On August 21, 2007, the U. S. Patent and Trademark Office (USPTO) published new rules that, in the words of the USPTO, are designed to "allow the agency to continue to make the patent examining process more effective and efficient."
Under the new rules, an application or chain of continuing applications may include two continuing applications (continuation or continuation-in-part applications) and a single request for continued examination (RCE) in any one of these three applications (the initial or two continuing applications), without justification. However, the USPTO is revising the rules of practice "to require that any third or subsequent continuing application that is a continuation application or a continuation-in-part application, and any second or subsequent request for continued examination in an application family, be filed to obtain consideration of an amendment, argument, or evidence, be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted." In other words, applicants seeking additional continuations will be required to explain why the filing is necessary. Current practice allows applicants to file an unlimited number of continuations. The applicant may file divisional applications to the non-elected invention(s) only if the USPTO issues a restriction requirement in the prior application.
Under the new rules, the USPTO will also limit the number of claims an applicant may include in an initial application to 25, no more than five of those independent. If any application includes more than 25 claims, the applicant will be required to include a prior-art search and a filing that explains how their invention differs from the prior art.
Also under the new rules, the applicant must identify other commonly owned pending applications or patents that have a claimed filing or priority date within two months of the claimed filing or priority date of the application and name at least one inventor in common with the application. In addition, the applicant must also file a terminal disclaimer or explain how the applications (or application and patent) contain only patentably distinct claims if the applications also have the same claimed filing or priority date and contain substantial overlapping disclosure. The USPTO may require the applicant to put all of the patentably indistinct claims in a single application unless there is good reason for multiple copending applications having patentably indistinct claims.
In approving the new rules, the USPTO noted that "placing conditional boundaries on a previously unbounded process provides for more certainty and clarity in the patent process. The result is that application quality will be improved and piecemeal or protracted examination will be avoided, enhancing the quality and timeliness of both the examination process and issued patents."
The new rules are scheduled to go into effect November 1, 2007. According to the USPTO, the new rules are the result of the ever increasing number of continuation filings. In 2006, almost 30 percent of applications were continuation requests, up from 27 percent in 2005 and 25 percent in 2004.
The new rules were published in the Federal Register on August 21, 2007 and can be found on-line at the PTO website (www.USPTO.gov). An analysis of the rules changes will be presented in the September edition of the IP Update.
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