In follow-up to the major rule change scheduled to go into effect on November 1, 2007, the U.S. Patent and Trademark Office (USPTO) announced on October 10, 2007, that it will significantly reduce the reporting requirement for patent applications filed before November 1, 2007. For more information on the new rules, see McDermott On the Subject, "USPTO Issues New Rules." Applicants now only need to report commonly owned pending applications or patents with the same claimed filing or priority date. Although this change does not entirely eliminate the burden for patent applicants, only the much smaller body of applications or patents with common filing or priority dates need be disclosed.
Addressing another issue created by the new rules, the USPTO also stated that filing a Demand under the Patent Cooperation Treaty (PCT) for international preliminary examination will not preclude the subsequent filing of divisional applications in response to a lack of unity of invention or a restriction requirement. The USPTO had previously indicated such divisional applications would be refused because the claims would be considered to have been previously examined. The USPTO defined the term "examined" as not including international phase examination under PCT Article 31. This issue was a significant concern for applicants seeking international patent protection through the PCT in situations where the International Searching Authority determines a PCT application lacks unity of invention, prompting an applicant to seek examination of all of the identified inventions under PCT Chapter II.
Eric Shelton, an associate in McDermott's Washington, D.C., office, also contributed to this Hot Topic.