On August 21, 2007, the U.S. Patent and Trademark Office (USPTO) published its much anticipated new rules regarding continuing application practice and limitations on the number of claims presented for examination. The new rules are allegedly being adopted to reduce the number of continuing applications so that the USPTO may eliminate the present back-log of new patent applications waiting to be examined. The new rules are also being adopted to ease the examination process for examiners by having applicants provide more focus and clarity regarding their inventions. The new rules go into full effect on November 1, 2007. The new rules, along with comments, can be found at the USPTO web site: http://www.uspto.gov/web/offices/com/sol/notices/72fr46716.pdf.
The following summary sets out our initial observations of important aspects of the new rules and is intended to make you aware of the complex interplay among these rules.
I. Executive Summary
(Subject to the applicability dates and exceptions noted below.)
Continuation Practice: Applicants are generally limited to two continuations, or continuations-in-part (CIPs), without petitioning the USPTO. Divisional applications based on examiner restrictions are not counted in the two continuation limit.
Requests For Continued Examination (RCE): One RCE is permitted as a matter of right for only one application in a patent family defined by an original application and any continuations, but excluding any divisional applications and their respective progeny. For each divisional application, one RCE as a matter of right is also available for only one of the divisional application or its progeny. This rule goes into effect on November 1, and you should consider filing any desired RCEs before November 1.
Claims: Applicants are generally limited to 5 independent and 25 total claims per application under the "5/25 rule." Under certain circumstances, the USPTO will presume that patentably indistinct claims are present in commonly-owned applications and aggregate claims in those applications for purposes of assessing the 5/25 rule. A basic filing fee still only pays for 3 independent and 20 total claims, so additional claim fees will be necessary for more claims.
Commonly-Owned Applications: A burden is now placed on applicants when filing an application to identify other applications having an effective date within two months of the effective filing date of the present application where there is at least one common inventor and common ownership. Further, where two applications have the same effective filing date, common ownership, at least one common inventor and a substantially overlapping disclosure, a rebuttable presumption applies that the applications each contain at least one patentably indistinct claim.
II. Extended Summary
The above rules regarding continuing application and claim practice go into effect on November 1, 2007. While one might think that the restrictions in the new rules will not affect patent practice until November 1, it is not that simple. During the "interim period" from August 21, 2007 to October 31, 2007, there may be instances where an application filed during that time frame would be subject to the new rules. Furthermore, the new rules may also affect applications filed prior to August 21, 2007. We touch on these situations below so that you are aware of possible issues that may arise in managing your patent applications.
Several of the rules may affect how you wish to protect your inventions before the USPTO presently and in the future. For example, the new rules significantly reduce the number of continuing applications (i.e., continuation, continuation-in-part and divisional applications) that will be allowed to be filed by an applicant without petitioning for an exception to the rules. New rules 37 CFR 1.78(d)(1)(i-vi) represent a significant obstacle to some applicants who rely on continuing applications to protect their inventions. For example, the new rules allow only two continuation and continuation-in-part applications (hereinafter collectively called "continuation applications") claiming priority to a common application. Subsequent continuation applications may only be filed upon making a showing before the USPTO that the applications are being filed "to obtain consideration of an amendment, argument, or evidence that could not have been submitted during the prosecution of the prior-filed application." 37 CFR 1.78(d)(1)(vi).
There are several exceptions to the above limitation of two continuation applications. Also, divisional applications don't count against the continuation limit. A divisional application is now strictly defined in reference to a restriction requirement. A divisional application may be filed for each group of claims not elected in response to a restriction requirement. Each divisional application is limited to two continuation applications in the manner described above.
In a patent family already having two continuation applications, applicants can get "one more" continuation after October 31, 2007 under the new rules, without the need for a petition, if priority is only claimed to non-provisional applications filed before August 21, 2007 and no other continuation application filed on or after August 21 also claims priority to the prior applications. In absence of these criteria, continuation applications filed after October 31, 2007 will be subject to the new rules, and so previously-filed non-provisional applications to which priority is claimed must be taken into account.
Requests for Continued Examination
Besides limiting the number of continuing applications, the new rules significantly reduce the number of Requests for Continued Examination (RCE) available as a matter of right pursuant to 37 CFR 1.114. In particular, only one RCE will be allowed in an application family, which we define as an original and any continuation applications exclusive of any divisional application or progeny of that divisional, without the need for a petition showing why the amendment, argument or evidence filed with the RCE could not have been filed earlier. 37 CFR 1.114(f)(1)-(2). Any divisional branch of a patent family, which we define as a divisional application and any continuations to the divisional, also gets a single RCE without the need for a petition as mentioned above. RCEs filed in continuation applications will count toward the one RCE limit. Thus, only one RCE is available as of right for one application in the application family, exclusive of any divisional branches, and one RCE is also available as of right for one application in each divisional branch. Should an applicant wish to surpass the one RCE limit for either the patent family or a divisional branch, a petition needs to be filed providing sufficient reasons why the amendment, argument or evidence could not have been filed earlier. 37 CFR 1.114(g). The limitation on the filing of RCEs goes into effect on November 1, 2007.
The new rules also limit the number of claims (5 independent and 25 total) that can be prosecuted in a non-provisional patent application at any one time without filing an Examination Support Document (ESD). 37 CFR 1.75(b)(1). This "5/25 rule" also applies across multiple applications, as defined in 37 CFR 1.78(f)(2), containing patentably indistinct claims.
If a pending application was filed and examined prior to November 1, 2007, then the 5/25 rule will never apply to that application. On the other hand, if such a pending application has not received a first examination on the merits by November 1, 2007, then the 5/25 rule will apply.
The 5/25 rule is regulated in several ways. First, the USPTO is supposed to provide notice when the claims of an application exceed the 5/25 rule. In order to avoid abandonment of the application, claims can be deleted in order to comply with the rule, a Suggested Restriction Requirement (SRR) can be filed if no restriction requirement has already been received, or an ESD can be filed. If an ESD is not filed prior to the mailing of a first Office Action on the merits, regardless of whether notice is provided, the applicant is never allowed to amend the claims to exceed the 5/25 rule during prosecution. An ESD may need to be updated in certain circumstances.
The above-mentioned ESD is prepared in accordance with 37 CFR 1.265. Such an ESD requires the applicant to file a statement with the USPTO that:
1. Indicates that a preexamination search has been performed;
2. provides a listing of references most closely related to the subject matter of each of the claims;
3. presents an analysis showing what elements in each of the claims are present in each of the listed references of item 2 (item 3 is not required if the applicant provides a certification that the application qualifies for small entity status);
4. provides a detailed explanation of why each independent claim is patentable over the references of item 2; and
5. provides a showing of where each limitation of the claims is supported by the original disclosure pursuant to 35 U.S.C. § 112, first paragraph.
The above-mentioned SRR is prepared in accordance with 37 CFR 1.142(c) and must be filed prior to the earlier of a first Office Action on the merits, a requirement to comply with the unity of invention requirement under PCT Rule 13, or a restriction requirement under 35 U.S.C. §121. Such an SRR allows the applicant to suggest to the examiner that two or more independent and distinct inventions are claimed and must include:
1. an election without traverse of an invention to which there are no more than 5 independent and 25 total claims; and
2. an identification of the claims to the elected invention.
An examiner is not obligated to accept the suggested restriction in an SRR. If an examiner refuses to accept the suggested restriction, the examiner may make a different restriction requirement or make no restriction requirement.
As you can see, the USPTO has developed a mechanism to significantly reduce the number of continuing applications and claims considered by an examiner. In order to reduce the burden on the examiner further, the new rules place a duty on an applicant to inform the USPTO of the identity of certain commonly-owned pending applications and issued patents. Knowing the identity of such applications and patents may aid the examiner in determining if a double patenting issue exists. These commonly-owned applications and patents must be disclosed if they meet the following criteria pursuant to 37 CFR 1.78(f)(1):
1. name at least one inventor in common with the inventor(s) identified in the pending application;
2. are owned by the same entity that owns the pending application or are under an obligation of assignment to the same entity; and
3. have a filing date within its priority chain of foreign, PCT and US applications and patents that is within two months of an effective filing date of the pending application.
For applications filed on or after November 1, 2007, the paper must be filed by the time periods specified in 37 CFR 1.78(f)(1)(ii). For each pending application filed prior to November 1, 2007 that has not been allowed, a paper identifying the commonly-owned applications and patents meeting these criteria needs to be filed with the USPTO by the later of the time periods specified in 37 CFR 1.78(f)(1)(ii) or February 1, 2008 in order to avoid abandonment of the application.
Our firm is currently working on a search strategy to identify such commonly-owned applications and patents in our docket system. However, we may not be aware of all your applications and patents. For example, if you maintain your own docket or also use other law firms to prosecute some of your U.S. applications and patents, you will need to develop a strategy to identify applications and patents of interest regardless of the law firm that prosecuted them. Our firm is available to help you in this matter. If you would like our assistance, please let us know.
2. Rebuttable Presumption
For those commonly-owned applications and patents identified above that have an effective filing date in common with the pending application and contain substantial overlapping disclosure with that of the pending application (hereinafter applications/ patents of interest), the USPTO will impose a rebuttable presumption that at least one claim in each of such applications/patents of interest is not patentably distinct from at least one claim of the pending application. 37 CFR 1.78(f)(2). In essence, the USPTO will presume that obviousness-type double patenting will exist without having to do an analysis of the claims. An applicant is given a limited time period to overcome the presumption by presenting arguments or by filing a Terminal Disclaimer that effectively ensures that the pending application and the applications/patents that fit the criteria of 37 CFR 1.78(f)(2) will remain commonly owned. In addition to the terminal disclaimer, 1.78(f)(2) requires an explanation of "why there are two or more applications . . . which contain patentably indistinct claims."
Should insufficient reasons be given to show that claims are distinct, then the indistinct claims can be canceled by the USPTO. 37 CFR 1.78(f)(3).
Note that for a pending application and an identified application/patent that are determined to have at least one indistinct claim, the USPTO will treat the pending application as containing all of the claims in the above-mentioned identified application/patent, and so the 5/25 rule may apply. 37 CFR 1.75(b)(4).
The portions of the rules identified above constitute those we have identified as having the most pressing deadlines. There are a number of other provisions not touched upon in these initial observations that we would be pleased to discuss with you.
You should be aware that aspects of these new rules may be contestable. If you are interested in filing an action to contest these rules, please let us know. If you have any questions or wish to discuss how these rules will impact your company, please contact your attorney at Brinks Hofer Gilson & Lione.
This Client Alert is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Hofer Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Hofer Gilson & Lione lawyer.