USPTO Continuation Rules Published August 21, Take Effect November 1, Webinar on Thursday August 23

The Department of Commerce’s United States Patent and Trademark Office (USPTO) new claims and continuation rules were published on August 21, 2007 and will be effective on November 1, 2007.



The new rules have been modified, relative to the rules that were originally proposed early last year, in response to the extensive comments the USPTO received from the public. Here are some early leaks:

1. Each initial application is limited to 2 continuing applications and 1 RCE. Additional continuing applications/RCEs may be filed upon petition. This was changed from the proposed rule in which each application was limited to one continuing application.


2. Divisional applications may be filed only in response to a restriction requirement having been made by the Office. Divisional applications may be filed during the pendency of the initial application or any of its continuing applications. In the proposed rule, divisional applications were limited to being filed only during the pendency of the initial application. Each divisional application is also limited to 2 continuing applications and 1 RCE. Additional continuing applications/RCEs of a divisional application may also be filed upon petition.


3. The claims in each application may not exceed 5 independent claims or 25 total claims absent the applicant assisting the examination process through the filing of an Examination Support Document (ESD). This is a change from the proposed rule where an application could be filed with any number of claims but the applicant must elect 10 representative claims for examination absent the filing of an ESD.


4. 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. 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. This will enhance the examination process by saving examiner resources since the examiner will not have to research information that the applicant is in the best position to easily provide prior to examination.

A USPTO webinar on the new rules is scheduled for Thursday, August 23, 2007. To register for the free webinar, click on the following link: https://uspto-ls.webex.com/uspto-ls/onstage/g.php?d=664144307&t=a and will be available for replay by Monday, August 27.

According to Professor Crouch at Patently-O, of the approximately 4400 litigated patents that issued between January 1, 2002 and August 1, 2007, 35% of had more than 25 claims. Of the
aApproximately 3000 utility patents that issued on August 21, 2007, only 18% had more than 25 claims. and, of the approximately 6600 patent applications that were published on August 16, 2007, 27% included more than 25 claims. "A troubling aspect of the new rules is their potential to have a disproportional impact on valuable patents," notes the Missouri School of Law Professor.