The United States Patent & Trademark Office (USPTO) issued final changes to patent prosecution rules that will have a dramatic impact upon the way patent applications are handled. The biggest changes include limits on the number of claims in an application and the number of continuation applications that may be filed. The final rules go into effect on November 1, 2007.
While less onerous than the original rules the USPTO proposed, the final rules significantly change patent application and examination. The limited number of claims may necessitate strategic drafting decisions regarding what invention elements to claim. Continuation application limits similarly require consideration for when such applications are appropriate, potentially requiring increased use of appeals when faced with final office actions.
- No more than five independent claims and 25 total claims within a single application will be allowed (the so-called “5/25 Rule”) unless the application includes either an examination support document (ESD) or a suggested requirement for restriction (SRR).
- An ESD requires a search of the prior art and extensive analysis of material references, raising potential estoppel issues.
- While an SRR may be included with an application, it is the examiner’s discretion to accept it. If the SRR is rejected, the examiner may propose a new restriction requirement or do nothing, requiring that claims be cancelled to meet the 5/25 Rule.
- If an application has at least one claim deemed patentably indistinct over a claim in one or more commonly owned applications, all of the claims in all of these applications will be combined for the purposes of the 5/25 Rule.
- Claims withdrawn from consideration or cancelled are not counted when determining the number of claims unless the claims are reinstated or rejoined.
- Claims cancelled before examination may be entitled to a refund.
- These rules apply to any new nonprovisional or reissue application or any pending application that has not received a first office action on the merits before November 1, 2007. These rules also apply to any reissue application filed on or after November 1, 2007.
- No more than two continuations (includes both continuation-in-part (CIP) and regular continuation applications) and one request for continued examination (RCE) will be allowed for any one application unless a petition is included, demonstrating that any subsequent continuation application, or RCE, has been filed to obtain consideration of an amendment, argument, or evidence that could not have been previously submitted.
- Divisional applications are each entitled to two continuations and one RCE.
- What will qualify under the “could not have been previously submitted” standard is currently under debate, but it appears to be at the discretion of the examiner. For safety, it should be presumed that additional continuation applications, or RCE’s, will not be granted without extraordinary reasons.
- Any claim in a CIP that is filed or has yet to receive the first office action on the merits on or after November 1, 2007, is required to identify all claims that are explicitly or inherently supported by the disclosure in the parent application.
Co-pending Application Requirements
- A nonprovisional application filed on or after November 1, 2007 is required to disclose all patents and pending nonprovisional applications that are under common ownership (or obligation to assign), at least one common inventor, and a filing date or priority date within two months of the other application. All currently pending applications have until February 1, 2008 to comply with this requirement.
- For a patent application that has the same effective filing date of other pending or patented applications, there is a rebuttable presumption that the application contains at least one claim that is not patentably distinct from claims in the other applications that have one common inventor, substantially overlapping subject matter, and are commonly owned (or obligation to assign). The applicant may either submit arguments rebutting the presumption of patentably indistinct claims or file a terminal disclaimer, accompanied by a statement explaining why there are two or more pending nonprovisional applications that contain patentably indistinct claims.
Practice Tips and Strategic Recommendations
- Disclose to counsel all co-owned patents or patent applications with at least one common inventor, even if outside the two-month window of the filing date, to insure compliance with the duty of candor and disclosure to the USPTO. Clients should also consider using one law firm for applications to allow the firm to assist in compliance with the new disclosure requirements.
- Draft patent applications structured with multiple claim sets directed to different statutory classes of inventions (preferably with a Suggested Restriction Requirement). If the examiner issues the restriction requirement, then the other claim sets can be pursued in divisional applications, each of which is entitled to two continuations and one RCE.
- Make greater use of the Examiner Interview early in the process, when the application is most fresh in the examiner’s memory, to prevent the issuance of a final rejection.
- Consider appealing a final rejection instead of a continuing prosecution. While the costs of an appeal may be higher, prudence may demand the action of last resort be the RCE.
- Consider deleting the priority claim of the continuation or CIP application in order to obtain the opportunity for two more continuations and an RCE. This decision obviously increases the chance of anticipation by prior art or an undiscovered patent application arising between the filing of the two related applications.
- If no claim in a CIP is supported by the parent’s disclosure, the CIP should probably be changed to a nonprovisional application claiming no priority to the parent. This is because all claims lacking support in the parent will have a priority date as of the CIP filing for prior art purposes, not the date of the parent application. Even if the CIP has no claims qualifying for the parent’s filing date, the CIP’s patent term will still be calculated from the parent’s filing date, resulting in a shorter patent term than would have been obtained with a new nonprovisional application.