Publication
title
Highlights of the U.S. Patent and Trademark Office Rule Changes
DATE
August 28, 2007
The United States Patent and Trademark Office (USPTO) has now adopted new rules of practice which, in some instances, will significantly change the way patent applications are prepared, filed, and prosecuted in the U.S. The new rules will take effect on November 1, 2007 and will primarily affect the following areas of practice.
CONTINUATION PRACTICE
There currently are very few restrictions with respect to continuation practice, which includes continuations, continuation-in-parts (CIP), divisionals, and Requests for Continued Examination (RCE). An unlimited number of these are available to the applicant.
Under the new rules, patent applicants may file no more than two continuing applications (continuation or continuation-in-part) and a single request for continued examination (RCE) as a matter of right. Any additional continuing application or RCE will only be allowed upon the granting of a petition showing why the additional continuing application or additional RCE presents issues or evidence that could not have been submitted earlier. There remains great uncertainty as to what will constitute an acceptable showing for the USPTO.
This rule is retroactive to the extent that as of August 21, 2007, the USPTO will permit an applicant to file one more continuing application without justification, regardless of the number of continuing applications filed before the coming into effect of the new rules. Any second or subsequent RCE filed in a patent family after November 1, 2007 will have to be accompanied by a petition and showing. It should be noted that divisional applications are exempt from the office imposed limits on how many of them can be filed in an application family, as long as they are filed as a result of a restriction requirement.
These changes will affect the strategy adopted when deciding how to respond to a final rejection, and how to protect non-elected claims, as well as unclaimed embodiments. It will no longer be possible to maintain a patent application in the pending state indefinitely by simply filing a continuation, CIP, or divisional whenever a parent application is allowed.
TOTAL NUMBER OF CLAIMS EXAMINED
The USPTO currently requests additional fees when there are more than 20 total claims and 3 independent claims in a patent application. An applicant who wishes to have 100 or more claims examined can do so at his or her own cost.
The new rules will limit applications to 25 claims, including no more than 5 independent claims as a matter of right. For applications containing more than 25 claims or 5 independent claims, the applicant will have to file an Examination Support Document (ESD), including a preexamination search statement, a listing of references deemed most closely related to the claimed subject matter and a detailed explanation of how the claims are patentable over the references. The rules make this change retroactive to all applications in which a first action on the merits has not been mailed by November 1, 2007.
The filing of an ESD will create history estoppel which may adversely affect the validity of a patent. As such, this requirement may affect licensing negotiations and litigation, while having a minimal effect on patent prosecution. However, applicants who wish to avoid filing an ESD will have to be more selective in regard to the claims being filed in a single application, and perhaps consider filing multiple applications when more than one invention is being claimed. It should be noted that multiple applications containing claims that are not patentably distinct will be considered to be a single application and will therefore not be exempt from this requirement.
DECLARATION OF RELATED CASES
The existing rules require each previously filed patent application containing claims that may be considered patentably indistinct from a pending application to be identified to the Examiner.
The new rules impose further requirements of this sort, such as requiring any application having a filing or priority date within two months from the filing or priority date of another application having a common inventor or common assignee to be identified as well.
One possible consequence of this new rule is that the USPTO may request that separate patent applications be consolidated into one single application, should the claims be found to be patentably indistinct. This could cause further problems in relation to total number of claims to be examined and the more restrictive continuation practice.
CONCLUSION
We feel it is important to advise our clients of these new rules and encourage them to consider the impact of these changes.
We will take advantage of the time remaining before the new rules come into effect to adapt our practice and ensure that all requirements are met. Retroactive implications will be taken into account in our review of existing applications and possible preventive measures will be addressed.
Sébastien Clark
Alexandra Daoud
The purpose of this document is to provide information as to developments in the law. It does not contain a full analysis of the law nor does it constitute an opinion of Ogilvy Renault LLP or any member of the firm on the points of law discussed.
© Ogilvy Renault LLP 2007 - All Rights Reserved
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