August 21, 2007 - The United States Patent and Trademark Office (USPTO) published in the Federal Register new rules that are designed to allow the agency to make its internal patent examination process more efficient. The new rules have been modified, relative to the rules that were originally proposed early last year, in response to the extensive comments the USPTO received from the public.
Continuation and RCE Practice: Under the new rules, applicants may file two new continuing applications (including continuation-in-part applications) and one request for continued examination (RCE) as a matter of right. For applications pending as of August 21, 2007, the new rules allow for "one more" additional continuation to be filed without a petition and showing. Beyond the two continuations and a single RCE, the Applicant may file additional RCE's or continuation applications, but such filings must be accompanied by a showing as to why the amendment, argument or evidence to be introduced by the filing could not have been submitted during the prosecution of the prior-filed application or prior to the close of prosecution. The new rules also allow for a special form of "streamlined" continuation application to expedite handling of a continuation application on the Examiner's docket under certain circumstances.
Limits on Number of Claims: In addition to limiting the number of continuations and RCE requests, the new rules limit the number of claims that will be examined. Applications may contain up to 25 claims, with no more than five independent claims, without any additional effort being made on the part of the Applicant. Beyond these thresholds, the new rules require Applicants to either cancel enough claims to meet the 5/25 limitation, or provide an examination support document (ESD) to assist the examination process. This ESD includes a statement of a preexamination search, identification of what the Applicant deems the most closely related art and where the art teaches the claim limitations, a detailed explanation of patentability and a showing of support in the specification under 35 U.S.C. 112, first paragraph. The burden and estoppels created by the ESD should deter Applicants from exceeding the baseline claim allowances in most, if not all, situations. The requirements of the ESD are relaxed to some degree for small entity Applicants.
These new rules also impose an additional administrative burden on Applicants that may file applications with claims having similar or related subject matter. Under the new rules, the limit on the number of claims will also take into account the claims of any commonly owned applications having claims that are deemed "patentably indistinct", regardless of relative filing date. A rebuttable presumption of "patentably indistinct" subject matter will arise when there are common inventors in two applications; a common claimed priority or filing date; and substantial overlapping disclosure.
Along these lines, Applicants will be required to identify to the USPTO any commonly owned application or issued patent that has an inventor in common with the subject application, and which claims a filing or priority date within two months of the filing or priority date of the subject application.
The limitations on the number of claims being examined will also effectively apply to pending applications in which the First Office Action on the merits does not issue until after November 1, 2007. In order to maintain all existing claims in excess of 5 independent claims or 25 claims total, Applicant must produce an ESD as outlined above. As an alternative, Applicant may cancel claims to comply with the claim limits of the new rules. The USPTO will refund the claims fees paid, for any fees paid pursuant to the fee schedule effective December 8, 2004.
Divisional Practice: As a change from prior proposed rules, divisional applications which are filed in reply to an Examiner's requirement to restrict the claims of an application to a single statutory class of invention or a single species within one application will not need to be pending concurrently with the original parent application. Rather, Applicants will maintain the flexibility to file the divisional applications in serial or parallel form. Each divisional, in turn, may have two continuations and an RCE filed without an extra showing on the part of the Applicant.
For applications that appear to encompass multiple inventions, Applicant may file a "suggested requirement for restriction" (SRR). This new procedural tool may be adopted by an Applicant to attempt to place the flexibility of the divisional application practice into effect. The suggested requirement for restriction may also be filed to allow the Applicant to seek protection on more than 25 claims that may be originally filed in a single application. An Applicant pursuing an SRR must file the request prior to the first Office Action on the merits or before the Examiner issues a Restriction Requirement. The Applicant's Request for SRR must also be accompanied by an election and designation of no more than 5 independent claims and 25 total claims drawn to the elected invention.
The limitation in the number of claims presented for examination will require Applicants to be more selective in the combination of elements in the claims that are presented. The loss of flexibility in unlimited RCE and continuation practice may be perceived as an additional burden to Applicants. However, Applicants can still leverage the requirements of longstanding Patent Office Rules and the MPEP to mitigate issuances of Final Office Actions that invoke the restrictions of several of the new rules in the first instance.
The new rules will take effect on November 1, 2007.
Sughrue Mion partner Susan Perng Pan will co-present a webinar program to provide a comprehensive overview of the effects of the new rules and how to navigate them in "AIPLA Rapid Response Program: New USPTO Rule Packages on Claim Examination and Continuation Applications" on Monday, September 10, 2007.