USPTO Patent Rule Changes
On August 21st, 2007 the United States Patent and Trademark Office (USPTO) released revised rules that substantially limit Continuation practice and will require a revised claim strategy for many pending applications. All applications pending as of November 1st, 2007, the day the new rules take effect, must comply.
The changes are driven by the large backlog of unexamined cases, caused, according to the USPTO, by abuse of the existing rules of Continuation practice, and applications having as many as several hundred claims. The time from filing to the commencement of examination has risen, in some cases, to several years. Overall, the quality of examination has deteriorated.
The new rule changes fall into three broad categories, namely limitations on continued examination filings, limitations on the number of claims and identification of related applications.
The purpose of this newsletter is to provide an outline of the extent and nature of the changes and how they might impact you. If you have further questions or concerns, or wish to discuss your particular situation, please contact us at your earliest convenience, as some changes to the rules have time-sensitive implications.
Limitations on Continued Examination Filings
A key principle behind the new rules is that, for a single invention, an applicant should be entitled to a limited but reasonable amount of an Examiner's time. Put another way, patent applicants should not be entitled to refile their applications and use every procedure available, without limit, in an attempt to improve the scope of protection. To this end, the rules limit the total number of applications in a 'patent family' that can be filed for a single invention. A patent family consists of an initial application and any continued examination filings stemming from the initial application. There are four types of continued examination filings: a Continuation application, a Continuation-In-Part (CIP) application, a Divisional application and a Request for Continued Examination (RCE). All of these represent opportunities to pursue protection for all embodiments described in an initial application.
For any one application, the examination fee essentially gives the applicant a certain allotment of the Examiner's time. Usually this is exhausted after a couple of exchanges with the Examiner. If agreement has not been reached at that stage on the scope of the claims, then another procedure must be found in order to have the Examiner give further consideration to the claims.
One technique is to file a Continuation application that, for a fee, enables an applicant to continue the examination process by refiling the same application. Continuation applications often contain revised forms of the claims in a parent application that are thought to be more acceptable to the Examiner or claim embodiments of the invention not covered by the parent application.
A CIP application, unlike a regular Continuation application, includes subject matter in addition to that in the parent application. CIP applications are particularly useful when new features and improvements have been made to the original invention after it was filed, and they may include claims to the original invention with or without the new features. However, any claims that cover the new features are subject to the filing date of the CIP.
A Divisional application is similar to a Continuation application in that it is also a subsequent application that includes no new subject matter. Unlike a Continuation application, a Divisional application includes claims to an invention that is 'distinct' from the invention claimed in the parent application; e.g., apparatus and method claims to an invention are often considered to be distinct inventions that require separate applications.
An RCE is a request that the USPTO extend the examination of an application that has received a final rejection, and can often be used instead of a Continuation application filing. It is a way to have additional claims and/or arguments considered without refiling the application.
Pre-August 21 Rules
Under the old rules an applicant was entitled to an unlimited number of continued examination filings. An applicant could also file a voluntary Divisional application at any time to claim a different feature or process than that claimed in a parent application. Therefore, if a competitor developed a new product outside the scope of the existing claims, a Divisional or Continuation application could be filed to target the competitor’s new product.
New Rules
The new rules limit the number of applications that can be filed for one invention. They restrict an applicant to a maximum of two Continuation applications or CIP applications and a single RCE in the patent family.
If a patent family includes a pending application that was on file as of August 21st, 2007, one additional Continuation or CIP above the limit will be permitted after August 21st, 2007, which may be filed after November 1st, 2007.
Further, an unlimited number of Continuation applications or an additional RCE may be filed prior to November 1st, 2007. However, for cases that have reached the limit and still require that more than one additional Continuation or CIP application be filed, it is important to have the applications on file in the USPTO before November 1st, 2007.
Permission for additional continued examination filings may be requested, but will require justification. Accordingly, an applicant will have to submit a petition to the USPTO showing that the amendment, argument or evidence could not have been submitted during the prosecution of the prior-filed application. The USPTO's intent is to reserve additional continued examination filings for cases where some unforeseeable event has intervened. We expect these petitions to be granted only in the most unusual cases. Accordingly, it is prudent to assume that no additional continued examination filings will be permitted. It may therefore be preferable that applicants provide the USPTO with substantive evidence sooner than in the past, particularly if a Continuation application or an RCE has been filed.
Under the new rules, voluntary Divisional applications may not be filed after November 1st, 2007, this being seen as an attempt to breach the new rules limiting the total number of filings in a patent family. Filing a Divisional application is limited to situations where an Examiner determines that an application contains multiple distinct inventions; that is, the Examiner has issued a "restriction requirement." Therefore, consideration should be given to determining if protection is required for any embodiments disclosed but not claimed in the patent family. If so, then Divisional applications must be filed prior to November 1st, 2007 and/or claims for such embodiments inserted into an unexamined initial application.
Note that since a Divisional application claims a distinct invention, a Divisional application starts another patent family, for which two Continuation applications and one RCE can be filed. This may change the approach to how one might respond to restriction requirements. In the past applicants would usually fight these, not wanting to incur the costs of a Divisional application, etc. Under the new rules, particularly for an important invention where a wide range of claims is justified, it may be seen as desirable not to dispute a restriction requirement and even to craft the claims to provoke one, so as to generate two or more patent families, each with their own limit on the total number of claims.
Limitations on the Number of Claims
Pre-August 21 Rules
Under the old rules there were no limits on the number of claims that an application could contain. However, large numbers of claims and/or the use of multiple-dependent claims increased the cost of filing the application.
New Rules
All pending applications that have not been examined by November 1st, 2007 will be subject to the new claim number limitation.
The new rules establish a limit of 5 independent claims and 25 claims total for each application, giving in effect a total of 15 independent claims and 75 claims for the three applications permitted in a patent family. With careful drafting, this number of claims should be adequate for most inventions. However, there will be some inventions where abiding by this limit may be difficult.
Applications may exceed this limit only if the applicant submits an "Examination Support Document" (ESD), to aid the Examiner. The requirements of an ESD are burdensome in terms of cost and in terms of the binding statements made by the applicant with regard to the invention and the possible prior art. In certain circumstances, such statements may later be used to limit the scope of a patent issuing from the application. We do not recommend submitting an ESD as these costs and risks are significant unless there is a justification for requiring a large number of claims. Accordingly, we recommend that applications which have not yet received a first office action by November 1st, 2007 be amended to comply with the new limits on the number of claims whenever possible.
In addition, for the purposes of calculating claim limits, the USPTO will aggregate the claims of any two or more co-pending applications that are commonly owned, have at least one common inventor, and at least one claim that is patentably indistinct relative to the other application. Essentially, the USPTO will proceed as if all claims are in a single application. For example, if two applications, each containing 4 independent claims and 20 total claims meet these criteria, they would each be treated as though they had 8 independent claims and 40 total claims, thus requiring submission of an ESD. Accordingly, merely filing a series of Continuation, or even independent, applications prior to November 1st, 2007 will not avoid the claim limit rules.
Identification of Related Applications
Pre-August 21 Rules
Under the old rules there were no substantial obligations to identify related applications.
New Rules
The new rules require applicants to advise the USPTO of related applications. Specifically, applications possessing filing dates or priority dates within two months of each other that are commonly owned and have at least one inventor in common must be identified in a separate paper to be filed for each application.
Applicants have until February 1st, 2008 to satisfy this identification requirement for pending applications. Further, if two pending applications share the same filing date, the same owner, at least one inventor and have substantially overlapping disclosure, a presumption is created that the two applications contain at least one patentably indistinct claim. As noted above, this means that each of the applications will be treated as containing the total number of claims present in both applications. The applicant will have to show why the claims are patentably distinct to avoid the claims of the applications being aggregated.
In addition, applications must be identified regardless of which law firms or agents may be handling them. Thus, if you have related applications being handled by different agents, you must notify your agents so that they may properly identify these applications to the USPTO. While we will review our portfolios to determine which applications should be identified, we will need the assistance of our clients to ensure that no applications are overlooked.
Further Information
The new rules are complex and this newsletter provides only a brief summary. It must not be relied upon as advice for any particular fact situation. For further information on how the new rules operate or to discuss the implications of the new rules for your particular situation please do not hesitate to contact the professional handling your application.
Please note that the USPTO has also put some details of the new rules, including an FAQ and a slide presentation, online at: http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/clmcontfinalrule.html
