Search the Archives           Subscribe           About this News Service           Reader Comments

Archived updates for Saturday, September 29, 2007

USPTO: Even Interference Provocation May Not Be Enough for Additional Continuing Applications

The following was excerpted from the transcript of Foley & Lardner's "Patent Nation (web) Conference" on the USPTO's new claim and continuation limits, featuring USPTO Commissioner Jon W. Dudas and Senior Patent Counsel Robert Bahr, available at

[Stephen B. Maebius:] It may surprise people that for example it’s not an adequate justification if they discover a published application of a competitor and they want to copy claims from that. That may not serve as an adequate justification for filing an extra continuation. Is that correct?

[Bob Bahr, U.S. PTO:] That’s correct that it is not alone adequate; I’m not saying we will always say no. If you have an applicant who has filed continuations, I’m going to say, not very judicisously upfront and thus has run out very quickly because they were going off on single claim application. That applicant is not going to be in a good place to ask for another continuation so you have to look at the whole facts and circumstances of the case before you make a decision that is why I have a difficult time saying that any situation would be a slam dunk.

[Stephen B. Maebius:]Understood. Somebody tries to copy the claims from this newly discovered application in their immediately pending case and depending on what stage of prosecution it is at, the examiner may or may not entertain that at time to copy claims, depending on the circumstances could lead to a suggested restriction and perhaps permitted divisional or perhaps the examiner’s refusal to enter would give rise to an opportunity to file a continuation beyond the limit.

[Bob Bahr, U.S. PTO:] You have hit a good point, I think the thing we would like to see first is the applicant trying to get it in a pending case and see what the office does with that.

[Stephen B. Maebius:] Bob final question here for you relating to the ids rules and I think people are wondering what is going on with the ids rules and can you tell us anything about when they might publish?

[Bob Bahr, U.S. PTO:] Well the only thing I can say about the final IDS rules is that the office submitted a draft final ids rule to OMB for their review July 27th OMB has up to 90 days to review it, they can extend it but they rarely do, so 90 days is near the end of October where their review should be concluded. I expect that it is not going to be concluded early but though probably the end of October we will get some feed back from OMB and so if all goes as expected something would happen a few weeks after that. Also, I think another question that comes up a lot is the KSR guidelines. They are also under review by OMB however since OMB only recently began reviewing things other than rule makings, I don’t know what their timeframe is on that and a lot of people have been asking when are we going to get KSR guidelines published. Draft KSR guidelines are also under review by OMB at this time.
    (0)comment(s)     translate     More Updates     Send