October 04, 2007
'After a year of debate, the United States Patent and Trademark Office (USPTO) has published final rules on August 21, 2007 (effective November 1, 2007), which substantially change current patent prosecution practice. In-house counsel as well as patent counsel and patent managers should inquire as to how their patent portfolio and patent litigation strategies might be affected by these changes.
Continuation Applications and RCEs
The new rules limit the number of continuation applications that can be filed for a currently pending patent application, as well as the number of Requests for Continued Examination (RCEs).
The new rules allow for only two continuation or continuation-in-part (CIP) applications to be filed claiming priority to a pending patent application in a family. A family is considered to be a first non-provisional patent application, and includes its two continuation/CIP applications. This is in marked contrast to the prior rules, under which the USPTO allowed an unlimited number of continuations or CIP applications to be filed in a particular family.
Additionally, the new rules limit an applicant to a single Request for Continued Examination (RCE) to be filed in a family as a matter of right. This, too, is a substantial change from the prior rules, under which an unlimited number of RCEs were permitted. Considering the limited number of RCEs allowed by the PTO, applicants should prepare to file further appeals if claims are rejected after a final office action.
Although the limits described above will be effective on November 1, the USPTO will allow additional continuation/CIP applications and RCEs if the applicant files a petition and makes a satisfactory showing that the amendment, argument, or evidence sought to be entered could not have been submitted earlier in prosecution. It is unclear at this time as to what (if anything) the USPTO will accept as a satisfactory showing, because the USPTO has provided little guidance to date in this regard. Applicants should not expect that it will be a routine matter to meet this burden.
Although the rules limit the number of continuations/CIPs, they do not limit the number of divisional applications filed off of a parent application, as long as the divisionals result from a restriction requirement imposed by the USPTO. In particular, a divisional application is a separate application that claims priority from an earlier-filed parent application, but which also claims an invention that is "patentably distinct" from the invention claimed in the parent application. A divisional application may be filed after the USPTO has imposed a restriction requirement in the earlier non-provisional application. Therefore, according to the new rules, when a restriction requirement is imposed by the USPTO, the applicant is free to file one divisional application per each distinct invention. However, each divisional application is then considered a first non-provisional application and is, in turn, subject to the continuation/CIP and RCE limitations described above.
Limitation on the Number of Filed Claims
The final rules discourage the filing of more than five independent claims and a total of 25 claims in a given patent application. If the patent application includes more than five independent claims or more than 25 total claims, the applicant will be required to file an Examination Support Document (ESD) within a two-month non-extendable period. The ESD requires an applicant to conduct a prior art search and explain the patentability of each claim in light of the prior art discovered in the search. In addition, the ESD must identify each claim limitation disclosed in the most relevant prior art references, and explain where there is support in the specification for each claim limitation.
The rule affects both new applications filed on and after November 1, 2007 and any application pending on November 1, 2007 that has not received a first office action on the merits prior to November 1, 2007. Thus, it is extremely important to consider reviewing all pending applications that do not have a first office action to determine whether preemptive action should be taken prior to November 1, 2007.
Related Applications Disclosure
The final rules also require applicants to identify to the USPTO, for all pending applications, all non-provisional applications and issued patents that:
A. Have at least one common inventor;
B. Are owned or subject to assignment obligation to a same person or entity; and
C. Have a filing or priority date within two months of any other pending application.
For pending applications, this information must be submitted by February 1, 2008. For all new applications filed on and after February 1, 2008, this information must be provided within four months of the filing date or prior to entry into national stage examination, or within two months of the mailing date of the filing receipt, whichever is later.
In addition, if an application/patent is identified that satisfies all of the three conditions listed above, and also has "substantially overlapping disclosure" with the application under examination, the USPTO will rebuttably presume that the applications have patentably indistinct claims. The applicant can then attempt to rebut the presumption, but must explain to the Patent Office how the claims in the applications are patently distinct from one another. The rules define the phrase "substantially overlapping disclosure" between two or more applications to exist when there is written description support in one application for at least one claim in the other application or applications.
Alternatively, the applicant may submit a terminal disclaimer including reasons as to why the patentably indistinct claims were not provided in the same application. Even after the Applicant has filed the terminal disclaimer along with the reasons, the Patent Office can still require elimination of patentably indistinct claims from all but one of the applications if the applicant’s reasons are not deemed “good and sufficient.” The rules do not specify what the Patent Office would consider as a “good and sufficient” reason to avoid elimination of the patentably indistinct claims.
However, it should be noted that if a “good and sufficient” reason is established by the applicant, the USPTO may then elect to combine the claims of the two cases together to exceed the allowed number under the 5/25 rule, thereby triggering the ESD requirements discussed above.
What You Can Do
Prior to November 1, 2007, it is strongly advisable to review all your pending patent applications in order to determine if proactive action is necessary. If applicable, a preliminary amendment can be filed to reduce the number of claims that have been filed in order to avoid the 5/25 rule before receiving a first office action. Other actions may additionally or alternatively be taken, depending on the facts of a particular situation.
Applicants should review each patent application or family of related patent applications and identify subject matter that has yet to be claimed. Before the rules are effective on November 1, the number of available continuations/CIPs for a particular family can vary, depending on the number of already filed continuations/CIPs. Therefore, applicants should explore the pros and cons of filing more continuations/CIPs before November 1 for all patent families. Considering that every applicant's situation is different, applicants are encouraged to discuss strategic options with their attorney as soon as possible.
Applicants should also begin preparing papers to submit to the USPTO identifying related applications in which there is a common inventor, common owner, and are filed within two months of each other. For an applicant who uses more than one law firm to prosecute its patent applications, the applicant should coordinate among the various law firms to ensure that all cases meeting these criteria are identified.
For applications currently being prepared, but which are not yet filed, applicants should consider whether there might be an advantage to filing the applications as multiple applications prior to November 1, or an advantage to filing a single application with multiple claim sets carefully drafted to encourage the Patent Office to issue a restriction requirement.
These new rules are complex, and they might lead to unknown or unforeseeable consequences. The strategies for dealing with these changes will differ among industry groups and applicants. They may evolve over time. Accordingly, we strongly suggest that you contact your patent attorney to discuss strategies for existing and future patent filings in order to develop an optimal strategy tailored to your specific situation.
Click here for a PDF copy of the final USPTO rules.
Click here to visit the USPTO’s Web portal on the new patent rules.
For additional information or advice on compliance with the new USPTO rules, please contact the Thelen patents attorney(s) with whom you ordinarily consult, or the authors of this report, who are based in the firm’s Silicon Valley office:
David B. Ritchie
408.282.1856
dritchie@thelen.com
Suvashis Bhattacharya
408.282.1861
sbhattacharya@thelen.com
Click here to go to the Thelen Patent Law Portal.
Click here to learn more about Thelen's Patents practice.
©2007 by Thelen LLP. This article is published as an information service for clients and friends. Please recognize that the information is general in nature and must not be relied upon as legal advice. We would be pleased to discuss the information in this article, and its application to your specific situation, in greater detail. We welcome your comments and suggestions.
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