United States Patent Rule Changes Effective - November 1, 2007

1. Background

Substantial changes in the rules governing practice before the United States Patent and Trademark Office (PTO) will come into effect on November 1, 2007.1 On October 10, 2007 the Director of the PTO issued a notice making a number of changes to the new rules.

The primary impetus for the rule changes is that the PTO is seeking to reduce examiner work-loads. Whether these changes will succeed remains to be seen.

Two law suits have been filed challenging either the content or the means of adoption of the rules and seeking a delay in their implementation. The first was filed by Triantafyllas Tafas on August 22 and the second by SmithKline Beecham Corp. on October 9. Both suits were filed in district court for the Eastern District of Virginia.

2. Two Main Themes

The new rules have two main themes:

To limit the number of continuations or continuations in part (c-i-p) per basic application to two and the number of requests for continued examination (RCE) to one, unless there is good reason for additional applications or RCEs.

Subject to the possibility of filing a continuation or RCE, discussed below, to limit the number of claims the examiner must examine to five independent claims and twenty-five claims in total (the 5/25 Rule) unless the applicant assists in the examination.

The PTO has stated that the first change would have affected 3% of applications filed in fiscal year 2006 and the second 8%.

3. Additional Changes

Additionally, the rules impose:

restrictions on maintaining patentably-indistinct claims in different applications and

a requirement in an application designated as being a continuation-in-part (c-i-p) to identify claims that are entitled to priority from an earlier application.

A further change tied to the rule change with respect to the permitted number of continuations or continuations-in-part requires that henceforth the term "divisional" will apply only to applications filed in response to a restriction requirement made by an examiner. "Voluntary" divisionals will be called and treated as continuations and the new rules will apply to them.2

4. The Basic Rule for Continuing Applications

Subject to specific provisions relating to divisional applications filed in response to a restriction requirement, discussed below, for each original application the applicant will be allowed two continuation or continuation-in-part applications and one request for continued examination as of right. Any further continuation, c-i-p or RCE will be permitted only if the applicant files a petition, files an amendment, argument or evidence (an information disclosure statement [IDS] will not be enough by itself) and makes a showing that the amendment, argument or evidence could not have been filed during prosecution of the earlier application or prior to close of its prosecution.3

The two continuations or c-i-ps which are permitted without a showing can be filed either one after the other ("in series", i.e. as a child and grandchild of the original application) or both may be filed "in parallel", that is both may depend directly on the original application.

4.1 Meeting The Requirement For A Showing

The Rules contain no further information as to what is required of a showing beyond the need to show, in the case of a continuation or c-i-p, that the material being submitted "could not have been submitted during the prosecution of the prior filed application" or, in the case of an RCE, that the material being submitted "could not have been submitted prior to the close of prosecution in the application". However, the PTO has indicated that in considering whether a showing has been made, it will consider whether the situation is one that would be better dealt with by an appeal and the total number of applications that have been filed on substantially identical inventions in addition to considering whether the argument, etc. was submitted with due diligence.

Any petition and showing must be submitted within four months of the actual filing date of the continuing application to which it relates or, where the continuing application is itself a PCT national phase entry claiming priority from an earlier US non-provisional application, four months from national phase entry.4

4.2 Divisionals

A divisional filed in response to a restriction requirement is treated differently from a continuation or a voluntary divisional, which, as noted above, is now considered to be a continuation application.

A change in 37 CFR 1.142 gives the examiner discretion as to whether to require restriction or division if two or more independent and distinct inventions are claimed in a single application, rather than requiring restriction as previously.

Prior to the earlier of either a first action on the merits or a restriction or lack of unity requirement by the examiner, applicants will be able to submit a suggestion on how a restriction requirement should be made. The examiner is not bound by such suggestion.5 Any suggestion made by the applicant must also include an election of claims complying with the 5/25 rule for prosecution in the current application.

If the examiner does not agree with a suggested restriction requirement or sets out a different restriction requirement and the number of claims remaining or included in one of the examiner's groups exceeds what is permitted by the 5/25 rule, the applicant will be advised that it must file an examination support document or reduce the number of claims to comply with the 5/25 rule.

It will continue to be possible to file a divisional claiming priority from an earlier divisional application.

Each divisional will be entitled to have two continuations based on it without the need for a petition and showing.6 However, it will not be entitled to have any continuation in part based on it. A request for continued examination in a divisional application will be permitted without a petition and showing only if no such RCE has been filed on an earlier application in the "divisional family".7

4.3 Continuations-In-Part

In any application described as being a continuation-in-part, the applicant will be required to identify those claims "for which the subject matter is disclosed in the manner provided by the first paragraph of 35 USC 112 in the prior-filed application".8

However, the PTO will not investigate the...