Patent Prosecutors: Don’t Wait for the Witching Hour

PatentLawPic099The head of a corporate IP department recently forwarded the following message to his troops:

To take advantage of the “one more continuation,” we will be filing around XYZ applications between now and 1-Nov.

Some of you have experienced the USPTO electronic filing system locking up as its workload increases just before the cutoff at midnight Eastern time. It is fair to say that the witching hour this Halloween will be particularly intense. 

Thus either file a day or so early, or switch to a paper filing. I’d rather pay the extra $75 in fees for a paper filing than miss that date.

If you decide to paper file between 2 and 4 PM on Halloween, then you have time to take the application to a normal post office before they close. If you are making late changes, you might want to simply plan on using the open-till-midnight post office at the airport. . . However at the witching hour, will its small parking lot fill up with patent practitioners spooked they cannot find a parking place?”

As we’ve always done in Chicago — file early and often.

34 thoughts on “Patent Prosecutors: Don’t Wait for the Witching Hour

  1. Peanut Gallery,

    “People should be urgently filing RCEs for cases under final that are in families where the RCE has been used. There is no urgency to file your ‘one more’ CON.”

    YES! I fully agree. This is the only logic that I can find in all the rules nonsense, of course, I am expecting the PTO to get slammed in court on Wednesday and, from their wasteful replies and surreplies filed in an attempt to shut out various amici filings, it appears likely that the PTO has resigned itself to losing.

    As to the “one more” continuation “thing,” aside from the fact that I expect the rules to be enjoined, the original “post” that initiated this blog of comments firmly establishes that no one understands this Rules mess.

    Ironically, in Sunday’s PTO opposition memorandum filed on GSK’s motion for preliminary injunction, the PTO established that, it too, did not understand the Rules that are merely “proposed,” as the PTO argued that each application, rather than “family” of applications, is “entitled” to one RCE before having to file a wasteful petition.

    By the way, if a petition to file a third continuation is denied, it is my understanding that the PTO would accord the “actual” filing date, rather than the “effective” filing date. What happens if a petition to file a second RCE is denied, inasmuch as a Request for Continued Examination is not a new application and does not generate a new filing date, “actual” or “effective?” Since prosecution on the merits is “closed,” and this usually means that a final Office Action is outstanding, what happens to the application if the petition to file the second RCE is denied and the statutory six-month deadline has lapsed?

    What happens if a petition to file a second RCE is filed, for example, to present an IDS of art based upon a newly-issued search report by a foreign patent office, and a Notice of Allowance is outstanding. If the Issue Fee (and, if applicable, Publication Fee) is paid, the patent proceeds to issue. What then happens to the RCE petition, regardless of how it is decided?

    The PTO is almost certainly clueless?

  2. “People should be urgently filing RCEs for cases under final that are in families where the RCE has been used. There is no urgency to file your “one more” CON.”

    Word.

    And check PAIR for those office actions that are being sent today and tomorrow but you won’t see until … it’s too late.

    [cue up Beethoven's Fifth]

  3. People should be urgently filing RCEs for cases under final that are in families where the RCE has been used. There is no urgency to file your “one more” CON.

  4. One more caveat to consider – if you are relying on future divisionals to pursue additional claims to previously claimed subject matter, e.g., you plan on filing divs off your “one more” con based on a restriction requirement in that appln., your divs must comply with 37 CFR 1.78(a)(2)…meaning that the subject matter of that div cannot have been examined in
    “any prior filed application.” in scenarios where there is an extensive family, take caution with relying on a future divisional to pursue subject matter which may have already been examined….you may not be able to based on the new rules.

  5. But Bill, file the “last” application with all of the claims to all of the CIPs and get RR at that time, giving rise to rights to divisional applications. Same result=lots of new applications, but you’ve pushed out the pendency further.

  6. “You don’t need to file by October 31 to take advantage of the “one more continuation” provision. You can file that continuation at any time.”

    CAVEAT!: The “one more contiuation” rule applies to the entire patent application FAMILY, not the individual applications within the family. See Item KA-12 on page 53 of the FAQs issued by the PTO on this. Therefore, if you already have a parent application and two or more contiuation-in-part applications each stemming from that parent (i.e., multiple sibling applications), then starting 11/01 you only get “one more” continuation of any type for the entire group of applications (parent and all siblings). Since some traditional patent strategies have involved numerous CIPs (e.g., 10 or more) stemming from the same parent, failing to file continuations for each sibling by 10/31 means that thereafter only one sibling in the group has the right to a continuation. Not good news.

  7. “If you have 5 original embodiments ABCDE and you are planning to use “serial divisionals” (slides 5 and 24 of the 9/18/07 PPT presentation), they your first divisional should include (and dare I say, must include) all the claims to all four of your non-elected embodiments (e.g. BCDE).”

    I agree with Malcolm on this one, the PTO’s own slides made it clear that the divisional can be filed at any point during the pendency of the family.

    With regard to the multiple filings, I had a client with the case of four issued CIPs with claims to different genes, with one CIP still pending, and the firm decided that it was better to wait until the end of the pendency of the currently pending CIP and file one application with all of the claims to all of the CIPs and plan on getting RR. That way you have an additional period of time for the client to understand the best commercial embodiments and the claims they really want before you “burn” that final application.

    Of course, this may all be moot in just a day and a half!!

  8. “N. O. , Malcolm (read my lips), that statement has never reflected U.S. law that I can recall. You are neither entitled as a matter of right to claim the subject matter in your U.S. priority document nor your foreign priority document if it is not incorporated (or incorporated by reference) into your application.”

    Real anon, respectfully: don’t move the goalposts and argue with strawmen. You can play that game with the Examiners but don’t play it with me. You’ll lose every time.

    If I file an application with claims A, B, C, cancel C in a preliminary amendment, then file a continuation — at any point –and pursue C, I do not have a new matter issue in the US. That is what we were talking about. If you think I’m wrong, then you’re wrong.

    “Malcolm, good lawyers rarely worry about being sued by knowledgeable and sophisticated clients (i.e. a client that could appreciate your LOL logic), but sometimes we operate in a bizarro world where clients (like their lawyers) are not always knowledgeable and sophisticated.”

    That’s nice. Of course, silly clients can always find a reason to sue their attorneys so your non-answer is trivial.

    “If you have 5 original embodiments ABCDE and you are planning to use “serial divisionals” (slides 5 and 24 of the 9/18/07 PPT presentation), they your first divisional should include (and dare I say, must include) all the claims to all four of your non-elected embodiments (e.g. BCDE).”

    Again: this is incorrect and a waste of your client’s money.

  9. Malcolm, you’re assuming the client already knows what aspect is the most important part of the invention. I may be stating the obvious, but a patent represents money from sales of a patented product. At the time a patent application is filed, the client may not know which aspect will sell the best. Certainly my clients are not first selling the product to find out whether it’s worth protecting, then filing to beat their 102(b) on-sale date. They’re filing as soon as they come up with the idea to make sure their competitor doesn’t file on it and exclude them from the market.

  10. “No, it’s not “new matter” because the claims appear in the priority application.”

    N. O. , Malcolm (read my lips), that statement has never reflected U.S. law that I can recall. You are neither entitled as a matter of right to claim the subject matter in your U.S. priority document nor your foreign priority document if it is not incorporated (or incorporated by reference) into your application. (In cases where the omission of a drawing sheet or specification text is “inadvertent” in a child case, there may be recourse under 37 CFR 1.57(a).) Additionally, you are only allowed to incorporate by reference “essential” subject matter (subject matter which is needed to support a claim) by reference to a U.S. patent or a U.S. patent publication, and you must use the magic words “incorporat[e by] reference” which few people do when claiming priority. (Of course this trick cannot work in our hypothetical with the parent patent because the claims to C didn’t issue with it, and good luck if the claims to C didn’t publish with the application either, e.g. because you added them by preliminary amendment or you had a non-publication request).

    Yes, it used to be common practice to “duplicate” at least the independent claims in the summary of the invention, but that is no longer always advisable for a number of reasons.

    P.S. Malcolm, good lawyers rarely worry about being sued by knowledgeable and sophisticated clients (i.e. a client that could appreciate your LOL logic), but sometimes we operate in a bizarro world where clients (like their lawyers) are not always knowledgeable and sophisticated.

  11. NL, the answer to your first scenario is yes. You can delete priority claims and the effect is as if they were never made. Once processed, the continuity data tab in PAIR will not display deleted priority claims. I have been doing a lot of this recently. See the USPTO FAQ #B12. I suggest when deleting priority claims (actually a spec amendment amending the first paragraph) you also file a request for a corrected filing receipt. This seems to help get it over to the right place at the USPTO. Wait two weeks, and if the priority still isn’t removed in PAIR, then file a “SECOND REQUEST [boldface and underlined to get their attention] for a corrected filing receipt.” That should do the trick. Of course, only do this if you are sure you don’t need the priority claim, because you won’t be able to add it back since a petition to add an unintentionally delayed priority claim can’t be filed now.

    Since the deletion of the priority claim is really a spec amendment, I assume it can be made at any time that you can amend the spec– even after allowance (but under rule 312 this is at the discretion of the examiner).

    What is messed up is we don’t even know if the rules are going to go into effect on Nov. 1! We would all be wise to wait until at least then to start deleting benefit claims.

  12. Hello all,

    I posed this question earlier in a different posting but didn’t get too many responses so perhaps that was the wrong forum.

    Couple of questions re. deletion of priority claims (I hope this is the right place to post them):

    o Does the deletion of a priority claim have a retroactive effect? In other words, is it as if the priority claim were never made? Consider the following scenario – Application “A” is filed and then application “B” is filed, claiming priority from application A. Applications A and B are taken up for prosecution. The Examiner finds very close art for Application B and the applicant decides he wants to abandon the application. The USPTO has already said that abandoning the CON (i.e. application “B”) will not allow the applicant to file 2 more CONs from application A, whether or not B is abandoned prior to or after examination. However, what if the applicant were to delete the priority claim prior to abandoning application B? Would application A then be entitled to two more CONs?

    o Related question – can the priority claim be deleted at any point before/during/after prosecution (e.g. after allowance)?

  13. “You want to prosecute *fully* you client’s most important inventions (and the way the new rules are set up, you may have to do that from a divisional). I don’t play games with my client’s property, but I do zealously protect it to the extent the law/regulations permit (and I can be sued if I don’t.)”

    LOL. Clients are going to sue their attorneys if they prosecute their most important inventions in a non-divisional patent application?

    Would you advise a new client to do that to his old attorney?

    If so, I respectfully submit that we’ve moved past bizarro world.

  14. “The claims are part of the original “specification” for the purpose of “new matter” determination. If your original application claims ABCDE, and your second (serial divisional) application claims only B (like you suggest), and your third (serial divisional) application claims only C, then to the extent that the wording of your “C” claims do not correspond exactly in scope and limitation to your detailed description you have just erred and added new matter”

    No, it’s not “new matter” because the claims appear in the priority application. I don’t recall the law being changed in that regard — at least in the US. Nevertheless, standard practice where I’m coming from has always been to repeat the originally filed claims in the specification (usually in the summary of the Invention section) so it’s not an issue for me.

    “the purpose of these rules is to provide “notice” of claims to the public, then the way they’ve set up divisional-continuation claiming is absolutely horrible”

    I disagree. The “notice” aspect comes from the fact that Applicants are more limited in terms of what they will be able to dig out of a pending application years after filing. In any system –including this new one– folks are going to have to look up pending applications and file histories to figure out what is being prosecuted and what is prosecutable down the road.

  15. Rule Tool, say you file a continuing application on Nov. 8 that has two voluntary divisionals in its parentage (say one of the divisionals was filed on August 22, 2007). Does that Nov. 8 continuing application satisfy any of 1.78(d)(1)(i) through (d)(1)(iv)? Remember, for an application to be considered a divisional under 1.78(d)(1)(ii)(A) or 1.78(d)(1)(iii)(A), it *must* satisfy “paragraph (a)(2) of this section” which your voluntary divisionals cannot. Do you see how the November 1, 2007 effective date apparently retroactively taints the pre-November 1, 2007 parentage of your November 8, 2007 filing?

  16. ” asked the PTO how about this in an email-will applications filed as divisionals (some 2 years ago) still count as divisional?”

    I believe the new rules are explicit that the new definitions for continuations and divisionals apply only to applications filed on or after Nov. 1. So a divisional application filed last July (off an application filed even earlier) is still a divisional, even if it doesn’t meet the new definition.

    “The changes to 37 CFR 1.78(a), 1.78(d)(1), 1.495 and 1.704(c)(11) are
    applicable only to any application, including any continuing application,
    filed under 35 U.S.C. 111(a) on or after November 1, 2007″

  17. “Doesn’t anyone find it the least bit odd that the PTO’s rules limiting examination inspire attorneys to AVOID prosecuting their client’s most important inventions?”

    Malcolm, neigh! Neigh!!! You want to prosecute *fully* you client’s most important inventions (and the way the new rules are set up, you may have to do that from a divisional).

    I don’t play games with my client’s property, but I do zealously protect it to the extent the law/regulations permit (and I can be sued if I don’t.)

  18. No Malcolm. Read the rules – you only make one election at a time (i.e. your first election in your original application is never for the claims you will present in a divisional).

    If you have 5 original embodiments ABCDE and you are planning to use “serial divisionals” (slides 5 and 24 of the 9/18/07 PPT presentation), they your first divisional should include (and dare I say, must include) all the claims to all four of your non-elected embodiments (e.g. BCDE).

    The claims are part of the original “specification” for the purpose of “new matter” determination. If your original application claims ABCDE, and your second (serial divisional) application claims only B (like you suggest), and your third (serial divisional) application claims only C, then to the extent that the wording of your “C” claims do not correspond exactly in scope and limitation to your detailed description, you have just erred and added new matter (because you didn’t carry the “C” claims forward while only the second application was pending) and/or you have just lost your priority date, unaware.

    EXAMPLE: Say your specification says a connecting rod is “U-shaped” in the preferred embodiment, and your “C” claims say “substantially U-shaped”, the “C” claims would be new matter (since the specification doesn’t support anything less than U-shaped which the claims now do). [The claims almost never correspond word-for-word to the detailed description, not are they required to since they are themselves part of the specification.]

    Makes any sense? :-) If the purpose of these rules is to provide “notice” of claims to the public, then the way they’ve set up divisional-continuation claiming is absolutely horrible (because anyone can hide claims to E in a continuation of B, which isn’t “right”). But I have serious doubts that the folks who wrote these rules understood many of the implications of what they were writing. They are (and will create) a mess both for patent applicants and for the public.

  19. “creative “Divisional Continuation Claiming” ”

    That’s an awful of strategery. It seems like something one would do only if one didn’t have much of an invention in the first place and needed to go to extreme lengths to ensure that, at some point, a lazy Examiner let something slip through the cracks.

    Doesn’t anyone find it the least bit odd that the PTO’s rules limiting examination inspire attorneys to AVOID prosecuting their client’s most important inventions? That would seem to suggest that the PTO was onto something when they enacted the rules.

  20. “So if your original application has 5 embodiments (ABCDE) and you elect A, you better make sure *each* of your DIVS from that application include all the claims to the other four embodiments BCDE. Then during prosecution of each DIV, you will have to elect again (say e.g. you elect B). ”

    Huh? Why would you do this unless you were just trying to waste your client’s time and money? You file the div with the claims to your elected invention, and you point that fact out. Then those claims are examined on the merits.

  21. A CON of a DIV can claim any invention (elected or not) originally claimed in the DIV. See 1.78(d)(1)(iii)(B).

    So if your original application has 5 embodiments (ABCDE) and you elect A, you better make sure *each* of your DIVS from that application include all the claims to the other four embodiments BCDE. Then during prosecution of each DIV, you will have to elect again (say e.g. you elect B). Thereafter, your CONS from that one DIV (where you elected B) can be directed to e.g. C and E, or D and E, or E and E.

    This will open whole new strategy doors, like requesting deferred examination (37 CFR 1.103) in a CON of a granted DIV to see which of the elected embodiments in your other DIVs may need another bite of the apple.

    [It may also make you want to elect the *least* important embodiment in your SRR with your original application, because only that first elected embodiment, A in the example above, will be limited to two continuations.]

    NIPRA plans to publish a page on this creative “Divisional Continuation Claiming” should the rules go into effect….

    link to nipra.org

  22. “I guess I don’t understand the urgency of filing con’s prior to Nov. 1, unless you know you need to file the con within the next couple of months b/c you are in final having a difficult prosecution … – then I would agree to do it before Nov.1 in the event the retroactive part of the rules is eliminated, and therefore won’t apply to the con. ”

    I agree.

    “Why file before Nov. 1: If you want to file lots of continuations then you should do it now.”

    If you want to file lots of continuations, then hire a crappy patent attorney.

  23. Exactly. Half of my divisionals would qualify as “voluntary” under new rules. Claims that were refused consideration under constructive election, or my favorite, the verbal OK on a verbal restriction requirement. I asked the PTO how about this in an email-will applications filed as divisionals (some 2 years ago) still count as divisional?

    Also, there is no place that actually states that a con off of a div at this point would not be restricted in claim scope. I understand the reasoning and logic, but there is an assumption there-

    Guess what –no answer

  24. Again, you have to be careful. I guess I don’t understand why you might want to file lots of continuations based on one patent application, except for the reasons I gave earlier or maybe you have a notice of allowance and you want to keep a con on file (some call that abuse of the system – I disagree) If the idea is that you have a massive application exceeding the 5/25 rule, splitting it up into several con’s now won’t necessarily help you unless you are certain the claims are distinct – that is when you need to file the SRR.

  25. Could anyone please give me a reasoned answer for this:

    If I have previously filed voluntary “divisionals”, are we sure whether or not the USPTO will be re-characterizing those previously-filed divisionals as “continuations” after November 1, 2007?

    Thank you.

  26. I guess I don’t understand the urgency of filing con’s prior to Nov. 1, unless you know you need to file the con within the next couple of months b/c you are in final having a difficult prosecution or for some other reason – then I would agree to do it before Nov.1 in the event the retroactive part of the rules is eliminated, and therefore won’t apply to the con. Or you had to file a con in Sept, for e.g., (and had already filed some con’s or CIP’s previously) and know you need to file CIP – then you need to file that CIP now, since the filing of the Sept. con precludes the future filing of the CIP. But absent some clear reason, I don’t know why anyone would just file con’s for the heck of it prior to Nov. 1 – save it for when you really need it, esp. if you have filed one or more con’s previously.

  27. I think that filing Cons is only reasonable if you have a patent family where you have filed voluntary divisionals or where you filed Parent –> Div1 –> Div2 –> Div 3, where each divisional is to different subject matter. If you wait until after Nov. 1, you will only be able to file “one more” but you can’t file divs off that one more, because the subject matter of those divs will have already been examined.

  28. It all depends on if there is a loophole or not – and who knows if there really is – as the PTO sure does not.

    GSK needs to get more of the inconsistencies in the enforcement and teaching of the office into their reply brief. If the office has spent all this money, how come they don’t understand the rules?

  29. If you file a con before 10/31, you incur the disadvantage of losing pendency much sooner. If you wait, and wait until for all your pendencies are about to run out, then file the “one more con” far down the line, you can still use it to invoke restrictions, and divs with cons. The rules are clear: file a con before Nov. 1 and you lose the “one more con” that you can file at any time when another app is pending (so long as it is filed before Aug 21). Why file it now? Only reason to file before 10/31 is to file more than one, but then you need separate distinct claims etc. etc. In theory, you should be able to get restrictions to the same effect later.

  30. “You don’t need to file by October 31 to take advantage of the ‘one more continuation’ provision.”

    Yes, but you may need to file your parallel continuations by Oct. 31 to take advantage of the “one more” type RCE provision the USPTO appears to have *inadvertently* included in new Rule 114. Analysis (not legal advice) is here:

    link to nipra.org

  31. Am I missing something? You don’t need to file by October 31 to take advantage of the “one more continuation” provision. You can file that continuation at any time. I certainly understand why some fee it is important to file new applications by Oct. 31 (in case the rules are modified to eliminate retroactive effect, but are still effective as of Nov. 1 for new applications), but not so much for filing continuations.

  32. Am I missing something? You don’t need to file by October 31 to take advantage of the “one more continuation” provision. You can file that continuation at any time. I certainly understand why some fee it is important to file new applications by Oct. 31 (in case the rules are modified to eliminate retroactive effect, but are still effective as of Nov. 1 for new applications), but not so much for filing continuations.

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