Patent applicants need to take a close look at the new final rule published August 21, 2007 by the U.S. Patent & Trademark Office (“PTO”). The PTO revised the rules of practice in patent cases relating to continuing applications and requests for continued examination, and for the examination of claims in patent applications.1* This article summarizes the new rules and provides some practice tips and strategy recommendations.

While the new rules are effective as of November 1, 2007, the continuation rules apply to all applications that are pending as of that date and filed on or after that date. The rules for the number of claims and the examination of claims apply to all applications that are pending in which a first office action on the merits (office action rejecting claims, as opposed to a restriction requirement) has not been mailed, as well as all applications filed on or after November 1, 2007.

Applicants should consider whether certain actions should be taken prior to November 1, 2007 and they will need to comply with the new disclosure rules by February 1, 2008.

New Continuation Rules:

  • Two continuation and/or continuation-in-part (CIP) applications and one request for continued examination (RCE) may be filed in an application family2 without any justification.
  • “One more” continuing application without a petition and showing may be filed for applications filed on or before August 21, 2007 (the publication date of the final rule).3 No more than one RCE may be filed in a family after November 1, 2007.
  • A divisional application (a separate invention identified by a Restriction Requirement) also may have two continuation and/or CIP applications and one RCE (the divisional application family) without any justification.
  • If a third continuation and/or CIP application is desired, a petition must accompany the subsequent continuing application that shows why the amendment, argument, or evidence sought to be entered could not have been previously submitted.4
  • If a second RCE is desired, a petition must be filed that shows why the information sought to be entered could not have been previously submitted.5 At this point, it appears that the success of a petition would be in the discretion of the Examiner.

New Claims Practice:

  • Applicants may present, without an Examination Support Document (ESD), up to:
    • 5 independent claims and
    • 25 total claims in an application6 o (5/25 claim rule).
  • If an application has a claim deemed patentably indistinct (i.e., no restriction requirement) over a claim in a commonly owned application, then all the claims of the other commonly owned application(s) will be counted in order to meet the 5/25 rule.7 That is, “patentably indistinct” applications will be treated as a single application family. 
  • If the Applicant files an ESD before the First Action on the Merits (FAOM), he may present more than the threshold of 5 independent claims and 25 total claims.
    • The ESD must cover each claim (both independent and dependent) and provide a preexamination search, a listing of the reference or reference deemed most closely related to each of the claims, an identification of all of the claim limitations that are disclosed by that reference or references, a detailed explanation pointing out how each claim is patentable over the reference(s) and a showing where each limitation of the claims finds support in the written description.8
  • If an application was filed before November 1, 2007 and a FAOM was mailed, the application is not subject to the 5/25 claim rule.
  • For applications in which a FAOM was not mailed before November 1, 2007, the PTO will issue a Notice that will set a two-month time period that is extendable up to six months.
    • In order to avoid abandonment, Applicant must file a Suggested Restriction Requirement (if no Restriction Requirement is in the Notice), an ESD or amend the application to contain no more than 5/25 claims.
  • Claims withdrawn from consideration and claims being prosecuted in a divisional application are not taken into account in determining the number of claims in an application unless the claims are reinstated or rejoined.9

New Disclosure Rules for Commonly-Owned Applications 

  • In each nonprovisional application that has not been allowed, applicants must identify other commonly-owned application(s) and/or patent(s) that have: 
    • At least one inventor in common with the application;
    • A claimed filing or priority date of the application within two months of the claimed filing or priority date of the application; and 
    • The same owner or an obligation to assign to the same owner.10 
  • The identification must be submitted within the later of: 
    • Four months from the actual filing date of the nonprovisional application;
    • Four months from the date on which the national stage commenced;
    • For applications filed with claims deemed the “same invention” or not “patentably indistinct”, the date on which a claim is presented that is not patentably indistinct from at least one of the claims in the one or more other or patented nonprovisional applications
  • If the PTO determines that the claim, while of a different scope, is directed to the same subject matter or invention as another pending application, the claim is patentably indistinct or part of the same application family.
  • Applicants are entitled, as a matter of right, to two continuation applications and one RCE per application family. Thus, a total of 15 independent claims and 75 total claims per invention is permitted without justification for each divisional application family and one continuation family of an application.
    • Two months from the mailing date of the initial filing receipt in such other nonprovisional application11; and
    • By the Compliance Date of February 1, 2008, if the application was filed before November 1, 2007.
  • A rebuttable presumption shall exist that a nonprovisional application contains at least one claim that is not patentably distinct from at least one claim of another pending or patented nonprovisional application (that is, that they are in the same family for purposes of counting the number of continuation applications) if the following conditions are met:
    • The nonprovisional has the same filing date as that of another pending or patented nonprovisonal application;
    • The nonprovisional application has at least one invention named in common with the other pending or patented application;
    • The nonprovisional application is owned by the same person or entity, or, an obligation to assign the application to the same person or entity exists; and
    • The nonprovisional application and the other pending or patented application contain substantial overlapping disclosure (written description support for at least one claim).12
  • If the rebuttable presumption exists, the applicant must do one of the following:
    • A) Rebut the presumption by explaining how the application contains only patentably distinct claims; or
    •  B) 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.13
      • While applicants are not required to submit a rebuttal, if the PTO deems the claims of two application patentably indistinct, the PTO will require a Terminal Disclaimer to overcome any obviousness-type double patenting rejection. 
  • If the rebuttable presumption exists and the application has not been allowed, applicant must submit a rebuttal or a terminal disclaimer (with an explanation, if required) within the later of:
    • Four months from the actual filing date of the nonprovisional application;
    • Four months from the date on which the national stage commenced;
    • For applications filed with claims deemed the “same invention” or not “patentably indistinct”, the date on which a claim is presented that is not patentably indistinct from at least one of the claims in the one or more other or patented nonprovisional applications;
    • Two months from the mailing date of the initial filing receipt in such other nonprovisional application14; and
    • By the Compliance Date of February 1, 2008, if the application was filed before November 1, 2007.
          • Consequences for failing to rebut the presumption:
          • Together, the commonly-owned indistinct applications cannot have more than 5 independent or 25 total claims;
          • The PTO will require a terminal disclaimer; and
          • The PTO will require an explanation was to why there are two or more pending applications containing patentably indistinct claims.

Practice Tips and Strategic Recommendations With these changes, the PTO intends to encourage all applicants to place more emphasis on properly preparing and prosecuting patent applications. The PTO is trying to avoid having the Examiners spend time going back and forth with the Applicants to obtain patentable claims.

1. In order to meet the February 1, 2008 compliance deadline for identification of commonlyowned applications and the rebuttable presumption that applications are in the same family, patent applicants should review their portfolios so that the necessary information is timely provided to the PTO.

2. Assignees should consider using one law firm for applications with at least one common inventor so that the law firm can handle the new family-based requirements. If not, clients should inform the law firm prosecuting each application whether any commonly-owned applications with at least one common inventor was filed within two months of the filing date.

3. While it is still possible to file a continuation application before the November 1, 2007 effective date of this rule, the patent application family would not be entitled to additional continuations (on or after November 1, 2007) if two or more were already filed, without the required justification. In addition, the application(s) may not have time to receive a FAOM and thus be “grandfathered” in, thereby avoiding the limitation on the number of claims for continuation applications. Thus, applicants should carefully consider the implications of filing a continuation application before doing so.

4. Prior to November, 1, 2007, patent applicants should consider making an election via telephone in response to a restriction request from the Examiner, instead of requesting a written Restriction Requirement, to move prosecution along so that a FAOM might be received before November 1, 2007. If a FAOM is obtained prior to November 1, 2007, the patent application would not be subject to the 5/25 claim rule.

5. Prior to October 1, 2007, patent applicants may wish to consider amending pending applications without a FAOM to meet the 5/25 claim limit and requesting a refund for excess claim fees. The statutory provision authorizing the PTO to refund excess claim fees expires on September 30, 2007, and as of today, it is unclear if the provision will be extended. A refund may be requested for excess claim fees paid on or after December 8, 2004. Otherwise, patent applicants may wish to wait for the PTO Notice that the 5/25 claim limit has been exceeded.

6. New applications should be drafted with multiple claim sets directed to different statutory classes of inventions, possibly with a Suggested Restriction Requirement, so that a restriction requirement is issued, thereby allowing divisional applications families to be filed off the original patent application. Each divisional application family is entitled to two continuations and one RCE without justification.

7. If a pending application family contains an RCE filed prior to November 1, 2007 and the application is under Final Rejection, it is advisable to consider filing another RCE prior to November 1, 2007 to get claim amendments entered without a petition or a showing. After November 1, 2007, in such cases, patent applicants cannot simply file another RCE to enter an Amendment After Final Rejection. Instead, a request must be made with a sufficient showing as to why the amendments were not presented earlier. The PTO has indicated in the Frequently Asked Questions** (see E4 to E8) that there is no automatic grant of an additional RCE.

8. In appropriate situations, patent applicants may consider deleting the benefit under 35 U.S.C. § 120 of an application filed as a continuation or continuation-in-part of an initial application to break the continuation chain and create an additional family of invention. By dividing the application family into two application families, two continuations and one RCE can be obtained for each family. This strategy may be used when intervening prior art (having a date after the filing date of the initial application) and the initial application specification (e.g., the publication of the initial application) may not be problematic.

9. Patent applicants should seriously consider requesting an Examiner Interview before the first Office Action, or at the very least, request the interview after the first Office Action to expedite prosecution by discussing claim language and claim preferences prior to a final rejection where claim amendments are limited. Strategic use of Examiner Interviews could conserve the number of continuations and RCEs in an application family, as the Examiner may understand the invention better at the time of search thereby resulting in a focused search as the claims can be focused to the invention. With this approach, the issues in the application may become crystallized sooner resulting in expedited prosecution.

10. Since the PTO is discouraging the filing of multiple RCEs, and is limiting continuations, patent applicants should consider appealing final rejections to avoid wasting an RCE or a continuation. In some instances, an appeal may be the only reasonable option available. However, if the PTO’s proposed rules are implemented regarding the appeal process, appealing a patent application may become more expensive and onerous.

11. Non-U.S. patent applicants may wish to consider having their patent applications properly translated into English and put into U.S. format prior to filing with the PTO. With this approach, a first Office Action that focuses on indefiniteness rejections under Section 112 and prior art that is not directed to the invention may be avoided. As such, two continuations and an RCE may be preserved for substantive prosecution.

*Federal Register publication of the final rule:  www.uspto.gov/main/homepagenews/bak2007aug20.htm.

**Answers to USPTO Frequently Asked Questions can be found at the following internet link:  www.uspto.gov/web/offices/pac/dapp/opla/presentation/ccfrfaq.pdf.