On March 20, 2009, the U.S. Court of Appeals for the Federal Circuit held that the proposed PTO rule limiting the number of continuations that an applicant may file conflicts with the patent law and therefore upheld the injunction prohibiting the PTO from implementing this rule. The Federal Circuit, however, upheld the proposed rule limiting filing RCEs to one per application family or division family, and the proposed rule limiting claims in an application to five (5) independent claims and 25 claims total or requiring the filing of an Examination Support Document (ESD).

While the Federal Circuit cleared the way for many of the proposed rules to be implemented, it also noted that hurdles to the PTO implementing the proposed rules remain. In particular, the Federal Circuit noted that it was not deciding whether the proposed rules are impermissibly arbitrary and capricious, conflict with the Patent Act for reasons not discussed by the Federal Circuit, are impermissibly vague, are impermissibly retroactive, or whether rules proposed by the PTO are subject to notice and comment.

The PTO has announced that it will not implement the proposed rules at this time given that the litigation surrounding the proposed rules is still pending. http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/clmcontfinalrule.html.

History of Proposed Rules

On August 21, 2007, the PTO published final rules limiting the number of continuation applications and claims. The rules were to take effect on November 1, 2007. On October 31, 2007, the day before the proposed rules were to take effect, the U.S. District Court for the Eastern District Court of Virginia preliminarily enjoined the PTO from implementing the poposed rules. On April 1, 2008, the U.S. District Court for the Eastern District of Virginia permanently enjoined the PTO from enforcing the proposed rules, holding that all of the proposed rules exceeded the scope of the PTO's rulemaking authority.

Injunction Upheld

The Federal Circuit upheld the district court's ruling enjoining the PTO from implementing Rule 78.

Under proposed Rule, for each application family, applicants would be entitled to file only two continuation (or continuation-in-part, "CIP") applications as a matter of right. Additional continuation applications could be filed by demonstrating to the satisfaction of the Patent Office that such filings are required to present new arguments, amendments or evidence that could not have been previously submitted.

The Federal Circuit held that this rule violates the provisions of 35 USC Section 120 and therefore upheld the injunction against the PTO.

Injunction Reversed

The Federal Circuit reversed the district court's ruling enjoining the PTO from implementing the following rules.

Limit on RCEs

Under the proposed new rules, for each application family, applicants would be entitled to file only one request for continued examination (RCE) as a matter of right. Additional RCEs could be filed by demonstrating to the satisfaction of the Patent Office that such filings are required to present new arguments, amendments or evidence that could not have been previously submitted. The Federal Circuit held that this rule is within the rulemaking authority of the PTO and thus reversed the injunction against the PTO.

CIP claim priority identification

Under the proposed new rules, when filing a CIP application, applicants will be required to identify which claims in the CIP are entitled to benefit of the priority date of the parent application.

Separate applications without common priority

Under the proposed new rules, applicants will be required to identify to the Patent Office applications that meet all the following criteria: (A) filing or priority date that is the same or within two months of another application, (B) at least one inventor in common, and (C) the applications are owned or subject to assignment obligation to same person or entity.

There will be a presumption that an application contains at least one claim that is not patentably distinct from a claim in another pending or patented non-provisional application if the following criteria are met: the applications have (A) the same filing date, (B) a common inventor, (C) a common owner and (D) there is "substantially overlapping disclosure" - meaning there is written description support in one application for at least one claim in the other application.

The applicant can rebut the presumption by either (A) explaining why the claims are patentably distinct, or (B) submitting a terminal disclaimer and explaining why two applications with patentably indistinct claims are required. If the Patent Examiner doesn't accept the explanation, the Examiner can require cancellation of the patentably indistinct claims in all but one application.

Limit to 25 claims, 5 independent

Each application may have no more than 25 claims (including up to 5 independent claims) unless the applicant wishes to submit a detailed patentability analysis of each claim ("Examination Support Document"). Included in the 25 count are patentably indistinct claims from other applications as discussed above. There will be a 2 month, non-extendible deadline to respond (except extendible to 6 months for applications pending on November 1). Failure to comply within 4 months of filing can result in a reduction in the patent term adjustment calculations. An applicant can submit more than 25 claims with a suggested restriction requirement, but if the Patent Office does not agree, the excess claims must be withdrawn or an Examination Support Document must be submitted.

The Examination Support Document has requirements comparable to new expedited prosecution requirements. It must: (1) reference a preexamination search specifically directed to the elements of the claims, (2) list the closest references, (3) list all the elements of each of the claims (dependent and independent) found in the references, (4) explain how the independent claims are patentable over the references and (5) show where each of the claim limitations finds support in the written description of the application.

Changes in strategy to consider:

While the rules are not being implemented at this time, if and when they are, the following should be considered.

  1. If there are unclaimed separate inventions in an application, claims to provoke a restriction requirement should be submitted with the original filing or, for pending applications, at the time of filing of one of the allowed two continuations and one RCE.
  2. Because of the limits on RCEs, practitioners should consider Examiner interviews after a first office action, and appeals rather than relying on an RCE.
  3. The use of a provisional application allows one more filing in an application family, and the increased use of provisionals should be considered where appropriate.