The New Patent Rules In Action

September 2007

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

United States Patent and Trademark Office New Patent Rules — Summary and Considerations

On August 21, 2007, the United States Patent and Trademark Office (Patent Office) published new rules regarding limitations on the number of claims in applications, and on the number of continuation and continuation-in-part (CIP) applications and requests for continued examination (RCE). The following generally summarizes the new rules and requirements and provides considerations in view of the new rules.

There are three over-arching principles found in the new rules, which we will refer to as the “5/25 rule,” the “two-continuations/one-RCE rule,” and the “copending and common rule.” Important aspects of these are bulleted below for your consideration.

Limitations on the Number of Claims - The "5/25 Rule"

Each utility application is limited to a maximum of five (5) independent claims and twenty-five (25) total claims (“5/25 rule”), unless an examination support document (ESD) is filed.

  • All applications filed after November 1, 2007, or before November 1, 2007 and that have not received a first action on the merits (FAOM), will be required to comply with the 5/25 rule.
  • Applicants will be given a two-month period following a notice from the Patent Office to comply with the 5/25 rule. For applications filed before November 1, 2007 (for which a FAOM has not been mailed by November 1, 2007), the period to reply to the notice is extendable up to four months. No extensions are permitted beyond the two-month period for applications filed after November 1, 2007.
  • Dependent claims that refer to other claims, but are of a different statutory class (e.g., method claims and product claims) will be treated as independent claims.
  • If applications are copending and are being prosecuted in parallel, the examiner may require that the total number of claims among the parallel, copending applications be reduced to five (5) independent claims and twenty-five (25) total claims (5/25) unless it is successfully argued that the claims are patentably distinct.
  • Applicants may submit a suggested restriction requirement (SRR) that could include an explanation of how groups of claims in an application are patentably distinct, which may result in the Patent Office restricting the claims into patentably distinct groups. An SRR must be submitted before the earlier of a FAOM or an examiner’s requirement for restriction. The SRR must be accompanied by an election without traverse of claims that meet the 5/25 rule. The Patent Office is under no obligation to accept an SRR.
  • ESDs should only be filed as a strategic alternative of last resort, since they will be difficult to prepare and may result in undesirable admissions in the prosecution history record.

Limitations on Number of Certain Related Applications - "Two-Continuations/One-RCE Rule"

Only two continuation or continuation-in-part (CIP) applications and one request for continued examination (RCE) can be filed for any invention (“twoc-ontinuations/one-RCE rule”) unless a petition, filed by the applicant, is granted by the Patent Office.

  • A petition to file additional continuation or CIP applicationsor RCEs must include a showing that any amendment, argument, or evidence sought to be entered by filing the continuation could not have been submitted during the prosecution of the prior-filed application.
  • An application filed from an international application may not count as a “continuation” under the “two-continuations/one-RCE rule.”
  • Divisional applications (as a result of restriction requirements) do not count as “continuations” under the “two-continuations/one-RCE rule,” and each divisional application is entitled to two continuation applications and one RCE. However, CIPs of divisional applications are not permitted. Further, a continuation of a divisional application is limited to the claimed subject matter of the divisional application.
  • Non-elected claims resulting from a restriction requirement in a parent application should be canceled before a divisional application is filed, or the divisional application may count as one of the two permitted “continuation” applications.
  • Applicants who have already filed two continuations before August 21, 2007, may file “one more” continuation application in the family of applications without having to file a petition.

Obligation to Identify Commonly Owned Applications or Patents - The "Copending and Common Rule"

Applicants have a duty to report to the Patent Office the existence of each nonprovisional application or patent that has a common inventor and is commonly owned with the nonprovisional application that is being examined, and that has a filing or U.S. or foreign priority date that is within two months of any filing or priority date of the nonprovisional application that is being examined (“copending and common rule”).

  • Applicants must comply with this requirement in applications filed before November 1, 2007 by the time periods specified in the rules, or before February 1, 2008, whichever is later.
  • There will be a rebuttable presumption that the claims of nonprovisional applications having a common inventor, common ownership and common filing or priority date are patentably indistinct. The presumption can be overcome by successfully arguing that the claims are distinct. Otherwise, the total number of claims among the commonly owned applications is limited by the 5/25 rule.
  • Applicants are cautioned by the Patent Office against intentionally filing related applications outside the two-month window referenced above in an attempt to avoid the requirement to identify other applications that are material to the patentability of the application at issue. Applicants have a duty to bring other applications to the attention of the examiner that are material to patentability, regardless of their filing date.

Actions to Take

There are some actions that applicants may wish to consider with respect to pending and future applications and some actions that applicants will be required to take after November 1, 2007.

Suggested Actions to Take Before November 1, 2007 for Pending Applications

  • Since the new rules take effect on November 1, 2007, an applicant who has already filed an RCE and is under final rejection may wish to file another RCE before November 1, 2007.
  • Applicants who want to file a divisional application, but also want to file “one more” continuation application (e.g., from an allowed application), should consider filing that “one more” continuation before filing of a related divisional application. Depending upon how the Patent Office ultimately interprets the “one more” continuation rule, filing a divisional application after August 21, 2007, and prior to filing of a continuation application in its own lineage, may preclude the filing of “one more” continuation application.
  • Consider filing an SRR with respect to any application in which the claims exceed the “5/25 rule.” Filing of an SRR will not be an option if the Patent Office mails a restriction requirement with its notice that an application exceeds the “5/25 rule.”

Actions by February 1, 2008

  • In compliance with the “copending and common rule,” applicants may be required to report pending applications and patents to the Patent Office by February 1, 2008.
  • Applicants may be required to file a rebuttal to the presumption of patentable indistinctness with respect to each pending application having a common owner, a common inventor and a common filing or priority date by February 1, 2008.

Actions to Consider at Any Time

  • For pending applications, applicants may want to file a preliminary amendment to patentably distinct inventions with an SRR, since the suggested restriction requirement, if accepted by the Patent Office, may allow more applications and, thus, more claims to be prosecuted.
  • If an applicant receives a restriction requirement in a continuation application, consideration should be given to saving the most important group of claims to be prosecuted for a divisional application, since the full complement of an initial application and two continuations is no longer available in the continuation application that was restricted.
  • Applicants may consider searching an invention before filing a nonprovisional application, perhaps while one or more provisional applications are pending, to help focus the claims for possible compliance with the “5/25 rule” and, possibly, to avoid the need for filing continuation applications and an RCE.
  • Applicants should attempt to avoid final Office Actions. For example, an examiner might be contacted for an interview after the first Office Action on the merits. In response to a final Office Action, an applicant should consider filing an amendment-after-final, prior to filing an RCE.
  • Depending on the technology, applicant may consider filing a nonprovisional application from a Patent Cooperation Treaty (PCT) application that is searched by the European Patent Office (EPO). In some technologies, the EPO may be more likely to issue a unity of invention objection, which would govern restriction practice at the national phase of a U.S. nonprovisional application. Generally, a PCT filing allows an applicant to consider the results of the international search (e.g., EPO) and any more recent developments before committing to the first set of claims filed in the U.S. New developments might even be presented in a “by-pass” CIP application that does not count as one of the two continuation applications.
  • Filing a U.S. nonprovisional application and an international application under the PCT in parallel may permit the nonprovisional, directly filed application to be prosecuted and allowed before a “by-pass” continuation or national stage application is filed, which may permit additional applications and, thus, additional claims to be pursued. An allowed application will not count toward the 5/25 rule.
Overview

September 2007

By: Mary K. Murray, Ph.D.

Hamilton Brook Smith Reynolds Alert

United States Patent and Trademark Office New Patent Rules — Summary and Considerations

On August 21, 2007, the United States Patent and Trademark Office (Patent Office) published new rules regarding limitations on the number of claims in applications, and on the number of continuation and continuation-in-part (CIP) applications and requests for continued examination (RCE). The following generally summarizes the new rules and requirements and provides considerations in view of the new rules.

There are three over-arching principles found in the new rules, which we will refer to as the “5/25 rule,” the “two-continuations/one-RCE rule,” and the “copending and common rule.” Important aspects of these are bulleted below for your consideration.

Limitations on the Number of Claims - The "5/25 Rule"

Each utility application is limited to a maximum of five (5) independent claims and twenty-five (25) total claims (“5/25 rule”), unless an examination support document (ESD) is filed.

  • All applications filed after November 1, 2007, or before November 1, 2007 and that have not received a first action on the merits (FAOM), will be required to comply with the 5/25 rule.
  • Applicants will be given a two-month period following a notice from the Patent Office to comply with the 5/25 rule. For applications filed before November 1, 2007 (for which a FAOM has not been mailed by November 1, 2007), the period to reply to the notice is extendable up to four months. No extensions are permitted beyond the two-month period for applications filed after November 1, 2007.
  • Dependent claims that refer to other claims, but are of a different statutory class (e.g., method claims and product claims) will be treated as independent claims.
  • If applications are copending and are being prosecuted in parallel, the examiner may require that the total number of claims among the parallel, copending applications be reduced to five (5) independent claims and twenty-five (25) total claims (5/25) unless it is successfully argued that the claims are patentably distinct.
  • Applicants may submit a suggested restriction requirement (SRR) that could include an explanation of how groups of claims in an application are patentably distinct, which may result in the Patent Office restricting the claims into patentably distinct groups. An SRR must be submitted before the earlier of a FAOM or an examiner’s requirement for restriction. The SRR must be accompanied by an election without traverse of claims that meet the 5/25 rule. The Patent Office is under no obligation to accept an SRR.
  • ESDs should only be filed as a strategic alternative of last resort, since they will be difficult to prepare and may result in undesirable admissions in the prosecution history record.

Limitations on Number of Certain Related Applications - "Two-Continuations/One-RCE Rule"

Only two continuation or continuation-in-part (CIP) applications and one request for continued examination (RCE) can be filed for any invention (“twoc-ontinuations/one-RCE rule”) unless a petition, filed by the applicant, is granted by the Patent Office.

  • A petition to file additional continuation or CIP applicationsor RCEs must include a showing that any amendment, argument, or evidence sought to be entered by filing the continuation could not have been submitted during the prosecution of the prior-filed application.
  • An application filed from an international application may not count as a “continuation” under the “two-continuations/one-RCE rule.”
  • Divisional applications (as a result of restriction requirements) do not count as “continuations” under the “two-continuations/one-RCE rule,” and each divisional application is entitled to two continuation applications and one RCE. However, CIPs of divisional applications are not permitted. Further, a continuation of a divisional application is limited to the claimed subject matter of the divisional application.
  • Non-elected claims resulting from a restriction requirement in a parent application should be canceled before a divisional application is filed, or the divisional application may count as one of the two permitted “continuation” applications.
  • Applicants who have already filed two continuations before August 21, 2007, may file “one more” continuation application in the family of applications without having to file a petition.

Obligation to Identify Commonly Owned Applications or Patents - The "Copending and Common Rule"

Applicants have a duty to report to the Patent Office the existence of each nonprovisional application or patent that has a common inventor and is commonly owned with the nonprovisional application that is being examined, and that has a filing or U.S. or foreign priority date that is within two months of any filing or priority date of the nonprovisional application that is being examined (“copending and common rule”).

  • Applicants must comply with this requirement in applications filed before November 1, 2007 by the time periods specified in the rules, or before February 1, 2008, whichever is later.
  • There will be a rebuttable presumption that the claims of nonprovisional applications having a common inventor, common ownership and common filing or priority date are patentably indistinct. The presumption can be overcome by successfully arguing that the claims are distinct. Otherwise, the total number of claims among the commonly owned applications is limited by the 5/25 rule.
  • Applicants are cautioned by the Patent Office against intentionally filing related applications outside the two-month window referenced above in an attempt to avoid the requirement to identify other applications that are material to the patentability of the application at issue. Applicants have a duty to bring other applications to the attention of the examiner that are material to patentability, regardless of their filing date.

Actions to Take

There are some actions that applicants may wish to consider with respect to pending and future applications and some actions that applicants will be required to take after November 1, 2007.

Suggested Actions to Take Before November 1, 2007 for Pending Applications

  • Since the new rules take effect on November 1, 2007, an applicant who has already filed an RCE and is under final rejection may wish to file another RCE before November 1, 2007.
  • Applicants who want to file a divisional application, but also want to file “one more” continuation application (e.g., from an allowed application), should consider filing that “one more” continuation before filing of a related divisional application. Depending upon how the Patent Office ultimately interprets the “one more” continuation rule, filing a divisional application after August 21, 2007, and prior to filing of a continuation application in its own lineage, may preclude the filing of “one more” continuation application.
  • Consider filing an SRR with respect to any application in which the claims exceed the “5/25 rule.” Filing of an SRR will not be an option if the Patent Office mails a restriction requirement with its notice that an application exceeds the “5/25 rule.”

Actions by February 1, 2008

  • In compliance with the “copending and common rule,” applicants may be required to report pending applications and patents to the Patent Office by February 1, 2008.
  • Applicants may be required to file a rebuttal to the presumption of patentable indistinctness with respect to each pending application having a common owner, a common inventor and a common filing or priority date by February 1, 2008.

Actions to Consider at Any Time

  • For pending applications, applicants may want to file a preliminary amendment to patentably distinct inventions with an SRR, since the suggested restriction requirement, if accepted by the Patent Office, may allow more applications and, thus, more claims to be prosecuted.
  • If an applicant receives a restriction requirement in a continuation application, consideration should be given to saving the most important group of claims to be prosecuted for a divisional application, since the full complement of an initial application and two continuations is no longer available in the continuation application that was restricted.
  • Applicants may consider searching an invention before filing a nonprovisional application, perhaps while one or more provisional applications are pending, to help focus the claims for possible compliance with the “5/25 rule” and, possibly, to avoid the need for filing continuation applications and an RCE.
  • Applicants should attempt to avoid final Office Actions. For example, an examiner might be contacted for an interview after the first Office Action on the merits. In response to a final Office Action, an applicant should consider filing an amendment-after-final, prior to filing an RCE.
  • Depending on the technology, applicant may consider filing a nonprovisional application from a Patent Cooperation Treaty (PCT) application that is searched by the European Patent Office (EPO). In some technologies, the EPO may be more likely to issue a unity of invention objection, which would govern restriction practice at the national phase of a U.S. nonprovisional application. Generally, a PCT filing allows an applicant to consider the results of the international search (e.g., EPO) and any more recent developments before committing to the first set of claims filed in the U.S. New developments might even be presented in a “by-pass” CIP application that does not count as one of the two continuation applications.
  • Filing a U.S. nonprovisional application and an international application under the PCT in parallel may permit the nonprovisional, directly filed application to be prosecuted and allowed before a “by-pass” continuation or national stage application is filed, which may permit additional applications and, thus, additional claims to be pursued. An allowed application will not count toward the 5/25 rule.

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