a divisional application is not required to be filed during the pendency of the respective prior-filed application (although the copendency requirement must still be met).

As repeatedly noted in the Federal Register notice of the final rule, the final rule does not place a per se limit on the number of continuing applications that may be filed from an initial nonprovisional application. The final rule instead places a restriction on continuing applications after the first two continuing applications, and on RCEs after the first RCE, in an application (or divisional) family.

The final rule does not include any situation in which the USPTO will per se or pro forma grant a petition for an additional continuing application or RCE. Instead, the Federal Register notice indicates that the Office will consider such petitions and showings on a case-by-case basis. And although the final rule itself does not include guidance on showings that would likely result in the Office granting a petition, the Response to Comments section of the Federal Register notice, as well as a Frequently Asked Questions (FAQ) document published by the Office do provide some guidance (see the above-mentioned Web site for a copy of the FAQ). In ruling upon a petition, the Office will review the showing presented in petition, and may review the prosecution history of the initial application and the prior continuing applications, or require additional information from the applicant. The Office will consider whether the situation is one in which the applicant should more appropriately file an appeal or petition under 37 C.F.R. § 1.181 (e.g., premature finality of an Official Action), the number of applications filed in parallel or serially with substantially identical disclosures and whether the evidence, amendments or arguments accompanying the filing are being submitted with reasonable diligence.

Within the above framework, the Response to Comments section of the Federal Register notice includes a number of example situations in which the Office will likely deny a petition for an additional continuing application or RCE, as well as a number (albeit smaller number) of example situations in which the Office will likely grant a petition for an additional continuing application or RCE.

In many of the example situations in which the USPTO will likely deny a petition, the Office seems to believe that applicants could have, and in fact should have, sought entry of the presented amendment, argument or evidence in a prior-filed application in the respective family. For example, a petition is likely to be denied in cases in which the examiner only changed a rejection under 35 U.S.C. § 102 to a rejection under 35 U.S.C. § 103 (or maintained a rejection under 35 U.S.C. § 103) with the addition of a new secondary reference in response to an amendment adding a new claim limitation, since the applicant should have anticipated such a rejection. In other example situations likely to result in a denied petition, the Office seems to be of the opinion that the Office provides other avenues to accomplish the purported goal of the additional continuing application or RCE. For example, the Office is encouraging applicants to utilize the appeal or petition process for those instances in which an appeal or petition may be more appropriate. Also, at least in cases in which the applicant has not already filed two continuing applications but is seeking an additional RCE, the Office is encouraging the applicant to instead file a continuation.

A petition is also likely to be denied in cases in which a continuing application or RCE is submitted for consideration of an information disclosure statement (IDS) with or without an amendment necessitated by (or in view of) newly discovered art. In such cases, the Office points to another recently proposed rule revising the practice of submitting an IDS that, if adopted, would provide an avenue for such submissions and amendments in certain circumstances. See 71 Fed. Reg. 38808 (Jul. 10, 2006). Before the adoption of the proposed rule related to submission of an IDS, the Office has indicated that an applicant may file an IDS and petition under a rule permitting the suspension of rules (37 C.F.R. § 1.183), if that IDS complies with the proposed rule.

The rule changes to continuing application practice are applicable to applications (including reissue applications but not reexamination proceedings) filed or entering the national stage on or after the effective date of the final rule, i.e., November 1, 2007. For applications or application families dating prior to the publication of the final rule, i.e., August 21, 2007, applicants will be permitted “one more” continuing application without justification, regardless of the number of prior filed continuing applications. Thus, for an application or application family that dates prior to August 21, 2007, and for which two or more continuing applications have been filed, the applicant may file “one more” continuing application even if that continuing application is filed after the effective date of the final rule.

As to RCEs, the rule changes are applicable to any RCE filed on or after the effective date of the final rule, i.e., November 1, 2007. Thus, although an applicant may file any number of RCEs in an application (or divisional) family before the effective date, any RCE filed on or after the effective date that is a second or subsequent RCE in that application family will require a petition and showing

Considerations for Applicants

In view of the final rule as it relates to continuing applications and RCEs, for applications filed before August 21, 2007, and that are part of an application family already including two or more continuing applications, applicants should consider any additional continuing applications that may be desired. Applicants should consider filing any additional continuing applications before November 1, 2007, if the applicant is likely to desire more than the Office’s allotted “one more” continuing application (being mindful of the 5/25 claim threshold for an invention – discussed below). Also, for applications currently under a final rejection, and that are part of an application family in which an RCE has already been filed, applicants should consider filing another RCE with amended and/or new claims before November 1, 2007, in lieu of a response to the final Official Action, if the next step in the event of an unsuccessful response would likely be to file an RCE.

The final rule may push applicants to conduct more pre-filing prior art searches to obtain a better understanding of the prior-art landscape so as to draft more focused claims to help avoid rejections of overly broad claims. The final rule would also seem to warrant applicants strategically planning ahead as to any continuing applications that may be necessary or otherwise desired and “pulling out all the stops” as early as possible in prosecution of an application so as to avoid the necessity for an RCE. For example, applicants should consider conducting interviews with examiners as a matter of course after a first Official Action, if not before a first Official Action and/or after a final Official Action (if permitted by the examiner). In response to claim rejections in an Official Action, applicants should consider separately arguing the patentability of dependent claims that may otherwise be argued to be patentable merely for reasons similar to those presented for the independent claims from which they depend.

The final rule also warrants an applicant’s consideration of filing a petition to challenge petitionable deficiencies in an Official Action as soon as possible following receipt of that Official Action so as to require the USPTO to correct any such deficiencies. As suggested above, a petitionable deficiency may be the issuance of a premature final Official Action. However, a petitionable deficiency may also, and more generally, include any “error that affects applicant’s ability to reply to the Office action.” MPEP § 710.06. Some situations in which applicants might consider filing a petition under MPEP § 710.06 may include those in which the examiner rejects a claim (likely a dependent claim) but fails to substantively address how the prior art specifically applies to that claim, and may also include those situations in which a dependent claim clearly further limits the independent claim from which it depends, and the examiner rejects the dependent claim merely “for reasons similar to those provided with respect to its independent claim.” Should the applicant consider filing a petition due to a deficiency in an Official Action, however, it is important to note that filing the petition does not toll the deadline for responding to that Official Action.

Further, as the necessity for an appeal is also likely to increase in view of the final rule, it is important to place an application in the best condition for an appeal as early in prosecution as possible. If the applicant believes they only have a marginal position of patentability of an independent claim over references cited against that claim in an Official Action, the applicant may consider amending the claim to strengthen their position of patentability. In other cases, however, the applicant may believe that they have a strong position of patentability of an independent claim over references cited against that claim in an Official Action, but also believe that an amendment to that claim may make their position even stronger. In these instances, the applicant may consider adding a dependent claim drawn to that aspect that further strengthens the argument for patentability (provided the application does not otherwise already include such a claim, and being mindful of the 5/25 claim threshold for an invention, as discussed below), and separately argue the patentability of the independent claim and the new dependent claim.

II. Examination of Claims

The final rule also places restrictions on the number of claims that may be filed for an invention. See 72 Fed. Reg. 46836-36 (to be codified at 37 C.F.R. § 1.75). Per the final rule, an applicant may present up to five independent claims or 25 total claims in an application, without further obligation. For an application including more than five independent claims and/or 25 total claims (referred to herein as “the 5/25 claim threshold”), the applicant is required to conduct a pre-examination prior art search and submit a substantive examination support document (ESD) before a first action on the merits. In addition to a statement that the applicant conducted a pre-examination search, an ESD requires (a) listing of the reference or references deemed most closely related to the subject matter of each of the claims, (b) an identification of all the limitations of each of the claims that are disclosed by each reference cited, (c) a detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references, and (d) a showing of where each limitation of each of the claims finds support in the specification.

Procedurally, and particularly useful in instances in which an application may disclose multiple inventions, an applicant may file (without an ESD) an application including claims directed to those inventions even though the total number of claims exceeds five independent claims and/or 25 total claims. In such instances, the applicant may file a suggested restriction requirement (SRR) before a first Official Action or a restriction requirement. An SRR must be accompanied by an election without traverse of an invention and identify the claims to the elected invention.In response, the Office may accept the SRR and issue a restriction requirement in line therewith, or deny the SRR with or without a separate restriction requirement. If denied, applicant will then be given the opportunity to file an ESD, or bring the application into conformance with the 5/25 claim threshold (e.g., by canceling non-elected claims and ensuring that the elected claims satisfy the 5/25 claim threshold).

Likely in an effort to prevent gaming of the rule as to the 5/25 claim threshold, it is also worth noting that the 5/25 claim threshold count applies not only to all of the claims in a given application, but also to all of the claims present in other copending, commonly owned application(s) having a patentably indistinct claim (addressed below). For purposes of determining whether the 5/25 threshold is satisfied, the Office has indicated a number of instances in which an application is considered no longer pending (before issuance as a patent), including those in which an application has received a notice of allowance (unless the application is withdrawn from issue). Thus, although the 5/25 claim threshold for an invention does not apply to an initial application and two continuing applications prosecuted serially, it does apply to any of those cases prosecuted in parallel.

As before, the rule changes to examination of claims practice are applicable to applications (including reissue applications but not reexamination proceedings) filed or entering the national stage on or after the effective date of the final rule, i.e., November 1, 2007. In addition, the rule changes are applicable to applications (again, including reissue applications but not reexamination proceedings) filed or entering the national stage before the effective date, but for which a first action on the merits was not mailed before November 1, 2007. Thus, any application pending even as of publication of the final rule must satisfy the 5/25 claim threshold, or have an ESD filed, if a first action on the merits for that application is not mailed before November 1, 2007.

Considerations for Applicants

As the final rule applies to pending applications filed before the effective date of November 1, 2007, there are few actions that applicants may take prior to the effective date to avoid application of the rule. For applications in which a first action on the merits is received before November 1, 2007, filing additional claims above the 5/25 claim threshold would not seem to gain the applicant anything since these applications would not seem to be covered by the rule even after it comes into effect. Thus, although applicants may consider adding additional claims in view of the final rule and to avoid the necessity of an additional continuing application, such additional claims would not seem necessary to avoid the 5/25 claim threshold. And for applications for which a first action on the merits is not received before November 1, 2007, any additional claims above the 5/25 claim threshold will be considered to exceed that threshold after the effective date.

As indicated above, the requirements for filing an ESD are quite onerous, and as such, applicants are probably generally best served by avoiding exceeding the 5/25 claim threshold and the necessity for filing an ESD. Applicants should be aware, however, that if an ESD is not filed in an application before a first action on the merits (not including a restriction requirement), even if that application is under the 5/25 threshold, that application may not be amended during prosecution such that it would exceed the 5/25 threshold.

It is also worth pointing out that the USPTO has indicated that it will issue a notice for applications filed before the effective date that exceed the 5/25 claim threshold and that do not receive a first action on the merits before the effective date of the final rule. This notice will give the applicant time to provide an ESD or an SRR, or to amend the application to fall under the 5/25 claim threshold. However, although an SRR may be filed in response to such a notice for an application filed before the effective date, an SRR will not be considered a proper reply for an application filed after the effective date. Further, the time period for replying to a notice is extendible for an application filed before the effective date, but is not extendible for an application filed after the effective date.

As a more general consideration in view of the final rule as to the 5/25 claim threshold, in cases in which an applicant desires to file more than five independent claims and/or 25 total claims without an ESD, the applicant may file an initial application up to the 5/25 claim threshold, and then follow up that application with one or two continuing applications (filed serially with the initial application, e.g., following allowance of the initial application) to pursue the additional claims.

The applicant should also consider whether any claims may in fact be directed to a separate invention (noting that the 5/25 claim threshold applies per invention). In such instances, the claims to the separate inventions may be presented in separate applications. Alternatively, the applicant may present the claims to the separate inventions in the same application along with an SRR and claim election to facilitate the Office issuing a restriction requirement and, in effect, authorizing the filing of divisional applications for the non-elected claims. Given the circumstances and impact of each alternative, it would seem prudent for the applicant to file the claims to the separate inventions in the same application along with an SRR in all but those cases in which the distinctness of the separate inventions is quite clear.

III. Applications with Patentably Indistinct Claims

As suggested above, the final rule places certain obligations on applications considered related even though those applications may not formally claim priority to one another. See 72 Fed. Reg. 46840 (to be codified at 37 C.F.R. § 1.78(f)). For an application, an applicant must identify any other commonly owned applications or patents that have (a) an inventor in common with the respective application, and (b) a filing or priority date within two months of the filing or priority date of the respective application. Even further, for an application that is commonly owned with any other applications or patents that have (a) an inventor in common with the respective application, (b) the same filing or priority date as the respective application, and (c) a substantial overlapping disclosure with the respective application, a rebuttable presumption exists that the application includes at least one claim that is not patentably indistinct from at least one claim of the other application(s) or patent(s). In this regard, the final rule indicates that an application has a substantial overlapping disclosure if the other application or patent has written description support for at least one claim in the application (under 35 U.S.C. § 112, first paragraph). And as noted in the Response to Comments section of the Federal Register notice of the final rule, this support may be provided explicitly or via incorporation by reference.

As explained above, two or more applications including claims with patentably indistinct claims may be counted together against the 5/25 claim threshold and may have further consequences as to requiring a terminal disclaimer and justification for the multiple applications. In the Response to Comments section of the Federal Register notice of the final rule, the USTPO explains that the standard for “patentably indistinct” for purposes of the final rule follows that for one-way distinctness in an obviousness-type double patenting analysis as set forth at MPEP § 804(II)(B)(1)(a).

For applications that are presumed to include at least one patentably indistinct claim, the applicant may attempt to rebut the presumption or file a terminal disclaimer along with a good and sufficient reason for multiple applications. In the event the applicant desires to file the terminal disclaimer and reason (or if the applicant does not otherwise overcome an allegation by the Office that an application includes a patentably indistinct claim), the Office will treat each application as having the total number of claims present in all of the applications for determining whether each application exceeds the 5/25 claim threshold. And in the absence of good and sufficient reason for multiple applications, the Office may require elimination of the patentably indistinct claims from all but one of the applications.

As of November 1, 2007, the rule changes to applications with patentably indistinct claims will be applicable to all pending applications, regardless of whether the application was filed before or after that date. For applications filed before November 1, 2007, however, the applicant is given until at least February 1, 2008, to comply.

Considerations for Applicants

For applicants, the final rule as to patentably indistinct claims has implications for currently pending applications, as well as those that may be filed from now through the effective date of the final rule. For applicants with a portfolio of applications, applicants should audit their portfolio and, for any two or more applications that satisfy the enumerated conditions, submit the necessary papers with the USPTO to comply with the rule. Again, for applications that are noted as satisfying the enumerated conditions, applicants have until at least February 1, 2008, to comply with the rule.

Even for applications that may not explicitly fall under the final rule (e.g., not filed within two months of one another), the applicant should consider whether submitting a paper at least cross-identifying those applications may otherwise be necessary to comply with the applicant’s duty of disclosure under 37 C.F.R. § 1.56.

Further, for applicants that have their portfolios spread across multiple organizations (e.g., across multiple law firms), it is imperative that the applicant consider that applications satisfying the aforementioned conditions may be spread across multiple organizations with those organizations possibly not independently being aware of each other’s applications.

IV. Refund of Excess Claim Fees

In addition to the parts of the final rule explained above, it is worth noting that the final rule also provides for a refund of excess claim fees paid in certain circumstances in which the applicant cancels the claims for which those fees are paid. More particularly, the final rule adds 37 C.F.R. § 117, which provides that the applicant may request a refund of excess claim fees paid on or after December 8, 2004, if the claim(s) for which the request is filed is cancelled before a first examination on the merits is made of the application, provided the refund is requested within two months of the claim(s) being cancelled. For purposes of requesting a refund, a first examination on the merits does not include a restriction requirement. Thus, all of the other conditions being satisfied, an applicant may cancel excess claims in response to a restriction requirement, and request a refund for excess claim fees paid for that application.

V Conclusion

As indicated in the introduction, and as should be readily apparent following the above discussion, the final rule will have a sweeping impact on patent practice before the USPTO. Although this advisory has not addressed the relative merits of the final rule, it is worth noting that many question not only the final rule itself, but also the USPTO’s authority to implement the particular provisions of the final rule. In this regard, in just the first few days after the USPTO published the final rule, at least one lawsuit has been filed challenging the final rule. And although there is a possibility that this or another lawsuit may have an impact on the final rule and the Office’s implementation of it, applicants should be prudent and begin to prepare today to put themselves in the best possible position come November 1, 2007, and thereafter