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) without justification. However, in contrast to current practice that allows an unlimited number of continuation applications, for any third or subsequent application that is a continuation or a continuation-in-part application filed in order "to obtain consideration of an amendment, argument, or evidence," the USPTO now will require "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.
Under the new rules the USPTO also will limit the number of claims an applicant may freely include in an initial application to 25, no more than five 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 (on a claim-by-claim basis) how the invention differs from the prior art.
Under the new rules, the applicant also 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 such cases, the applicants also must file a terminal disclaimer or explain how the applications contain only patentably distinct claims. 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."
For a more comprehensive discussion of the new rules, visit http://www.mwe.com/info/news/ots0807p.htm to view a McDermott On the Subject analyzing the rule changes.