Highlights of the New USPTO Rules on Claims, Continuing and Related Applications, and Final Action Practice
The applicant must submit an examination support document (ESD) if an application
contains more than five independent claims or more than twenty-five total claims (5/25 claim threshold), counting all of the claims in any other copending application having a patentably indistinct claim. A claim that refers to a claim of a different statutory class of invention will also be treated as an independent claim. For example, a method of using the composition of claim 1 comprising…. In the following example, each claim will be considered to be 3 claims: Claim 4. A device according to claim 1, 2, or 3, further comprisin . . . Claim 5. A device according to claim 4, further comprising. . . .
For applications that exceed five/twenty-five claim threshold because they contain claims to more than one invention, the applicant has the option of submitting a suggested restriction requirement (SRR) and election of an invention to which there are no more than five independent claims or twenty-five total claims.
If an application exceeds the five/twenty-five claim threshold and does not contain a SRR or ESD, the USPTO will issue a notice giving the applicant time to provide an ESD or amend the application to be within the five/twenty-five claim threshold.
An ESD will not be required in a reissue application if a 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.
Reexaminations are proceedings, not applications.
The change is applicable to all applications in which a first action on the merits has not been mailed by November 1, 2007. The USPTO will issue a notice in applications pending before November 1, 2007 giving the applicant time to provide an ESD or an SRR, or to amend the application to be within the five/twenty-five claim threshold.
Continued Examination Filings
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) in any one of these three applications (the initial or two continuing applications), without justification.
The applicant may file divisional applications to the non-elected invention(s) only if the USPTO issues a restriction requirement in the prior application.
If applicant presents a benefit claim that is not permitted, the Office will refuse to enter the improper benefit claim and refuse the benefit of the filing date of the prior-filed application.
The applicant must identify the claims in a continuation-in-part application that the
applicant believes are entitled to the parent application’s filing date.
The USPTO will permit an applicant to have “one more” continuing application after
August 21, 2007, regardless of the number of continuing applications filed before
November 1, 2007. Any RCE filed on or after November 1, 2007 that is a second or subsequent RCE in an application family will require a petition and showing.
For an application that contains a generic claim, Applicants should conclude prosecution of the generic claim in the initial application and its continuation or CIP applications, including exhaustion of any available appeals, before filing a divisional application to a non-elected species. For an application that contains withdrawn claims that could be rejoined under the rejoinder practice, Applicants should cancel the withdrawn claims before filing a divisional application to the non-elected invention.
Related Applications and Double Patenting
The applicant must identify other commonly owned pending applications or patents that: (1) have a claimed filing or priority date within two months of the claimed filing or priority date of the application; and (2) name at least one inventor in common with the application.
A rebuttable presumption will exist that the application and the other commonly owned application(s) or patent(s) contain at least one patentably indistinct claim, if the other application or patent has:
- An inventor in common with the application;
- A claimed filing or priority date that is the same as the claimed filing or priority date of the application; and
- Substantial overlapping disclosure with the application where the other application or patent has support for at least one claim in the application.
If the rebuttable presumption under § 1.78(f)(2) exists, applicant must either:
- Rebut the presumption by explaining how the application contains only patentably distinct claims; or
- Submit a terminal disclaimer
within the later of:
- Four months from the actual filing date of the application or from the date on which the national stage commenced;
- The date on which a patentably indistinct claim is presented; or
- Two months from the mailing date of the initial filing receipt in the other application.
In addition, the applicant must also file a terminal disclaimer or explain how the applications (or application and patent) contain only patentably distinct claims if the applications also have the same claimed filing or priority date and contain substantial overlapping disclosure. If the other application is pending, applicant must also explain why there are two or more pending applications which contain patentably indistinct 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.
Final Action Practice
The Office is retaining the first action final rejection practice in a continuing application or after an RCE. Applicants may guard against first action final rejection by first seeking entry of the amendment, argument, or new evidence after final rejection under § 1.116.
A second or subsequent Office action may be made final, except when the action contains a new ground of rejection that is not:
- Necessitated by an amendment of the claims, including an amendment to eliminate unpatentable alternatives;
- Based on an IDS filed after a FAOM with the fee;
- Based upon a double patenting rejection;
- Necessitated by an identification of claims in a CIP application that is supported by a prior-filed application; or
- Necessitated by a showing that a claim element is a means- (or step-) plus-function claim element.
Professor Wegner has already called the new rules "The Single Most Complex PTO Rulemaking in the History of the APA."