Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims

In the August 21, 2007 Federal Register, the U.S. Patent and Trademark Office published Final rules titled "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications"

The changes in the claims and continuation rules were enjoined in Tafas v. Dudas, 350 F. Supp.2d 786 (E.D. Va. 2008). In the event that the injunction is lifted, applicants will only need to comply with the identification requirements of 37 CFR 1.78(f)(1) in applications having an actual filing date on or after a new effective date that would be published by the USPTO after the removal of the injunction. Likewise, applicants will only have to identify other commonly owned applications that satisfy the conditions set forth in 37 CFR 1.78(f)(1)(i) in applications that have a filing date on or after this new effective date. Similarly, the rebuttable presumption of 37 CFR 1.78(f)(s) will only apply to applications having an actual filing date on or after the effective date and will only exist with respect to an application that satisfies the conditions set forth in 37 CFR 1.78(f)(2)(i) and also has a filing date on or after this new effective date.

The changes can be found here: http://www.uspto.gov/web/offices/com/sol/notices/72fr46716.pdf

The Office revised the rules to require that any third or subsequent continuing application (continuation or continuation-in-part), and any second or subsequent request for continued application in an application family, be filed so as to obtain consideration of an amendment, argument, or evidence, and be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted.

In other words, only two continuations, and only one request for continued application (RCE) can be filed as a matter of right. This was changed from the proposed rule, in which each application was limited to one continuing application. The limitation of only one RCE, as a matter of right, in an entire application family could be a problem for applicants and practitioners in applications where examiners are not inclined to allow claims. An application family is defined as including the initial application and its continuations and CIPs. The office is understandably expecting a surge in Appeals and is proposing to amend the rules pertaining to appeals practice.

In addition, the Office revised the rules of practice to provide that an applicant must provide an "examination support document" (ESD) if the application contains more than five independent claims or more than twenty-five total claims. This was changed from the proposed rule where an application could be filed with any number of claims but the applicant was required to elect 10 representative claims for examination absent the filing of an ESD. An applicant may present up to fifteen independent claims and seventy-five total claims to a single patentably distinct invention via an initial application and two continuation or continuation-in-part applications that are filed and prosecuted serially without an examination support document or justification. 37 CFR 1.265 sets forth what an examination support document entails and is quite onerous. In determining whether an application exceeds the 5/25 claim threshold, withdrawn claims are not taken into account, unless they are reinstated or rejoined. For applications filed on or after November 1, 2007, a notice will set a two-month time period that is not extendable, if the 5/25 claim threshold is exceeded, requiring applicant to amend or file an ESD. For applications in which a First office action was not mailed before November 1, 2007, the notice will set a two-month time period that IS extendable up to a maximum of six months.

First actions in continuation applications may be made final as in current practice. Applicants may guard against first action final rejections in continuing applications by first seeking entry of the amendment, argument, or new evidence after final in the parent, under 37 CFR 1.116. Inclusion of a new double patenting rejection in a second or subsequent Office action will not preclude the Office action from being made final.

The Office also revised the rules of practice for divisional applications. Under these revisions, an applicant is permitted to file a divisional application only in response to a restriction requirement. Applicant cannot rely upon a restriction requirement to file a divisional application if applicant traverses the restriction requirement; or the restriction requirement is provisional, such as in a requirement for election of species. When a restriction requirement is withdrawn, any divisional application will not be proper, and the applicant may either delete the benefit claim or change the benefit claim to a continuation or CIP. The USPTO suggests that for an application that contains a generic claim, applicant should conclude prosecution of the generic claim in the initial application and its continuing applications, including any appeals, before filing a divisional application. Applicant also cannot rely upon the restriction requirement in these situations to avoid the requirement of an ESD. Applicant may file a suggested requirement for restriction (SRR). A suggested requirement for restriction must be accompanied by an election of an invention to no more than 5/25 claims, identifying the elected claims; and filed before the earlier of a First office action or restriction requirement. The divisional need not be filed during the pendency of the application subject to a requirement for restriction, as long as the copendency requirement of 35 U.S.C. 120 is met. In other words, an applicant may file the divisional application during the pendency of the application that was subject to a requirement for restriction or the pendency of any continuing application of such application. Divisionals may be filed in parallel or in series. Applicant may also file two continuation applications (but not CIPs) from a divisional application plus just one request for continued examination in the entire divisional application family without any justification. The divisional application family includes the divisional application as well as its continuation.

Applicants must now identify the claims in a CIP application that are supported by the prior-filed application. Any claims that are not identified will be subject to prior art based on the actual filing date of the CIP application.

The Office also revised the rules of practice with respect to multiple applications that have patentably indistinct claims and a common assignee by either requiring that all patentably indistinct claims in such applications be submitted in a single application or effectively treating the multiple applications as a single application. The applicant must submit the serial numbers of all other applications filed within two months having the same assignee and at least one inventor in common. Applicants must identify any other commonly owned application or patent that has an inventor in common with the application; and a claimed filing or priority date within two months of the claimed filing or priority date of the application. An appropriate form for identifying such commonly owned applications will be available on the USPTO web site. For commonly owned pending applications that contain at least one patentably indistinct claim, the USPTO will treat each application as having the total number of claims of all of the applications for considering whether the 5/25 claim threshold has been exceeded. For those applications that additionally have a common effective filing date and substantially overlapping disclosures, the rule creates a rebuttable presumption of obviousness-type double patenting between them.

37 CFR 1.265 provides:

§ 1.265 Examination support document.

(a) An examination support document as used in this part means a document that includes the following:

(1) A statement that a preexamination search in compliance with paragraph (b) of this section was conducted, including an identification of the field of search by United States class and subclass and the date of the search, where applicable, and, for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search;

(2) A listing of the reference or references deemed most closely related to the subject matter of each of the claims (whether in independent or dependent form) in compliance with paragraph (c) of this section;

(3) For each reference cited, an identification of all of the limitations of each of the claims (whether in independent or dependent form) that are disclosed by the reference;

(4) A detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references; and

(5) A showing of where each limitation of each of the claims (whether in independent or dependent form) finds support under the first paragraph of 35 U.S.C. 112 in the written description of the specification. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of each of the claims finds support under the first paragraph of 35 U.S.C. 112 in each such priority or benefit application in which such support exists.

(b) The preexamination search referred to in paragraph (a)(1) of this section must involve U.S. patents and patent application publications, 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 and includes such a justification with the statement required by paragraph (a)(1) of this section. The preexamination search referred to in paragraph (a)(1) of this section must be directed to the claimed invention and encompass all of the limitations of each of the claims (whether in independent or dependent form), giving the claims the broadest reasonable interpretation.

(c) The listing of references required under paragraph (a)(2) of this section as part of an examination support document must include a list identifying each of the cited references in compliance with paragraphs (c)(1) and (c)(2) of this section, a copy of each reference if required by paragraph (c)(3) of this section, and each English language translation if required by paragraph (c)(4) of this section.

(1) The list of cited references must itemize U.S. patents and U.S. patent application publications (including international applications designating the U.S.) in a section separate from the list of other references. Each page of the list of the cited references must include:

(i) The application number, if known, of the application in which the examination support document is being filed;

(ii) A column that provides a space next to each cited reference for the examiner’s initials; and

(iii) A heading that clearly indicates that the list is part of an examination support document listing of references.

(2) The list of cited references must identify each cited reference as follows:

(i) Each U.S. patent must be identified by first named patentee, patent number, and issue date.

(ii) Each U.S. patent application publication must be identified by applicant, patent application publication number, and publication date.

(iii) Each U.S. application must be identified by the applicant, application number, and filing date.

(iv) Each foreign patent or published foreign patent application must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.

(v) Each publication must be identified by publisher (e.g., name of journal), author (if any), title, relevant pages of the publication, date, and place of publication.

(3) The listing of references required under paragraph (a)(2) of this section must also be accompanied by a legible copy of each cited reference, except for references that are U.S. patents or U.S. patent application publications.

(4) If a non-English language document is being cited in the listing of references required under paragraph (a)(2) of this section as part of an examination support document, any existing English language translation of the non-English language document must also be submitted if the translation is within the possession, custody, or control of, or is readily available to any individual identified in § 1.56(c).

(d) If an information disclosure statement is filed in an application in which an examination support document is required and has been filed, the applicant must also file a supplemental examination support document addressing the reference or references in the manner required under paragraphs (a)(3) and (a)(4) of this section unless the information disclosure statement cites only references that are less closely related to the subject matter of one or more claims (whether in independent or dependent form) than the references cited in the examination support document listing of references under paragraph (a)(2) of this section.

(e) If an examination support document is required, but the examination support document or preexamination search is deemed to be insufficient, or the claims have been amended such that the examination support document no longer covers each of the claims, applicant will be notified and given a two-month time period that is not extendable under § 1.136(a) within which, to avoid abandonment of the application, the applicant must:

(1) File a corrected or supplemental examination support document in compliance with this section that covers each of the claims (whether in independent or dependent form); or

(2) Amend the application such that it contains no more than five independent claims and no more than twenty-five total claims.

(f) An examination support document, or a corrected or supplemental examination support document, is not required to comply with the requirements set forth in paragraph (a)(3) of this section if the examination support document is accompanied by a certification that any rights in the application have not been assigned, granted, conveyed, or licensed, and there is no obligation under contract or law to assign, grant, convey, or license any rights in the application, other than a security interest that has not been defaulted upon, to any entity other than:

(1) A business or other concern:

(i) Whose number of employees, including affiliates, does not exceed 500 persons; and

(ii) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a non-profit organization or a small business concern under paragraph (f)(1)(i) of this section.

(2) A not-for-profit enterprise which is independently owned and operated and is not dominant in its field; or

(3) A government of a city, county, town, township, village, school district, or special district, with a population of less than fifty thousand.

Most changes are effective on November 1, 2007 with some retroactivity. For example, rule changes to continuing application practice are applicable to applications filed on or after November 1, 2007; and applications entering the national stage on or after November 1, 2007. An applicant may file one more continuing application for applications filed before August 21, 2007 without a petition and showing, even if it exceeds the limits under the new rules. An applicant may file a second or subsequent RCE in an application family on or after November 1, 2007, with a petition and showing. The rule changes to examination of claims practice (5 independent, 25 total without an ESD) are applicable to applications filed on or after November 1, 2007; applications entering the national stage on or after November 1, 2007; and applications in which a First office action was not mailed before November 1, 2007. For example, applicant is required to file an ESD in an application that contains more than 5 independent or 25 total claims if a First office action was not mailed before November 1, 2007. An ESD will not be required in a reissue application if the reissue application does not seek to change the claims in the patent being reissued. A change in the claims in the patent being reissued is sought either by an amendment to a claim or addition of a claim; or an amendment to the specification which changes a claim. The rule changes relating to multiple applications containing patentably indistinct claims are applicable to applications pending on or after November 1, 2007. For applications filed before November 1, 2007, applicant much comply with the requirements within the time periods set forth in 37 C.F.R. 1.78(f)(1) and (f)(2); or by February 1, 2008, whichever is later.