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. Withdrawn claims do not count towards the 5/25 rule. If the examiner does not accept an SRR and does not impose an alternative restriction, the applicant has a two-month, non-extendable period to reduce the number of claims or file an ESD. If the examiner responds to the SRR with a different restriction requirement or with no restriction requirement, the applicant has a two-month non-extendable period to elect and cancel claims or file an ESD if the elected group is greater than 5/25. The filing of an ESD requires five things: a search of all claim limitations; a listing and explanation of the pertinence of references most closely related to the subject matter of each claim; an explanation of where each claim limitation is taught in the cited references and which claim limitations are not disclosed; a detailed explanation of why the claimed matter is not obvious in view of the listed references; a showing of § 112 support for each claim. The 5/25 rule will apply to all applications in which a first action on the merits has not been mailed by November 1, 2007.

An 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 common inventor. There is a rebuttable presumption that the application and the other application(s) or patent(s) contain at least one patentably indistinct claim if the other commonly owned application or patent also has a substantial overlapping disclosure with the application and the same filing or priority date. Unless rebutted, the USPTO will require the applicant to put all of the patentably indistinct claims in a single application limited by the 5/25 rule or to file a terminal disclaimer and explain why there are two or more applications having indistinct claims that justify multiple applications.

The revised rules require that any third or subsequent continuing application, defined as either a continuation application or a continuation-in-part application, and any second or subsequent RCE in an application family be filed with a petition to obtain consideration of an amendment, argument or evidence and be supported by a showing as to why the amendment, argument or evidence sought to be entered could not have been previously submitted. An applicant may file divisional applications to non-elected inventions only if the USPTO issues a restriction requirement in the prior application. In applications having at least one continuation application in its family that are pending as of August 21, 2007, "one more" continuing application may be filed as of right after November 1, 2007, providing no additional continuing applications are filed between August 21, 2007 and October 31, 2007. However, as many continuing applications as desired may be filed before November 1, 2007. Continuing applications filed on or after November 1, 2007 that do not meet the requirements of the new rules, will not receive the benefit of an earlier filing date.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.