Highlights of the USPTO Town Hall Meeting in Chicago
EFS-Web Beta Test
- Staff may transmit filing on behalf of patent practitioners
- Rapid access to PAIR to view submission and status and to confirm documents safely and accurately received
- EFS Web receipt time or filing date is based on USPTO East Coast time as defined by Statute.
- An OG notice will soon be published revising the requirements and procedures for petitions to make special under the accelerated examination program, and 37 CFR 1.102(c)(2), set forth in MPEP 708.02.
Proposed Rulemaking on Continuing Applications
- No change for the vast majority of applications
- One continuation (broadly defined) always available as of right, whether in the form of
continuation application, or a request for continued examination (RCE); but with special rules for divisionalsand continuations-in-part (CIPs); Additional continuations available if applicant can show that the amendment, argument or evidence could not have been earlier submitted
- Only involuntary divisionals to be permitted; Divisional application may claim the benefit of only a single prior-filed nonprovisional application.
- A continuation of the CIP is permitted but all claims only entitled to benefit of filing date of CIP
- Identify any other application or patent having a common inventor, common assignee, or so treated nder CREATE Act; and filed within two months (taking into account priority/benefit claims)
Proposed Rulemaking on Double Patenting
- A rebuttablepresumption of double-patenting is established for identified applications/patents if have same effective filing date or substantially overlapping disclosure
- If USPTO finds claims patentably indistinct, it may merge or require cancellation of indistinct claims unless good and sufficient reason shown
Proposed Rulemaking on Representative Claims
- Normal Pattern: Applicant to identify 10 representative claims for initial examination which must include allindependent claims; If independent claims fewer than 10, designate additional dependent claims until total of 10 reached
- Full initial examination of all designated representative claims
- No first action final
- If representative claim is allowed, all its non-designated dependent claims will be examined for compliance with 35 USC 101 and 112
- If representative claim is rejected, applicant may, traverse rejection, amend the claim, including adding subject matter from a non-designated dependent claim; or submit substitute representative claim
- Beyond ten claims applicant must provide search report of all representative claims, identify all limitations of representative claims that are disclosed by cited prior art references, and explain how all representative claims are patentable over the cited references