LISTING OF COMMONLY OWNED APPLICATIONS AND PATENTS UNDER 37 CFR 1.78(f)

In November 2007, 37 CFR 1.78(f) will become effective (along with a host of other rules).

Recently, the PTO made public its draft form SB206 for complying with rule 78(f).

1.78 Form

The instructions for completing the form are as follows:

Notes

Under 37 CFR 1.78(f)(1), applicant in a nonprovisional application that has not been allowed (37 CFR 1.311) must identify by application number (i.e., series code and serial number) and patent number (if applicable) each other pending or patented nonprovisional application, in a separate paper, for which the following conditions are met:

  • (A) The nonprovisional application has a filing date that is the same as or within two months of the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
  • (B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application; and
  • (C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application.

Under 37 CFR 1.78(f)(2)(i), a rebuttable presumption shall exist that a nonprovisional application contains at least one claim that is not patentably distinct from at least one of the claims in another pending or patented nonprovisional application if the following conditions are met:

  • (A) The nonprovisional application has a filing date that is the same as the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
  • (B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application;
  • (C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application; and
  • (D) The nonprovisional application and the other pending or patented nonprovisional application contain substantial overlapping disclosure. Substantial overlapping disclosure exists if the other pending or patented nonprovisional application has written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the nonprovisional application.

Instructions:

  1. In the column on the right, list the numbers of the applications and patents that meet the conditions set forth in 37 CFR 1.78(f)(1)(i). For supplemental lists, please do not list previously submitted applications and patents.
  2. In the first column on the left, place a check mark in the box if the cited application or patent also meets the conditions set forth in CFR 1.78(f)(2)(i) and applicant attached an explanation of how the application contains only claims that are patentably distinct from the claims in the cited application or patent.
  3. Place a check mark in the box in the second column on the left, if the cited application or patent also meets the conditions set forth in CFR 1.78(f)(2)(i) and applicant attached a terminal disclaimer in accordance with 37 CFR 1.321(c).
  4. Place a check mark in the box in the third column on the left, if applicant also attached an explanation why there are two or more pending nonprovisional applications containing patentably indistinct claims. See 37 CFR 1.78(f)(2)(ii)(B).

41 thoughts on “LISTING OF COMMONLY OWNED APPLICATIONS AND PATENTS UNDER 37 CFR 1.78(f)

  1. Pro se-

    The kernel of truth is in your post, and they should stop CIP and CON abuse, but they should also allow three RCEs and not require a filing two CONs to prosecute the FIRST invention in your application. If you prosecute you learn quickly that the first, and somtimes second, series of exchanges witht he Exminer simply is to educate the Examiner and attorney as to each person’s position. Why then require CONsa and limit prosecution to three bites at the apple (when often two are wasted at least partially due to their second OA final practice).

    Reply
  2. Now; I’m just a lowly pro se…but just how exactly is all this crap going to make the examiners’ jobs any easier?

    …speed prosecution?

    …increase efficiency?

    …result in “better” patents?

    Look; let’s cut to the chase and just end continuations (a couple of RCE’s–and appeals–are fine).

    Here come the poision-tipped arrows…

    Frankly, when I learned about continuations, I was stunned…”you mean to tell me it’s actually legal to continue to extract new (in my book) inventions out of the same invention…for years and years and years…like when you find out others have invented something you never thought of…but that might be/is covered by something you came up with months…years…even a decade or more ago? Really!?”

    If you didn’t put it (i.e. recognize it) in your original application, you didn’t invent it.

    This going back in time to capture something you never had in the first place is ridiculous. The PTO shouldn’t be a patent time machine.

    Come up with some more claims/inventions later?

    Super! Now file a new app (with the same spec if you like) and get in line with everyone else.

    Reply
  3. Well JHersh-

    We will just have to educate the Office to treat claims as they would be in court where the claims they call “patentably indistinct” are often the difference between a infringment holding and an invalidity holding.

    Ya, you’re right, fat chance…

    Reply
  4. Also nonsensical is the Notice the Office is currently planning to send out if an application has more the 5/25. Why would they send this notice when the 5/25 rule applies not a single filing but a single divisional (e.g divisional). Why would the Office create this work for itself and all of us when we could just wait for the restriction, fix the claims to 5/25 in the first elected invention and move forward. Instead the Office seems to want to create a false hoop for themselves and us to jump through with this Notice they are going to send. It does not seem to make sense for either side – anyone know why they are sneding this?

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  5. Even worse, it looks like you can’t “just” file a terminal disclaimer anymore. According to the draft document above, “applicant must provide an explanation why there are two or more pending nonprovisional applications containing patentably indistinct claims.” So, say goodbye to those, too.

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  6. A truly diabolical design (was it intended?). When you file a continuation during prosecution (because you only get one RCE) it will count as a new application and trigger all these dates over again – even dates for new non-provisional applications.

    This also means that for large corporations there will be so many of these filed in cases that Examiners will just ignore them. Talk about a waste for all involved.

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  7. The sad thing is Scott may just be an inventor or a mid-level manager at the USPTO who feels our pain and wanted to suggest a “helpful” suggestion. Of course, even the non-registered folks who recently failed the patent bar would know the solution was illegal.

    So anyway what kind of person would be interested in [providing] Rule 78 solutions, be reading Patently-O, and not know the most basic patent laws? Pray it’s not a USPTO employee with any sort of responsibility, or we’re all in really deep doo doo.

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  8. HMMMMM fraudulent joinder of inventorship to avoid 1.78 compliance. Hmmmm . . . not recommended. I would suspect this would tend to render a patent invalid. Remember fraud gets one two years in Federal prison.

    Reply
  9. Hi Scott, such willful false statements could likely end with both you (if you were the attorney counseling such) and the “inventors” who signed the declarations in jail (under Section 1001 of Title 18 of the United States Code). Most certainly, all the claims in such patent applications would be held invalid.

    But you’re right, to the extent that the large corporation would lose its patent rights or be forced out of business, it would not have to worry about Rule 78 compliance.

    Reply
  10. Here’s an easy solution…especially for large corporations.

    Make sure the same inventor is not listed on applications, at least within 2 months of each other. In reality, does it really matter who the named inventor is when all the rights are assigned to a company.

    OK, I know these are used as resume builders and brought up at promotion time, wage discussions, etc. But just keep track of it in house and rotate the inventorship around among a group who worked on the invention.

    Reply
  11. Yeah, the worst part of this is the ONGOING reporting requirement.

    It’s bad enough that when I file a second app. that has a same inventor and similar priority date, that I have to disclose the ref in the 2nd application.

    But I ALSO have to go back to that first app. and cite the 2nd application.

    In a corporation with a large portfolio, this is going to be messy. And especially with a few short months to comply…

    Reply
  12. What if you file an application that gets published, and within two months of that filing you filed a related application with a nonpublication request because you want to keep it private? Now you have to disclose the nonpublished application in your SB206 form for the published application and file the rebuttal (which would likely disclose the contents of the claims of the nonpublished app)? How do you keep nonpublished applications secret?

    And I’m hoping a relatively pro-forma rebuttal will be sufficient. For example, “application #1 claims [copy independent claims here] and application #2 claims [copy independent claims here]. These claims have entirely different feaures, and thus are patentably distinct.”

    Will this be adequate?

    Reply
  13. “Could you please provide a name (or names) of such software? Thank you.”
    I just came back from a docketing seminar put on by Thompson, (Master Data), who make IP Master,and even though many docketing systems currently have capability to search inventor names, etc, the problem is that in the past it was not so important to have the names listed exactly the same, but now they do have to be exactly the same if you want to do reliable database queries. For example, for names such as John Quigly Smith, III, Jr., leave off the III or Jr. or use Q. instead of Quigly, and you won’t find the inventor’s other cases.. Things like that will have to be fixed.

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  14. Instead of a long reply I posted here: link to emgill.blogspot.com

    Basically, most docketing software has a place for free-form text entry. By making sure info in the spec only defines what is in the claims, one can copy the claim elements into the docketing software and check future claims against earlier disclosures.

    Painful but should work.

    Reply
  15. CPI, or at least the version we use, tracks mulptiple priorities, inventors, etc. The multiple priorities are available with inventor info in a spreadsheet after a special Access query.

    Reply
  16. “Could you please provide a name (or names) of such software? Thank you.”

    CPA’s Inprotech tracks priority and inventors on a case-by-case basis. But you might have to write your own query or database procedure to find the information you need — I don’t think they have any 2-month front or back window or shared priority date functionality implemented.

    link to cpaglobal.com

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  17. “Some currently available docketing systems allow one to enter priority data and inventor data. In such systems, a simple database query can be written to find the relevant cross-citations.”

    Could you please provide a name (or names) of such software? Thank you.

    Reply
  18. “By February, we need to create a database of all relational information (current docketing software does not have this information), and write software to find the case relationships.”

    Some currently available docketing systems allow one to enter priority data and inventor data. In such systems, a simple database query can be written to find the relevant cross-citations.

    Reply
  19. “And the penalty for an error in that database,”

    Malcolm, penalties(4). Well done, anyway.

    Reply
  20. “By February, we need to create a database of all relational information (current docketing software does not have this information), and write software to find the case relationships.”

    And the penalty for an error in that database, i.e., spelling Dr. Zhurichezcnyanijov’s name wrong …?

    Reply
  21. One largely unapprciated feature of the rules is that the matrix of relational information for cases changes every time there is a new filing that happens to fall into a 2 month window with any other case in a client’s portfolio. We need to file a new 178(f) form in every affected case everytime this happens. For complex portfolios, this can’t be done manually. By February, we need to create a database of all relational information (current docketing software does not have this information), and write software to find the case relationships. Best of all, this relational information that will probably cost well over 100K to generate for a typical small patent firm will be completely useless to everyone.

    Reply
  22. “Complaining and negatively commenting through blog sites is not enough.”

    LOL. Hitler on the left, Mussolini on the right …

    Reply
  23. P.S. The penalties are perhaps if you don’t get it done (period). In all honesty, I’m not sure we know how important the USPTO thinks the “compliance date” is and whether late compliance will be accepted. (But that uncertainty is one of the many problems with the Rules.)

    Reply
  24. “…very gracious of the USPTO — we have another 12 weeks to go through all of our portfolios to get this information over to the USPTO.”

    Commenter, did you see ALL the penalties if you don’t get this done by 2/2008? From FAQ J16:

    1) the applications *will* be considered indistinct for the 2/25 rule, triggering the ESD requirement (that needs to be fulfilled in a *two month* period, and with its attendant pitfalls vis-a-vis admissions and your liability to your clients and the Office); AND

    2) you *will* have to file terminal disclaimers; AND

    3) you *will* be required to file an explanation as to why (and legally admitting) there are two or more pending applications that contain patentably indistinct claims (…but what if they are patentably distinct… doesn’t the required explanation turn into a “when did you stop beating your wife?” question); AND

    4) a rejection based upon double patenting (including an obviousness-type double patenting rejection) *will* be made in *any* subsequent Office action (whether warranted or not?), unless a terminal disclaimer has been filed.

    Next time, you may not wish to look the gracious gift horse in the mouth. :-)

    Reply
  25. As a NAPP member I know that NAPP is strongly backing efforts to support the Tafas action that may enjoin the USPTO from enforcing the new continuation rules, and President Reardon has strongly supported these efforts now and in the past. NAPP is one of the lead organizations in this struggle. Where are the others?? I just rejoined NAPP because of their positive actions.

    please see: link to napp.org

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  26. I stand corrected we need to get this done by Feb. 1, 2008 not November 1, 2007– Very gracious of the USPTO — we have another 12 weeks to go through all of our portfolios to get this information over to the USPTO. How much is this going to cost our clients? No substantial impact on small entities – BS.

    Reply
  27. It’s bizarre that we have to go through so much patent reform when all the firepower the PTO or the courts needed was in 112. The whole thrust of the reform is to reduce “patentably indistinct” claims. 112 requires “particularly pointing out and distinctly claiming”. Didn’t need to go to the drawing board, just needed to enforce the statute against continuation abusers.

    Reply
  28. “Have you written your Congress person and Senator?”

    I do not have one. I live in the District of Columbia.

    To which organization should I send a check? I do not trust many of these organizations. I personally called the NAPP president to ask him to help with the illegal Peterlin appointment. He never returned my call. No money for them. IPLA, IPO? NO!!!!!!!!!!!

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  29. “…it appears you still are stuck with responding within the time frames delineated by under (f)(2)(iii)”

    As with many of the Rules, you can’t just read the (poorly written and verbose) Rules and expect to understand the consequences which the USPTO intends (I have yet to find *any* support in the CFR text for the concept of “one more” and the new USPTO FAQs refer you back to the Federal Register notice, not a rule section, for support).

    The “compliance date” by which applicants must comply with the requirements in 37 CFR 1.78(f) is described at FR 46717, e.g. “within the time periods specified in 37 CFR 1.78(f)(2)(iii), or by February 1, 2008, whichever is later..” (The quiz covers this.)

    Reply
  30. Commenter, the 1.78(f) compliance date for applications filed before November 1, 2007, is February 1, 2008.

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  31. New rule 78(f)was clearly designed to cause great distress to any filer who filed an application seeking priority to more than one previously filed application. 37 CFR 1.78(f) APPLIES TO ALL NON-PROVISIONAL APPLICATIONS PENDING ON OR AFTER NOVEMBER 1, 2007. As far as I can tell it means with respect to any pending application not having a notice of allowance that the filer needs to look in successive four month windows (that is, two months before and two months after each claimed priority date, as well as the actual filing date) for ANY application filed by one or more of the inventors listed on application (even if the patent professional did not file the application). Extremely disconcerting is that with respect to pending applications filed long before November 1, 2007, it appears you still are stuck with responding within the time frames delineated by under (f)(2)(iii), which in many cases will have already passed. Doesn’t this suggest that with respect to any application pending on November 1, 2007 which has a continuation stream that the applicant is most likely already in default with respect to the rule (that is, unless they filed the new USPTO form BEFORE November 1, 2007). Will someone correct me if I am wrong (and I would truly like to be wrong in this case!)?

    These rules are terrible. While the rules may be overturned in the Tafas case or some other case that may be filed, I fear that the reform bills will give the USPTO all the power it needs to implement such rules (certainly the House Bill gave the USPTO rights with respect to limiting continuation practice). TIME IS SHORT — THE INDIVIDUAL PATENT PROFESSIONAL MUST START TAKING SOME EFFORT HERE. Complaining and negatively commenting through blog sites is not enough. We should start putting our time and talent into stopping this run-away train. Have you written your Congress person and Senator? Are you putting your money behind organizations, such as the Professional Inventors Alliance, NAPP and others, trying to keep the USPTO from getting more power through the reform bills? Our professional organizations have let us down here — many of our organizations are hopeless conflicted as they try not to offend the Coalition for Patent “Fairness,” comprised of many of the companies that are facing severe anti-trust challenges in Europe. I think we need more constructive debate.

    Reply
  32. Well, there’s apparently no “notice” in the Final Rules that the SRR has to be *accepted* by the Examiner for it to satisfy the provisions of 1.704(c)(11), or of the penalties which attach if it is not accepted. (It is apparently fully within the examiners discretion whether or not to accept an SRR which is filed in compliance with 1.142(c).)

    “N2. If applicant filed a SRR accompanied by an election without
    traverse of an invention for which there are no more than 5
    independent claims and no more than 25 total claims, but the SRR is
    not accepted, are there PTA consequences?

    The examiner’s acceptance of a SRR accompanied by an election
    without traverse of an invention to which there are no more than 5
    independent claims and no more than 25 total claims would be
    sufficient to obviate the need for an ESD under 37 CFR 1.265. If
    the SRR is not accepted, the applicant will be notified and given
    a time period within which the applicant must either file an ESD in
    compliance with 37 CFR 1.265 or amend the application such that it
    contains no more than 5 independent claims and no more than 25
    total claims. Failure to timely reply to such a notice would result
    in the abandonment of the application. The abandonment of an
    application results in any PTA being reduced under 37 CFR
    1.704(c)(3).”

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  33. Can you spell draconian, arbitrary, and capricious?

    “J17. Is applicant require to identify divisional applications under
    37 CFR 1.78(f)(1) and rebut the rebuttable presumption under 37 CFR
    1.78(f)(2) in a divisional application? (Posted on 9/26/07) Yes,
    applicant is required to identify any divisional applications that
    meet the conditions set forth in 37 CFR 1.78(f)(1)(i), and
    applicant is required to rebut the presumption under 37 CFR
    1.78(f)(2) in a divisional application that meets the conditions
    set forth in 37 CFR 1.78(f)(2)(ii). For example, if applicant filed
    a divisional application of an initial application and the initial
    application is pending and has not been allowed, applicant must
    identify the divisional application in the initial application.
    Applicant may rebut the presumption under 37 CFR 1.78(f)(2) by
    explaining that the divisional application was filed in response to
    a restriction requirement made in the initial application and the
    divisional application contains claims to only a non-elected
    invention(s) that have been withdrawn in the initial application.”

    **By definition a claim that is restricted (which is the only thing
    that can be the basis for a divisional; see FAQ A2) is both
    independent and distinct (35 USC 121). To severely punish the
    applicant (as in FAQ J16 below) for not rebutting a presumption to
    the contrary (which is merely the consequence of bad-rulemaking and
    which is contrary to law) is draconian, arbitrary, and capricious.
    (Perhaps we will find out if the 8th Amendment applies to civil
    proceedings.)**

    “J16. What are the consequences for failing to rebut the presumption
    under 37 CFR 1.78(f)(2)? (Posted on 8/21/07) The Office will treat
    the other applications as having at one claim that is patentably
    indistinct from the claims in the application under examination.
    Therefore, the Office will treat each application as having the
    total of all of the claims for the purposes of determining whether
    each application exceeds the 5/25 claim threshold. See 37 CFR
    1.75(b)(4). The Office will also require applicant to file a
    terminal disclaimer. If the other applications are pending, the
    Office will require an explanation as to why there are two or more
    pending applications that contain patentably indistinct claims.
    Furthermore, a rejection based upon double patenting (including an
    obviousness-type double patenting rejection) will be made in any
    subsequent Office action, unless a terminal disclaimer has been
    filed.”

    Reply
  34. Thanks for the link to the quiz. After the first few, the questions become much tougher with all the dates, scenaios and vagarities in the rules.

    This is a mess. When it hits the fan, all kinds of “mistakes” will be made. Small practice groups will go the way of the dodo and small inventor.

    I become enraged every time I read this stuff and dread the directions in which both our profession and patent system are heading. Am I the only one? I mean, I am very pissed off.

    Government weasal dolts blew it up. Ahhhh … damn you, damn you all to … [POTA ending]

    Reply
  35. Can anyone recommend a competent and inexpensive 1.78(f) compliance specialist?

    Reply
  36. So if you file a divisional with the same disclosure as the parent (e.g. after a restriction requirement), is there a rebuttable presumption that the divisional contains at least one claim that is not patentably distinct from the parent? Inquiring minds want to know! And what might be the penalty if the applicant fails to rebut the presumption or file the terminal disclaimer by the “compliance date” (FR, 46717)?

    Reply

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