USPTO Modifies Impending Rules on Related Application and CIP Support Identification, One-More Continuation Availability, and PCT Divisionals

On October 10, 2007, the USPTO published a "Clarification of the Transitional Provisions Relating to Continuing Applications and Applications Containing Patentably Indistinct Claims (signed 10 October 2007)." According to a brief analysis of the nearly impenetrable document by the Intellectual Property Owners Association:

[For applications filed before November 1, 2007], the notice withdraws the requirement . . . to identify other pending applications that were filed within two months of the application and are owned by the same person and name a common inventor, except for applications that have precisely the same filing date.

[For continuation-in-part application filed before November 1], the notice also delays [until February 1, 2008] the requirement to identify claims in that are supported by the parent application.

[The notice also] clarifies the "one more" continuing application provision, and states that the meaning of "examined" does not include PCT examination for purposes of one rule.

More information is available at the USPTO's Claims and Continuation Final Rule webpage, and by contacting the Office of Patent Legal Administration, by telephone at (571) 272-7704 or PatentPractice@USPTO.gov.


Identification of Applications Filed "Within Two Months" Having a Common Owner and at Least One Common Inventor under 37 CFR 1.78(f)(1):

For applications filed on or after November 1, 2007, the USPTO is waiving the "or within two months of" provision of 37 CFR 1.78(f)(1)(i)(A) , so that the applicant is not required to identify any other pending or patented application that has an effective filing date before November 1, 2007, unless:

1. the subject application has an effective filing date that is the same as the effective filing date of the other application; or
2. the subject application has an effective filing date on or after November 1, 2007 that is the same as or within two months of the effective filing date of the other application.

Thus, for applications filed after November 1, 2007, applicants must identify each other pending or patented nonprovisional application for which the conditions set forth in 37 CFR 1.78(f)(1)(i)(B) and (C) are met only if:

1. the subject application has a benefit or priority filing date before November 1, 2007, that is the same as the actual filing date or the benefit or priority filing date of the other pending or patented application, or
2. the subject application has an actual filing date or benefit or priority filing date on or after November 1, 2007, that is the same as or within two months of the actual filing date or the benefit or priority filing date of the other pending or patented application.

For example,

. . . if the subject application has an actual filing date of December 1, 2007, claims the benefit of a nonprovisional application filed on August 1, 2007, and also claims the benefit of a provisional application filed on August 1, 2006, and if there is another application (application "B") that has an actual filing date of August 15, 2007, and claims the benefit of a provisional application filed on August 15, 2006 (and having an inventor in common and commonly owned with the subject application), the applicant of the subject application is not required identify application "B". This is because the subject application does not have an actual filing date or priority or benefit filing date before November 1, 2007, that is the same as the actual filing date or the benefit or priority filing date of application "B", and because the subject application does not have an actual filing date or benefit or priority filing date on or after November 1, 2007, that is the same as or within two months of the actual filing date or the benefit or priority filing date of application "B".

Comparing to the following example, if application "C" has an actual filing date of December 15, 2007, claims the benefit of a nonprovisional application filed on August 15, 2007, and also claims the benefit of a provisional application filed on August 15, 2006, the applicant in the subject application is required to identify application "C". This is because the subject application has an actual filing date or benefit or priority filing date on or after November 1, 2007 (i.e., December 1, 2007) that is within two months of the actual filing date or priority or benefit filing date of application "C"
(i.e., December 15, 2007).

Treatment of Continuation-In-Part Applications Filed Before November 1, 2007:

The notice also waives or delays the requirement under 37 CFR 1.78(d)(3), with respect to pending continuation-in-part applications, that the applicant identify the claim or claims in the continuation-in-part application for which the subject matter is disclosed in the prior-filed application. The changes depend upon whether a first office action on the merits has been mailed before November 1, 2007:

First, for any continuation-in-part application in which a first Office action on the merits has been mailed before November 1, 2007, the requirement in 37 CFR
1.78(d)(3) that an applicant must identify the claim or claims in the continuation-in-part application for which the subject matter is disclosed in the manner provided by the first paragraph of 35 U.S.C. 112 in the prior-filed application is hereby waived.

. . . Second, for continuation-in-part applications filed before November 1, 2007 but for which a first Office action on the merits has not been mailed before November 1, 2007, the applicant may delay compliance with the requirement in 37 CFR 1.78(d)(3) that an applicant must identify the claim or claims in the continuation-in-part application for which the subject matter is disclosed in the manner provided by the first paragraph of 35 U.S.C. 112 in the prior-filed application until February 1, 2008.

Transitional "One More" Continuing Application Provision

The current rules permit an applicant who filed more than two continuation or continuation-in-part applications of an initial application before August 21, 2007, to file "one more" continuing application on or after November 1, 2007, without a petition and showing, if there is no other application filed on or after August 21, 2007, that claims the benefit of the prior-filed applications. However, under the transitional "one more" continuing application provision, if applicant files another continuing application after the filing of the "one more" continuing application, the benefit claim submitted in the "one more" continuing application would no longer be proper, even when the later-filed continuing application is an application that satisfies the conditions set forth in 37 CFR 1.78(d)(1).

The notice waives the provisions of 37 CFR 1.78(d)(1) to the extent that a continuing application (that satisfies the conditions set forth in 37 CFR 1.78(d)(1)(ii), (d)(1)(iii), or (d)(1)(vi)) will not be taken into account for purposes of determining whether there is any "other application filed on or after August 21, 2007 that also claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such prior-filed nonprovisional applications or international applications." Thus, continuing applications will not be taken into account for purposes of determining whether there is an "other application filed on or after August 21, 2007 that also claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such prior-filed nonprovisional applications or international applications" under the transitional "one more" continuing application provision.

For example, applicant may file "one more" continuation application on or after November 1, 2007, without a petition and showing, even if applicant already filed a divisional application that satisfies the conditions set forth in 37 CFR 1.78(d)(1)(ii) on or after August 21, 2007 (assuming applicant did not file any other continuation or continuation-in-part application on or after August 21, 2007). As another example, applicant may file a divisional application that satisfies the conditions set forth in 37 CFR 1.78(d)(1)(ii) claiming the benefit of the "one more" continuation application filed on or after November 1, 2007, without a petition and showing.

"Examined" in 37 CFR 1.78(d)(1)(ii)(B) Does Not Preclude Multiple PCT National Phase Divisionals:

The term "examined" in 37 CFR 1.78(d)(1)(ii)(B) is limited to examination within the meaning of 35 U.S.C. 131 and 37 CFR 1.104 in a national application under 35 U.S.C. 111(a) or a national stage application resulting from an international application entering the national stage in the United States under 35 U.S.C. 371.

The term "examined" in 37 CFR 1.78(d)(1)(ii)(B) does not include the international phase examination under PCT Article 31. Therefore, if an applicant files an initial application which is an international application designating the U.S., and the International Searching Authority determines that the international application lacks unity of invention under PCT Rule 13, the filing of a Demand and the examination of all the inventions in Chapter II would not preclude the applicant from filing a divisional application for each invention not elected for examination in the application after entry into the national stage, assuming that such divisional application or applications otherwise meet the conditions set forth in 37 CFR 1.78(d)(1)(ii).

According to Jason Derry and Donald Zuhn writing for Patent Docs on October 10, 2007, this latter change was made to correct "the Divisional Dilemma"

in which applicants would have to file all of their divisional applications before November 1, 2007 if an International application and Demand had been previously filed on the claim set. As we reported, even Commissioner Doll was stumped by the effect of this rule on an applicant's ability to file proper divisional applications on or after November 1, 2007 (see "It Ain't Necessarily So").

Read more from them on the practical effects of these latest changes here, along with an extensive list of their additional articles in this series.