On August 21, 2007, the U. S. Patent and Trademark Office (the 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."
Limitations on Continuing Applications and Request for Continued Examinations (RCEs)
USPTO regulations 37 C.F.R. §§ 1.78 and 1.114 have been amended to limit applicants to two continuing applications (continuation or continuation-in-part applications) and to a single RCE in any application family, without any justification. An application family includes the originally filed application, continuations, continuations-in-part and RCEs. For any additional continuing applications or RCEs, applicants must file a petition, a petition fee of $400 and a showing as to why the amendment, argument or evidence sought to be entered could not have been previously submitted. Although the USPTO has yet to provide guidelines regarding what would constitute an acceptable showing, petitioning for an additional RCE or continuing application merely to file an Information Disclosure Statement (IDS) would not constitute a sufficient showing. If a continuation-in-part is filed, any claims that should receive the benefit of the earlier application must be identified.
The USPTO also has proposed new rules for filing an IDS after first action, after close of prosecution and after payment of the issue fee. The proposed rules would allow the filing of an IDS after close of prosecution if accompanied by a certification under 37 C.F.R. § 1.97(e)(1) or (2) and with a detailed explanation of the cited non-cumulative references, and a patentability justification explaining why the claims are allowable over the cited references or an amendment to overcome the cited reference, and a detailed explanation of how the amended claim is allowable over the cited references. After payment of the issue fee, a petition to withdraw from issue is further required to have an IDS considered.
Although the new rules take effect on November 1, 2007, the USPTO states in its discussion of specific rules in the Federal Register that in applications that already have two continuing applications and are pending as of August 21, 2007, one more continuing application may be filed as of right, providing no additional continuing applications are filed prior to the effective date of November 1, 2007. This "provision” appears to be USPTO policy and is not contained in the new rules to be codified. As of November 1, 2007, any application that already has had at least one RCE will require a petition and an acceptable showing to file an additional RCE. Under the new rules, a distinction between divisional applications, which are a type of continuing application, and continuations will be enforced. Divisional applications may be filed if they include only claims to unexamined inventions that were non-elected pursuant to a restriction requirement in the parent application. As long as each divisional claims an invention that was unexamined because of a restriction, there is no limit to the number of divisional applications that can be filed. Each divisional application starts a new family of patent applications. Thus, two continuation applications and one RCE can subsequently be filed claiming priority on the divisional application. However, continuation-in-part applications cannot claim priority to a divisional application. Divisional applications cannot be filed if the restriction was traversed or if there has been a request for rejoinder, unless the withdrawn claims are canceled. Divisional applications should not be filed for non-elected species until the prosecution of the generic claim in the parent application is concluded.
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. Applicants can speed up the examination process of a continuing application if streamlined examination is requested. In streamlined examination, the parent application must be under final rejection, appeal or abandoned upon filing the continuation application. The streamlined application is placed on the Examiner’s regular amended docket (an office action should be mailed within two months of docketing).
Limits on the Number of Claims
Under the new rules, the USPTO has imposed limits on the number of claims in a patent application. An application may include up to 25 claims, no more than five independent (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. Any SRR 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 applicant’s SRR and does not impose an alternate restriction, 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, 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 5/25 rule applies to all applications not receiving a FAOM mailed before November 1, 2007. However, if the claims exceed 5/25 and the application was filed prior to November 1, 2007, and has not received a FAOM, the applicant can extend the period for reply up to six months. In determining the number of claims, dependent claims that do not include all the limitations of the claims on which they depend are considered independent claims, as are dependent claims directed to a different statutory class of invention. Multiple dependent claims are counted as the number of claims to which the multiple dependent claims makes a direct reference. Attempting to circumvent the 5/25 rule by claiming multiple embodiments of an invention in a single claim will become more difficult if the USPTO’s proposed new rules limiting Markush groups is adopted.
The USPTO has proposed amending 37 C.F.R § 1.75 to require that no alternative within a claim is defined as a set of further alternatives within the claim, and each alternative within a list of alternatives must be substitutable one for another. New section 1.140 would require that two or more independent inventions may not be claimed in a single claim, and further requires that all species encompassed by a single claim meet at least one of the following two conditions: the species share a substantial feature essential for a common utility, or the species are prima facie obvious over each other.
Before filing an ESD, a search of all the claim limitations must be performed. The search must include U.S. and foreign patents and non-patent literature. The search strategy (class/subclass and databases) must be identified in the ESD. The ESD also must include a listing of references most closely related to the subject matter of each claim, and a legible copy of an English language version of the reference, if available. The ESD also must include an explanation of the pertinence of the most closely related references, including where each claim limitation is taught and which limitations are not disclosed. Furthermore, a detailed explanation of why the claimed matter is not obvious in view of the listed references must be included. The ESD is required to show § 112 support for each claim. If the claims are amended such that the scope is no longer covered by a previously filed ESD, or if an IDS is filed that includes a more closely related reference, a supplemental ESD must be filed. Certified small entities are exempt from some of the ESD requirements.
Patentably Indistinct Claims
The 5/25 rule applies to all the claims in copending applications that contain at least one patentably indistinct claim and have not received a FAOM before November 1, 2007. Thus, if at least one claim in a first application and at least one claim in a second application are patentably indistinct, all the claims in both applications are summed to determine if the combined applications exceed the 5/25 rule.
Applicants must identify all commonly owned applications and patents having at least one common inventor that were filed (or claim a priority date) within two months of a filing (or claimed priority date). Applications meeting these criteria filed before November 1, 2007, must be identified by February 1, 2008. There is a rebuttable presumption that commonly owned applications are patentably indistinct if they share a common inventor, a common filing or priority date, and "substantially overlapping disclosure." "Substantially overlapping disclosure" is disclosure in one application that will support a claim in the other application. Claims that are allowed, under appeal, abandoned or subject to a civil action under 35 U.S.C. §§ 145 or 146 are not considered in the determination of whether claims are patentably indistinct. If the presumption (of indistinctness) is not rebutted, applicants must file a terminal disclaimer and explain why multiple copending applications containing patentably indistinct claims were filed. In the absence of a good reason, the USPTO can require cancellation of the patentably indistinct claims in all but one application. The rebuttal or terminal disclaimer must be filed within the later of four months of the application filing date, the date on which the patentably indistinct claim is presented or two months from the mailing date of the initial filing receipt in the other application.
Excess claims fees can be refunded if the excess claims are canceled at least one day before the mailing of a FAOM, and if the refund request is made within two months of canceling the excess claims.
There will be a loss of patent term adjustment if an ESD is not timely submitted, or if the claims are amended to exceed 5/25 and an ESD was not filed prior to a FAOM.
With the limit on continuing applications, RCEs, claims and the probability of disagreements on the claim count and patentably indistinct claims, the USPTO expects (and encourages) greater use of the petition and appeal processes. The USPTO noted that the Board of Appeals has successfully eliminated its backlog and now can handle a greater number of appeals. The USPTO, however, recently has proposed new rules for appeals that include additional requirements that will increase the cost of preparing appeal briefs. In addition, the USPTO plans to hire more petitions examiners to handle the expected increase in the number of petitions.
The new rules were published in the Federal Register on August 21, 2007, and can be found online at the USPTO website, www.uspto.gov.