On August 21, 2007, the United States Patent and Trademark Office ("the PTO") published the long-awaited rules aimed at limiting continuing application filings and request for continued examination filings. (72 Fed. Reg. 161). The rules also potentially limit the number of claims that can be prosecuted in a group of copending, commonly owned applications. Although the new rules become effective on November 1, 2007, certain provisions of the rules will impact applications filed before November 1, 2007. Because of the retroactive nature of the rules, applicants should consider how the new rules affect their current patent prosecution strategies.

A Summary Of The Rules For Limiting Continuing Applications And RCEs

The stated purpose of the new rules is to reduce the number of continuing applications and request for continued examination ("RCE") filings. The new rules define continuing applications to include continuation applications, continuation-in-part ("CIP") applications and divisional applications. Under the rules, an applicant is limited to two continuing applications and one RCE per application family as a matter of right (i.e., without a petition justifying the filing). The major points of the new rules are as follows:

  • A continuation or CIP can claim benefit of no more than two prior-filed applications as a matter of right. Moreover, any application whose benefit is already claimed in such a continuation or CIP can typically have its benefit claimed in only one other continuation or CIP as a matter of right. Said another way, this provision allows two continuations (including CIPs) to be filed in an application family (the initial application and its two continuations or CIPs).
  • The rules define divisional applications to include only those applications claiming an invention that was subject to a restriction requirement and not elected for examination in the parent application. Voluntary divisional applications are treated as continuations, and are therefore subject to the above limitations.
  • Under the new rules divisional applications can be prosecuted in series, as long as the copendency requirement of 35 U.S.C. § 120 is met. This is in contrast to the proposed rules published on January 3, 2006 (71 Fed. Reg. 61), which required that divisional applications be filed during the pendency of the application subject to the restriction requirement. Moreover, an applicant is permitted to file two continuations (excluding CIPs) for each divisional application family as a matter of right. In this manner, the new rules limit the number of continuations and/or CIPs for each invention, regardless of whether multiple inventions are disclosed in a single application.
  • Only one RCE can be filed in an application family (i.e., the initial application and its two continuations or CIPs) as a matter of right. The allowed RCEs can be filed in the initial application or any of the allowed continuation (or CIP) applications. Similarly, only one RCE can be filed in a divisional application family as a matter of right.
  • The provisions limiting the number of continuation and CIP applications are separate from the provisions limiting the number of RCEs. Accordingly, applicants cannot "mix and match" their allowable RCEs and their allowable continuations and CIP applications. For example, an applicant cannot forgo filing a continuation application to obtain a second RCE as a matter of right.
  • If a CIP is filed, the applicant is required to identify those claims that are supported by the disclosure of the application to which the CIP claim priority.
  • Any continuation, CIP or RCE not permitted as a matter of right must be accompanied by a petition showing why the amendment, argument or evidence presented in the new application could not have been previously submitted.
  • The rules limiting the number of continuing applications are applicable to any application filed on or after November 1, 2007. However, the rules allow a continuation or CIP claiming benefit of an application filed before August 21, 2007 as a matter of right, even if the continuation or CIP is a third or subsequent application in the family, provided that no other application filed on or after August 21, 2007 claims priority to the same application. In this manner, the rules allow an applicant to file "one more" continuation or CIP in application families filed before August 21, 2007.
  • The rules limiting the number of RCEs per application family are applicable to any application in which an RCE is filed on or after November 1, 2007.

A Summary Of The Rules For Limiting The Number Of Claims In An Application

In contrast to the proposed rules published on January 3, 2006 (71 Fed. Reg. 61) which proposed limits on the number of claims that would receive an initial examination, the new rules impose limits on the number of claims that can be included in an application or a family of related applications. The major points of the new rules are as follows:

  • If an application contains or is amended to contain more than five independent claims or twenty-five total claims, the applicant must either: (A) file an examination support document OR (B) amend the application such that it contains no more than five independent claims and no more than twenty-five claims ("the 5/25 claim limit").
  • If an application contains at least one claim that is patentably indistinct from at least one claim in one or more other pending applications, and if the other pending applications are commonly owned, the PTO will evaluate the claims in the aggregate. Said another way, when determining if an application is in compliance with the 5/25 claim limit, the PTO will consider all of the claims in copending applications that contain at least one patentably indistinct claims. Accordingly, under this provision, an applicant cannot pursue patentably indistinct claims via applications prosecuted in parallel, if the total number of claims across the multiple applications exceeds the limit. Under the new rules, applicants will be allowed to pursue patentably indistinct claims via applications prosecuted in series.
  • The 5/25 claim limit will apply to any application filed on or after November 1, 2007 and to any application filed before November 1, 2007 in which a first office action on the merits was not mailed before November 1, 2007.
  • For each application pending on or after November 1, 2007, the applicant must identify other pending applications that are commonly owned, have at least one common inventor, and have a filing date (or claimed priority date) within two months of the application.
  • The PTO will presume that an application contains at least one claim that is not patentably distinct from a claim in another pending or patented application if (A) the application has the same filing date as the other application, (B) the application has at least one inventor in common with the other application, (C) the applications are commonly owned, and (D) the applications have substantially overlapping disclosure. When this presumption exists, the applicant must either rebut the presumption by explaining how the claims are patentably distinct or file a terminal disclaimer along with an explanation of why the applicant has filed two applications that contain patentably indistinct claims. If the PTO determines that the claims are patentably indistinct, the PTO will aggregate the claims to determine whether the pending applications are in compliance with the 5/25 claim limit.
  • For applications filed before November 1, 2007 that are affected by the 5/25 claim limit, the PTO will mail a notice requiring the applicant to: (A) submit an examination support document, (B) amend the application such that it contains no more than five independent claims and no more than twenty-five dependent claims, or (C) suggest a restriction requirement to reduce the number of claims. If, however, the notice is combined with a restriction requirement issued by the PTO, the applicant cannot respond by suggesting an alternative restriction requirement.
  • For applications filed after November 1, 2007 that fail to comply with the 5/25 claim limit, if the non-compliance appears to have been inadvertent, the PTO will mail a notice requiring the applicant comply be either: (A) file an examination support document OR (B) amend the application the application such that it contains no more than five independent claims and no more than twenty-five claims. The applicant may not submit a suggested restriction requirement in response to such a notice.
  • The examination support document requires: (A) a statement that a search was conducted, (B) an information disclosure statement listing the most closely related references, (C) a comparison between the limitations of the claims (independent and dependent) and the cited references, (D) a detailed explanation of how each of the independent claims is patentable over the cited references, and (E) a showing of where the limitations of the claims are supported in the specification.

Strategic Considerations

Plan That The New Rules Will Not Be Withdrawn Or Easily Circumvented Through Petitions.

Many commentators have asserted that the PTO lacks statutory authority to limit the number of continuing applications. On August 22, 2007, one inventor sued the PTO claiming that the new rules violate the U.S. Constitution and the Patent Act. While this suit leaves open the possibility that the new rules may be stayed or withdrawn, applicants should plan their prosecution strategies assuming that the new rules will remain in effect as published.

Additionally, applicants should plan their prosecution strategies assuming that petitions to grant additional continuing applications or RCEs will not be routinely granted. For example, the PTO has published guidelines indicating that no situations exist that will result in an automatic grant of a petition. Similarly, the PTO guidelines state that a petition to file an RCE for the purpose of including only an information disclosure statement will not be granted.

Strategies Should Be Tailored For Different Categories Of Applications.

Applicants should tailor their prosecution strategies specifically towards at least three different groups of applications: (A) currently pending applications in which all available continuations and/or RCEs have already been filed, (B) currently pending applications in which continuation filings are still available as a matter of right, and (C) new applications. For example, currently pending applications in which all available continuations have already been filed are allowed "one more" continuation under the new rules. Because the "one more" continuation represents the last chance for the applicant to file a continuation as a matter of right, the strategy for drafting claims in the "one more" continuation may be different than the strategy for drafting claims in new applications.

Consider Whether To File Multiple Continuations Before November 1, 2007.

Although applicants can file any number of continuing applications before November 1, 2007, such newly-filed applications will be subject to the 5/25 claim limit. For example, if an applicant files five continuations that contain patentably indistinct claims, the PTO will aggregate the claims from all five applications when determining if the applications are in compliance with the 5/25 claim limit. If, however, these five continuations each contain a set of patentably distinct claims, such multiple continuations can be filed as a matter of right before, but not after, November 1, 2007. When such continuing applications are filed before November 1, 2007, the applicant will not be entitled to the "one more" continuation filed after November 1, 2007. Accordingly, applicants should carefully weigh all options before rushing to file in an attempt to "beat the rules."

Consider Claiming All Disclosed Inventions When Filing The "One More" Continuation.

Because the "one more" continuation represents the last chance for the applicant to file a continuation as a matter of right, when filing the "one more" continuation allowed under the new rules, applicants should considering claiming all disclosed inventions, even if the number of claims exceeds five independent claims or twenty-five total claims. In this manner, the applicant can then suggest a restriction requirement in an effort to spawn new divisional application families. Failure to claim a disclosed invention, however, will prevent the applicant from subsequently filing a divisional application claiming that disclosed invention. Accordingly, applicants should ensure that all subject matter disclosed is claimed in the "one more" continuation.

Consider Filing An RCE Before November 1, 2007.

As stated above, the rules limiting the number of RCEs within an application family are applicable to any application in which an RCE is filed on or after November 1, 2007. Accordingly, if an RCE has already been filed within an application family, the applicant should consider filing an RCE to present new amendments before November 1, 2007.

Avoid Exceeding Five Independent Claims And Twenty-Five Total Claims, If Possible.

The requirements for the examination support document are costly and may give rise to undesirable prosecution history. As such, applicants should carefully weigh the benefits of having additional claims with the burden and risks associated with an examination support document. In general, applicants should typically avoid drafting applications that include more than five independent claims and twenty-five total claims.

Conclusion

The above strategies may not be applicable or appropriate under all situations. Moreover, the above discussion is not an exhaustive review of all strategies that may be employed in light of the new rules. As such, we recommend that applicants fully consider the potential benefits and shortcomings of all available strategies before proceeding. The attorneys listed on this Cooley Alert are available to discuss the latest information and strategies related to the new rules.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.