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Archived updates for Thursday, October 04, 2007

What To Do Now About the USPTO Rule Changes Effective November 1, 2007

Thanks to Peter G. Pappas, Daniel J. Warren, and Chris Chan of Sutherland Asbill & Brennan LLP for the best presentation yet on what to do now about the USPTO Rule Changes taking effect on November 1, 2007. Contact them for their thoughts on these issues from their insightful slides.

In Anticipation of Rules Limiting Continuing Examination Practice

  • File one or more new continuation applications by 11.01.2007:
  1. Where two or more continuing applications have already been filed in an application family
  2. Think ahead and consider whether a CON will be needed to accommodate claims canceled from other cases due to the 5/25 claim rule.
  3. May serve as vehicle for continuing examination where no RCE available
  • File RCE before 11.01.2007 in applications RCE has already been filed in any case in the application family
  • Review related cases to identify information to file in IDS by 11.01.2007 when an RCE may not be available for late submission of prior art.
  • Review C-I-P applications and identify claims that are supported by a parent application and submit statement to PTO or drop priority claim

Actions in Anticipation of Rules Limiting the Number of Claims

  • No action required if already received first action on the merits (FAOM)
  • No action required if 25 or fewer total claims and 5 or fewer independent claims pending (Must consider, however, whether other pending applications contain patentably indistinct claims that will be included in counting of the claims.)
  • Where first examination will occur after November 1, 2007, and the application contains more than 5 independent claims or 25 total claims:
  1. File Preliminary Amendment to cancel claims to get to 5/25 claims
  2. Request refund of excess claims fees previously paid
  3. File Suggested Restriction Requirement with election to 5/25 claims
  4. File Examination Support Document (typically not recommended)

Actions in Anticipation of Rules on Patentably Indistinct Claims:

  • Identify cases in which an “Identification Statement” must be filed.
  • File Identification Statement (before February 1, 2008 for currently pending applications) where
  1. Filing date within 2 months
  2. A common inventor, and
  3. Owned by same person
  • Identify cases in which “Rebuttable Presumption” of patentably indistinct claims must be addressed.
  • File a terminal disclaimer or rebuttal where
  1. Filing date is same day
  2. A common inventor
  3. Owned by same person, and
  4. Substantially overlapping disclosure
  • Consider that even with a terminal disclaimer, the Examiner may require applicant to cancel patentably indistinct claims from all but one application.

Checklist of Primary Recommended Actions in Pending Applications:

  • Expedite IDS submissions, RCE filings before 11.01.2007
  • Consider filing additional continuation applications before 11.01.2007 e.g., to claim unclaimed subject matter
  • Determine whether preliminary amendments are needed to comply with 5/25 claim limitation or to cancel patentably indistinct claims from all but one application
  • Determine whether a suggested restriction requirement should be filed
  • Determine whether an Identification Statement must be filed
  • Determine whether a filing is needed to rebut a presumption of patentably indistinct claims
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Anonymous Anonymous said...



April 07, 2009 1:22 AM  

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