Changes To U.S. Rules Of Patent Prosecution Practice

The U.S. Patent and Trademark Office (USPTO) has revised the rules of practice in patent cases relating to continuing applications and requests for continued examination (RCE) practices, as well as for the examination of claims in patent applications. Although the rules take effect on November 1, 2007, several provisions are applicable to pending applications and new applications filed prior to the effective date of November 1. The following paragraphs provide a brief, non-exhaustive summary of the impending changes.

An application may include up to five independent claims and 25 total claims (the 5/25 rule). If an application does not comply with the 5/25 rule, the applicant must submit an Examination Support Document (ESD) before a first action on the merits (FAOM) or file a Suggested Restriction Requirement (SRR) before receiving a FAOM or restriction requirement. SRRs must include an election of a group of claims which satisfies the 5/25 rule.