Glenn Law and Courtenay C. Brinckerhoff of Foley & Lardner LLP suggest the following long-term best practices for addressing the new USPTO claims, continuations, and RCEs rules:
- Combine two or more related applications into a single application with the goal of obtaining a restriction, which will then permit the filing of divisional application(s) (and two continuations and one RCE for each divisional). If the claims are not patentably distinct, cancel claims to comply with the 5/25 claim limit.
- Suggest a restriction requirement with the goal of obtaining a restriction, which will then permit the filing of divisional application(s) (and two continuations and one RCE for each divisional). This must be done before the examiner issues a restriction or before the first office action on the merits. Consider the USPTO manual of classification when formulating a suggested restriction.
- Be careful about filing a divisional before the parent application is allowed and/or cancel non-elected claims to avoid rejoinder that would (1) make the divisional application improper and (2) implicate the 5/25 claim limit.
- Consider increased use of provisional applications (e.g., when additional experiments are anticipated) because the limits on filing applications do not apply to provisional applications. A subsequently filed non-provisional application can include new matter but count as the initial application under the continuation limits. Regular applications can be converted to provisionals.
- To ensure compliance with the requirements to disclose related applications and prevent allegations of inequitable conduct, it is essential to coordinate prosecution of related applications closely.