Article by Matthew Marquardt and Karen Townsend
On August 21, 2007, the U.S. Patent and Trademark Office (USPTO) issued final rules that will significantly affect prosecution and filing strategies for U.S. patent applications. Among other changes, the new rules (i) limit the number of continuation applications and requests for continued examination (RCEs) that an applicant may file for any given subject matter; and (ii) limit the number of claims an applicant may present in any single application. The rules will go into effect on November 1, 2007, and are applicable to any non-provisional application filed (or that has entered the U.S. national stage) on or after November 1, 2007. Many of these rules will also affect applications filed prior to November 1, 2007.
Limitations on Continuation Applications and RCEs
Under the previous rules, applicants were not restricted in the number of closely related applications – "continuation applications" – and RCEs they could file for individual inventions. The new rules limit applicants to two continuation applications (including continuation-in-part applications and voluntary divisional applications) unless permission from the patent office is first obtained. In addition, applicants are allowed to file only one RCE per application family. However, for a divisional application based on non-elected claims resulting from a USPTO-initiated restriction requirement, the new rules further permit two continuation applications and one RCE to be filed, without petition, in relation to the divisional application. Exceptions to the rules will be permitted only under strictly limited circumstances and will require a petition with specific information.
The new rules allow an applicant that has filed an application (or entered the U.S. national stage) before August 21, 2007, to file one more continuation application or continuation-in-part application without a petition, even if the applicant has already filed two continuation or continuation-in-part applications. An applicant may not, however, file an RCE on or after November 1, 2007 if it has previously filed an RCE in the application family. This additional RCE would be an exception, which must be accompanied by a petition.
Disclosure of Commonly Owned Applications and Patents
The new rules also require an applicant to identify all non-provisional applications filed with the USPTO that have (i) a common owner; (ii) a common inventor; and (iii) a claimed filing or priority date that is within two months of the claimed filing or priority date of an application under examination. In addition, if applications have the same filing or priority date and contain substantial overlapping disclosure, an applicant must file either a terminal disclaimer or an explanation of how the applications (or application and patent) are patentably distinct. These requirements apply to applications pending on or after November 1, 2007.
Limitations on Number of Claims in an Application
The previous rules did not restrict the number of claims an applicant could file in an application. The new rules limit an application to a maximum of 5 independent claims and a maximum of 25 claims in total. Applicants wishing to file claims in excess of this 5/25 claim threshold must submit an "examination support document" (ESD). An ESD must include (i) a statement that a preexamination search was conducted; (ii) a list of references deemed most closely related to the subject matter of claim; (iii) an identification of all the claim limitations that are disclosed in the references; (iv) a detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references; and (v) an indication of where each claim limitation is supported by a written description in the specification (and in any earlier-filed application if the application claims the benefit of it). An applicant choosing to file an ESD must do so before a first office action is issued by the USPTO. If this deadline is not met, the application must remain at a maximum of 5 independent claims and a maximum of 25 total claims. The new rules apply to applications filed (or that have entered the national stage) on or after November 1, 2007 and to applications in which a first office action has not been mailed before November 1, 2007.
The 5/25 claim limitation will be applied independently to each member of an application family, so long as the inventions claimed in each member are patentably distinct. However, if any other commonly owned applications contain a claim that is patentably indistinct from an application under examination, the USPTO will treat the applications as a single application in determining whether more than 5 independent claims or 25 total claims are pending, and whether an EDS is required. In making this assessment, the USPTO will count not only the patentably indistinct claims but all the claims in the applications.
The new rules also allow an applicant to submit a "suggested restriction requirement" (SRR) document prior to the earlier of a formal restriction requirement and a first office action. The SRR must be accompanied by an election without traverse of one of the suggested groups of claims. The suggested group of claims must comply with the 5/25 claim limitation. Submission of an SRR does not guarantee that the examiner will accept the restriction of claims as suggested by the applicant.
Implications
The new rules present a significant change in U.S. patent procedure, and will substantially affect patent filing and prosecution strategies. Those controlling or considering the implementation of patent portfolios should consider calling us for advice on the impact of the rules in their specific circumstances.
For further information, please visit www.uspto.gov/web/offices/pac/dapp/opla/presentation/clmcontfinalrule.html.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
