United States: United States Patent Rule Changes Effective - November 1, 2007

Substantial changes in the rules governing practice before the United States Patent and Trademark Office (PTO) will come into effect on November 1, 2007.¹ On October 10, 2007 the Director of the PTO issued a notice making a number of changes to the new rules.

The primary impetus for the rule changes is that the PTO is seeking to reduce examiner work-loads. Whether these changes will succeed remains to be seen.

Two law suits have been filed challenging either the content or the means of adoption of the rules and seeking a delay in their implementation. The first was filed by Triantafyllas Tafas on August 22 and the second by SmithKline Beecham Corp. on October 9. Both suits were filed in district court for the Eastern District of Virginia.

The new rules have two main themes:

1. To limit the number of continuations or continuations in part (c-i-p) per basic application to two and the number of requests for continued examination (RCE) to one, unless there is good reason for additional applications or RCEs.
2. Subject to the possibility of filing a continuation or RCE, discussed below, to limit the number of claims the examiner must examine to five independent claims and twenty-five claims in total (the 5/25 Rule) unless the applicant assists in the examination.

The PTO has stated that the first change would have affected 3% of applications filed in fiscal year 2006 and the second 8%.

Additionally, the rules impose:

1. restrictions on maintaining patentably-indistinct claims in different applications and
2. a requirement in an application designated as being a continuation-in-part (c-i-p) to identify claims that are entitled to priority from an earlier application.

A further change tied to the rule change with respect to the permitted number of continuations or continuations-in-part requires that henceforth the term "divisional" will apply only to applications filed in response to a restriction requirement made by an examiner. "Voluntary" divisionals will be called and treated as continuations and the new rules will apply to them.²

4. The Basic Rule for Continuing Applications

Subject to specific provisions relating to divisional applications filed in response to a restriction requirement, discussed below, for each original application the applicant will be allowed two continuation or continuation-in-part applications and one request for continued examination as of right. Any further continuation, c-i-p or RCE will be permitted only if the applicant files a petition, files an amendment, argument or evidence (an information disclosure statement [IDS] will not be enough by itself) and makes a showing that the amendment, argument or evidence could not have been filed during prosecution of the earlier application or prior to close of its prosecution.³

The two continuations or c-i-ps which are permitted without a showing can be filed either one after the other ("in series", i.e. as a child and grandchild of the original application) or both may be filed "in parallel", that is both may depend directly on the original application.

The Rules contain no further information as to what is required of a showing beyond the need to show, in the case of a continuation or c-i-p, that the material being submitted "could not have been submitted during the prosecution of the prior filed application" or, in the case of an RCE, that the material being submitted "could not have been submitted prior to the close of prosecution in the application". However, the PTO has indicated that in considering whether a showing has been made, it will consider whether the situation is one that would be better dealt with by an appeal and the total number of applications that have been filed on substantially identical inventions in addition to considering whether the argument, etc. was submitted with due diligence.

Any petition and showing must be submitted within four months of the actual filing date of the continuing application to which it relates or, where the continuing application is itself a PCT national phase entry claiming priority from an earlier US non-provisional application, four months from national phase entry.⁴

A divisional filed in response to a restriction requirement is treated differently from a continuation or a voluntary divisional, which, as noted above, is now considered to be a continuation application.

A change in 37 CFR 1.142 gives the examiner discretion as to whether to require restriction or division if two or more independent and distinct inventions are claimed in a single application, rather than requiring restriction as previously.

Prior to the earlier of either a first action on the merits or a restriction or lack of unity requirement by the examiner, applicants will be able to submit a suggestion on how a restriction requirement should be made. The examiner is not bound by such suggestion.⁵ Any suggestion made by the applicant must also include an election of claims complying with the 5/25 rule for prosecution in the current application.

If the examiner does not agree with a suggested restriction requirement or sets out a different restriction requirement and the number of claims remaining or included in one of the examiner’s groups exceeds what is permitted by the 5/25 rule, the applicant will be advised that it must file an examination support document or reduce the number of claims to comply with the 5/25 rule.

It will continue to be possible to file a divisional claiming priority from an earlier divisional application.

Each divisional will be entitled to have two continuations based on it without the need for a petition and showing.⁶ However, it will not be entitled to have any continuation in part based on it. A request for continued examination in a divisional application will be permitted without a petition and showing only if no such RCE has been filed on an earlier application in the "divisional family".⁷

In any application described as being a continuation-in-part, the applicant will be required to identify those claims "for which the subject matter is disclosed in the manner provided by the first paragraph of 35 USC 112 in the prior-filed application".⁸

However, the PTO will not investigate the accuracy of any such claim to an earlier date unless intervening prior art becomes an issue.

It is important to note that the Rule applying to two continuations and one RCE without making a showing applies to a patent application family, excluding any divisionals for which different rules apply. Thus if one files two separate continuations of the same original application, the only option left without making a showing if either of these runs into difficulties in prosecution is to file an RCE on one of them. Any further filing will require submission of an amendment, argument or evidence and a showing as to why such submission could not have been made earlier.

Applications claiming to be continuations that do not meet the new requirements will be denied the right to maintain a reference to, and hence priority from, any prior filed application, the priority of which they might otherwise be entitled to. As set out in Rule 37 CFR 1.78(d)(1)(i) – (vi), priority from a prior application can now be maintained in the following situations only:

1. the application in question is a continuation or continuation-in-part and claims priority from no more than two prior-filed non-provisional applications, neither of which has formed the basis of more than one other continuation or continuation-in part;
2. the application in question is a divisional application which contains only claims directed to the invention or inventions that were identified in the restriction requirement giving rise to the divisional and were not examined in the prior application⁹;
3. the application is the first or second continuation of a divisional application, claims only an invention disclosed and claimed in that divisional and priority from that divisional is claimed in no more than one other continuation application;
4. the application is a continuation or c-i-p claiming priority from a PCT application designating the United States for which normal national phase entry into the United States has been by-passed by filing the U.S. application as a continuation or c-i-p of the PCT application, provided that priority from that PCT application is claimed in no more than two other non-divisional or non-divisional-based U.S. applications;
5. the application is a continuation or continuation in part application (including such an application claiming priority from a PCT application) that became abandoned by failure to comply with a notice of missing parts, provided that the application itself claims priority from no other application and the application from which priority is claimed is one whose priority is claimed in no more than two other non-divisional or non-divisional-based U.S. applications; and
6. the application is a continuation, continuation-in-part or divisional that is filed to obtain consideration of an amendment, argument or evidence that could not have been submitted during prosecution of the prior filed application and the application is accompanied by a petition and showing that the amendment, argument or evidence could not have been submitted in the prior application.

5. Requests For Continued Examination

Under 37 CFR 1.114, a request for continued examination will be permitted without a petition and showing as to why an argument, amendment or evidence now being submitted could not have been submitted previously only if¹⁰:

1. no previous RCE has been filed in the application, in any application from which it claims priority or in any application claiming priority from an application from which it claims priority.
2. the application is a divisional and no previous RCE has been filed in that divisional or a continuation of that divisional.
3. the application is a continuation of a divisional and no prior RCE has been filed in the continuation, the divisional from which it claims priority or any continuation claiming priority from that divisional.

Any RCE for which an argument, amendment or evidence could not have been submitted previously must be accompanied by a petition and showing.

For all applications for which there has not been a first official action on the merits prior to November 1, 2007, the norm aimed at is to have no more than five independent claims and twenty-five claims in all for a single invention. If more claims are needed it will be necessary to file an examination support document (ESD) before the first action on the merits.¹¹ Otherwise, no application may contain or be amended to contain more than twenty-five claims in all or five independent claims.¹² As discussed in Section 7 of this paper, all claims for a given invention should be included in a single application unless there is a good reason for doing otherwise. In cases where such reasons exist, however, the 5/25 rule will apply to all applications covering the same invention. Use of continuations will enable the applicant to present more than a total of five independent and twenty-five total claims during the prosecution of a family of applications. However, subject to the provisions on claims that have been withdrawn in response to an election of species requirement noted below, it will not be possible to have more than five independent claims and twenty-five total claims pending for the same invention at any one time unless an ESD is filed

A claim having multiple dependencies will be counted as a separate claim for each of the claims from which it depends.¹³ Claims in different categories will be treated as independent even if they contain a cross-reference to another claim.¹⁴

If an application as filed contains claims to more than one invention, the applicant may file a suggested restriction requirement before the examiner issues a restriction requirement or first action on the merits and this may be effective to reduce the number of claims permitted without an ESD. If the examiner does not accept this suggestion or no suggestion is made but the number of claims exceeds what is permitted under the 5/25 rule, the applicant will be required to either file an ESD or limit the number of claims to comply with the 5/25 rule.¹⁵ If this is done the applicant will be entitled to a refund of any excess claim fees paid with respect to claims being deleted, as long as a request for a refund is made within two months of the canceling of the claims.¹⁶

Withdrawn claims do not count for purposes of the 5/25 rule unless they are subject to rejoinder (for example, if withdrawn in response to an election of species requirement).¹⁷

For applications on which there has not been a first official action on the merits by November 1, 2007, and which do not already comply with the 5/25 Rule, the PTO will issue a notice requiring compliance. This will set a two month term for compliance. For applications filed before November 1, 2007, this term will be extendible and the applicant will be able to file a suggested restriction requirement as an alternative to complying with the 5/25 Rule or filing an Examination Support Document.

For applications filed on or after November 1, 2007, automatic extensions will not apply and the term will be extendible only by way of a petition showing sufficient cause as to why more time is needed. The only possible responses will be limitation of the claims to comply with the 5/25 rule or filing an examination support document.

Examination support documents must include:¹⁸

A statement that a pre-examination search of the specified scope, as discussed below, has been carried out;

A listing of references most closely related to the subject matter of each claim;

For each reference an identification of the limitations of each claim disclosed by the reference;

A detailed explanation of why each independent claim is patentable over the art; and

A showing as to where each limitation of each claim finds support under 35 USC 112 in the written description of the specification and, if priority is claimed from earlier applications, in the specifications of such applications.

Certain small entities are excused from having to include an identification of the limitations of each claim disclosed by the reference.¹⁹ They are, however, still required to point out how each independent claim is patentable over the cited references.

To qualify for this excusal, the applicant must certify that there has been no transfer of rights or obligation to transfer rights to a business or other concern having more than 500 employees (including employees of affiliates), or to one which is itself obligated to transfer rights to a "large" entity or to a not-for-profit enterprise that is dominant in its field and is not independently owned and operated, or to a governmental unit having a population of greater than 50,000.

The search must include US patents and published applications, foreign patent documents and non-patent literature "unless the applicant justifies with reasonable certainty that no references more pertinent than those already identified are likely to be found in the eliminated source."²⁰

Legible copies of all non-US patent literature referred to in the search must be supplied with the ESD as must any existing English translation of any foreign-language document listed that is "within the possession, custody or control of or is readily available to" any individual to whom a duty of candor applies under 37 CFR 1.56.²¹

Filings of ESD’s are likely to be rare. To file one the applicant effectively has to make admissions against its interest in identifying limitations in its claims that are disclosed in a reference. Very often arguments on patentability turn on what is the true significance of such a disclosure. Under the new rules the applicant will be forced to admit that something is at least arguably relevant, which could have adverse repercussions if the patent is litigated, or to run the risk of being accused of inequitable conduct if it fails to identify the feature in question.

The 5/25 rule will apply to patentably indistinct claims irrespective of the number of separate applications within which they are contained.

According to PTO spokesmen the test for whether one claim is patentably indistinct from another is the same as that at present applied for considering obviousness-type double patenting.

If patentably indistinct claims are present in more than one application having common ownership, the PTO will treat them as if present in the same application.²²

As originally published the rules provided that in order to identify applications which may contain patentably indistinct claims, applicants must identify other applications having common ownership, at least one common inventor and filed within two months of each other.²³ By the notice of October 10, application of this rule was waived for applications filed prior to November 1, 2007, except when the filing dates or priority dates of the applications was the same. For applications filed on or after November 1, the October 10 notice confined application of this rule to situations in which the applications had the same filing or priority dates or where the application in question had an actual filing date or claimed priority from an application that was on or after November 1, 2007.

Any such identification must be submitted to the PTO by the latest of four months from the filing date of the application in question or its national phase entry if arising out of PCT or two months from the issue of the filing receipt of the other application being referred to.²⁴

Applications will be regarded as having been filed within two months of each other if any relevant filing dates are within two months of each other, including provisional filing dates, international filing dates, filing dates of a parent U.S. application, etc.

If the effective filing dates of two such applications are the same and there is substantial overlapping disclosure between them, there will be a rebuttable presumption that they contain at least one patentably indistinct claim.²⁵ If the presumption cannot be rebutted, a terminal disclaimer may be filed, but the applicant will have to provide an explanation as to why there are two or more pending non-provisional applications having an inventor in common and common ownership containing patentably indistinct claims.²⁶ If the applicant fails to provide a good and sufficient reason, the PTO may require elimination of patentably indistinct claims from all but one of the applications.²⁷ The onus is on the applicant to determine whether such a rebuttable presumption exists and to take appropriate action within the later of four months from filing the application or national phase entry for an application coming out of PCT, the date of first presentation of the patentably indistinct claim or two months from the initial filing receipt in the "other" application involved.²⁸

The PTO will maintain its policy of making a first action on a continuation application final if the continuation is filed without seeking entry of an amendment, evidence or argument submitted after final rejection of the parent application.

Second office actions will normally be final except when a new ground of rejection is raised and that ground of rejection is not the result of:

Amendment of the claims;

Filing an IDS with a fee after the first office action;

A double patenting rejection;

Identification of claim dates in a c-i-p; or

Showing that a claim element is a "means plus function" claim element.

For applications filed before August 21, 2007 one additional continuation or c-i-p will be permitted after November 1 without a showing unless another such application has already been filed after August 21.²⁹ The notice of October 10 makes it clear that the filing of this "one more" continuation application does not affect the applicant’s right to file further applications that comply with paragraphs (ii), (iii) of (vi) set out in 37 CFR 1.78(d)(1) (i.e. Section 4.4 points (ii), (iii) or (vi) of this note.)

The new rules on RCE’s apply to any RCE filed on or after November 1, even if any prior RCE was filed in an ancestor application.³⁰

The 5/25 rule and the need for an examination support document if there are excess claims will apply to all applications that have not received a first action on the merits prior to November 1.

For applications filed before November 1 with respect to claims fees paid on or after December 8, 2004, where claims are deleted to comply with the 5/25 rule, requests for refunds of claim fees paid for claims that are now being deleted must be made within 2 months of canceling claims.

As originally published, the new rules on disclosing the dates of claims in a c-i-p, advising on copending applications were to apply to applications pending on November 1.³¹ However, by a notice dated October 10, 2007, the PTO announced that it would waive the requirement for c-i-ps filed prior to November 1 where a first official action on the merits had issued by that date and would delay implementation of the requirement for other c-i-ps filed before November 1 so that the new rule had to be complied with by February 1, 2008.

The new rules on filing suggested restriction requirements come into effect on November 1, 2007 for applications on which there has been no first action on the merits by that date.³²

As originally published, the new rules provided that for applications filed before November 1, 2007 applicants must by Feb 1, 2008 file a statement listing copending applications having common applicant and common inventor filed within two months of each other.³³ The notice of October 10, 2007, however, amended this requirement to waive it except for applications having the same filing date or the same priority date.

There are a number of steps that we believe should be taken to prepare for this rule change. These include:

1. identifying applications where claims have been limited to particular aspects of the invention as originally filed, for example to try to expedite prosecution of commercially important claims with the intention of filing divisional applications later. Since such intended "divisional" applications may be classified as "continuations" under the new rules, they should be filed before November 1;
2. identifying applications currently under final rejection where one may be able to file a request for continued examination now but will be unable to do so after November 1 because a request for continued examination has already been filed on a predecessor application;
3. where possible making sure that any new applications being filed in the United States comply with the new 5/25 rule so as to avoid the need to amend later;
4. identifying applications where it will be necessary to file by February 1, 2008 a list of applications having common ownership and inventorship which were filed within two months of each other;
5. identifying co-pending applications already on file that will be rebuttably presumed to contain patentably indistinct claims;
6. checking on c-i-ps already on file where it will be necessary to amend the application to provide information as to the dates to which each claim is entitled;
7. identifying applications that have already used up part or all of their quota of continuations and RCE’s to see whether any additional continuations are desirable before the rule change comes into effect; and
8. identifying applications where one may wish to file a suggested restriction requirement.

While we will endeavor to assist in these tasks, you will appreciate that we cannot guarantee that we will be able to identify every application to which any of the above criteria apply and we seek your advice as to any applications that you have entrusted to us where special steps such as those noted above may be applicable.

If you have any questions, please do not hesitate to contact us.

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.