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Archived updates for Sunday, October 14, 2007

Neifeld Distills the USPTO's Claim/Continuation Rule Clarification

In “The USPTO's Notice Published 10-11-2007, Relaxing Some of the Requirements of the New Rules Published 8-21-2007,” Richard Neifeld offers the following "translations" of the USPTO's Clarification of the Transitional Provisions Relating to Continuing Applications and Applications Containing Patentably Indistinct Claims (signed 10 October 2007):"

  • Applicants do not need to identify the effective filing date for claims in continuation-in-part applications examined prior to 11/1/2007.
  • Applicants do need to file, by 2/1/2008, in all CIP applications, a paper identifying the effective filing date for each claim.
  • In a subject application filed prior to 11/1/2007, an applicant need only identify other applications and patents having priority dates in common with the subject application.
  • Applicants only need to identify applications having priority dates within 2 months of one another for priority dates that are on or after 11/1/2007.
  • Applications that are divisionals, PCTs that do not enter the U.S. national phase, or U.S. national applications that are not completed (failure to pay fees or file necessary parts) do not count against the right to file "one more" application.
  • Prosecution during the international phase of a PCT application does not limit the right to file division applications for inventions restricted in U.S. national phase prosecution of the PCT application.

Get more "Advanced IP Articles" from Neifeld IP Law, PC here.

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Anonymous Anonymous said...

You only need to do the claim identification for CIPs in which no office action has been received to date. - Judith

October 17, 2007 2:48 AM  

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