Rule Changes Triage: Dealing with already pending claims prior to November 1

PatentLawPic061Patent prosecution attorneys are dealing with dozens of fires started by the new PTO rules.  This post deals only with the quickly approaching deadline of November 1, 2007 when the new rules become effective. The following tips come from practicing patent attorneys dealing who suggest potential actions to be taken prior to November 1, 2007 for currently pending applications.

  • Applications under final Office Action having already filed an RCE
    • James McEwen: If there is already a request for continued examination (RCE) filed in a family of applications, and the application is currently under a final Office Action, it would be advisable to file an RCE prior to November 1 since it will be the applicant’s last chance to file such an RCE without a Petition under 37 CFR 1.114(g). 
  • Multiple Applications of a Family under separate final Office Actions
    • James McEwen: Regardless of whether an RCE has already been filed in a family, if multiple members of the family are currently under final Office Actions, file an RCE in each case prior to November 1.  Otherwise, the applicant will be limited to only one RCE in the family without the required Petition.  
  • Pending Continuations-In-Part
    • Brad D. Pedersen: Disclaim priority to parent cases. If the claims cover subject matter that was added in the CIP case, then the claim of priority to the parent cases is not necessary and actually can limit the number of other continuing applications that may be filed off that parent case. By disclaiming priority, a child CIP case will not count against the continuation limits applied to a parent case under Rule 78(d)(1)(i)B. Ideally, the parent case can be removed as obviousness-type prior art by using the common assignee invention exemption under 35 USC 103(c).
    • Brad D. Pedersen: File a table showing priority date for each claim. If some of the claims are fully supported by a parent case and need that claim of priority for prior art purposes, then a table showing the priority date for each claim should be filed by November 1, 2007 pursuant to Rule 78(d)(3). Late filing of the table may require the filing of a petition to correct the claim of priority for the application.
    • Emily Berger & Sarah Gates: Examine CIPs. Identify your pending continuation-in-part (CIP) applications and determine whether they were properly labeled as CIPs in the first place. If an application is in fact a CIP, identify those claims supported by applications in the priority chain. Under the new rules, if a rejection is traversed by stating that a claim is entitled to the filing date of an earlier application in the priority chain and that, therefore, the applied reference is not prior art to that claim, the Examiner may make the next office action final – even if new art is presented. By properly identifying the priority date for each claim, you may avoid “wasting” the Request for Continued Examination (RCE) or one of the limited number of permitted continuation applications, in order to respond to a final action.
  • Cancel Claims Subject to Restriction Requirement
    • James McEwen: It is permissible to maintain non-elected claims in an application after a restriction or election requirement.  However, when non-elected claims depend from an elected claim and the elected claim becomes allowable, the non-elected claims are rejoined and examined.  Under the new rules, the rejoinder of the non-elected claims can result in the application violating the 5/25 rule.  As an examination support document (ESD) cannot be filed after a first Office Action, it is likely that the applicant would be forced to cancel the non-elected claims due to 37 CFR 1.75(b)(1).  Moreover, as the rejoinder is technically a withdrawal of the original restriction requirement, applicant would not be able to file a divisional application containing the claims needing to be cancelled, and would instead need to use any remaining continuation applications allowed under 37 CFR 1.78.  Thus, when an application is subject to a restriction requirement, non-elected claims should be immediately cancelled so that a divisional application containing the non-elected claims can be filed and to ensure that the applicants do not accidentally violate the 5/25 rule upon rejoinder.
  • Move claims in pending applications to applications under active examination
    • James McEwen: As 37 CFR 1.75(b)(1) and 37 CFR 1.75(b)(4) do not apply to applications having received a first Office Action by November 1, 2007, such applications are prime to receive new claims without exceeding the 5/25 rule.  An example of such a circumstance may be when a provisional obviousness-type double patenting rejection is received.  Thus, patentably indistinct claims in multiple copending applications can be cancelled from applications that are merely pending, and be reintroduced in applications which are under active examination to avoid violating the 5/25 rule for multiple copending applications set forth in 37 CFR 1.75(b)(4).  A possible further benefit is that such an addition could provoke a restriction of the new claims under 37 CFR 1.145, thereby obtaining an additional two continuations and an RCE for the claims while avoiding the issues under 37 CFR 1.75(b)(4) and 37 CFR 1.78(f)(2) or 1.78(f)(3).  As such, unless filing a terminal disclaimer would result in allowance before November 1, 2007, move patentably indistinct copending claims to the application being currently examined and cancel the claims from the copending application.  

Notes:

107 thoughts on “Rule Changes Triage: Dealing with already pending claims prior to November 1

  1. So, if compliance with 1.78(d)(3) is not met, the Office will notify the applicant? If non-compliance is continued, then the consequence is that the CIP will go abandoned?

    Just trying to get a full grasp on all this jibberish . . . er . . . rules.

  2. Once you get notice in the CIP you will need to adress the issue or it will go abandoned – thus no DIV can be filed.

    You might also get reported to OED because, well…do they need a reason?

  3. Here’s a hypo:

    What happens if I file a divisional off a CIP for which compliance with 1.78(d)(3) has not been met? (Presume there are no other co-pending applications and the CIP is only being used for continuity of pending applications) Would the divisional be entitled to priority beyond the CIP, or would priority only be granted to the filing date of the CIP? If the non-compliance was unintentional, would I be able to file the petition and fee to be afforded an earlier priority date?

    Any ideas?

  4. “Does the NIPRA really address the the OG coming out Nov. 8?”

    Me, we address the OG notice to be issued on Nov. 6 in questions 22-24 and 29 of the quiz linked at:

    link to nipra.org

    Unfortunately, the USPTO may now be generating “stuff” (for lack of a better word) faster than anyone can address it….

    But we do now have a reasoned plea to the Director (which if you are reading this, Mr. Dudas, I hope you read… thank you):

    link to nipra.org

  5. Does the NIPRA really address the the OG coming out Nov. 8? Of course, since it comes out the 8th, maybe we can gain some advantage betweent he 1st and the 8th…anyone thought that through?

  6. MM: It’s pretty clear that the USPTO is attempting to deter the use of CIPs going forward by requiring the identification of priority on a claim-by-claim basis and by giving examiners the power to ask for that priority. It seems to me that the current rules package is just one step towards what you believe is “the right thing”: ending CIP practice.

    I’d have no problem with ending CIP practice either because CIP practice can be used to draft broad claims that cover both the original subject matter and the new matter, when only the original subject matter was contemplated in the original application. I would rather force applicants to get the broad claims in the original application based on its written description.

  7. MM, since the USA went to 20-years-from-earliest-filing and 18-month publication, I think CIPs are one the best things about US practice, b/c they recognize that development is an ongoing process. They thus correlate more closely to reality than the “static picture” model that exists everywhere else in the world.

  8. All this confusion could be over if the PTO did the right thing and simply said “There is no such thing as a ‘continuation-in-part.’ Either you file a continuation or you file a new application, with a new priority date.”

    I’d have no problem with that. The question is: will some industry “leaders” step up to complain that they “need” the continuation-in-part due to one or more unique aspects of the way IP is developed in their particular industry?

    I’m waiting.

  9. “It could quite possibly be alleged to mean (in the next clarification): c) ‘If the application is identified by the Office as a continuation-in-part….’”

    The only identification previously referred to in subsection 78(d)(3) is that of the “reference.” But I wouldn’t put it past the USPTO to “clarify” it as you suggest. damn passive voice.

  10. SF, I may disagree with you on Rule 78(d)(3) still. The language you quoted in 1.78(d)(3) does not say:

    a) “If an application is identified in the reference as a continuation-in-part…”; or
    b) “If an application is identified by the applicant as a continuation-in-part….”

    It could quite possibly be alleged to mean (in the next clarification):

    c) “If the application is identified by the Office as a continuation-in-part….”

  11. NIPRA has a new preliminary report on the possibility of obtaining extra RCEs in divisional families under 37 CFR 1.114(f)(3) (similar in some respects to our earlier report describing the possibility of obtaining two RCEs from parallel continuations). Comments, especially from those who feel comfortable sifting though the rules, would be *very* much appreciated before we make this page final. Thank you.

    link to nipra.org

    Earlier report:

    link to nipra.org

  12. I see Babel Boy’s point entirely. There is no way you have to identify antecedent support in a parent application under (d)(3) for any continuation application, even if it’s a continuation of a CIP. (d)(3) simply does not apply to continuation applications, irregardless of what the parent is or parents are. I think this is what SF is saying, too.

    The problem is that you may think you’ve filed a continuation because all of the claimed subject matter is old — found in the parent — but you inadvertently have a CIP on the basis of new subject matter (not claimed) that crept into the spec. This trap is due to the asymmetry of the new definitions for continuation and CIP applications, as Babel Boy points out.

    This issue now has almost 100 posts and the confusion still rages. It should be offered in evidence by Glaxo to support the arbitrary and capricious arguments.

  13. Yep, that’s what I am saying because that’s what the rule says. It’s not my job to follow some unknown intent of the rule when the text of the rule is unambiguous. But I’m sure the USPTO will “clarify” this too, if they care about it.

    Going forward, this won’t be a big deal because CIPs will be fewer and fewer. If they are ever used in the future, the applicant will have to identify their priority at that time.

  14. SF, perhaps you’ve lost me.

    My Rule 78(d)(3) reference: This application (3) is a CON of (2) which is a CIP of (1).

    So your saying that if “this application” in my reference is identified as a “CON”, then there is no identification requirement under (d)(3), regardless of whether the USPTO actually considers it a CIP under (a)(4)?

    (Scary, I can almost see your point that that’s how the USPTO will interpret it… the ultimate in form over substance.)

  15. Real Anonymous: I agree with your hypo as to how a continuation of a CIP is a CIP under Rule 78(a)(4). However, not all CIPs under Rule 78(a)(4) are subject to the claim-priority-identification in Rule 78(d)(3), which in part reads (with emphasis added):

    “The reference must also *identify* the relationship of the applications (i.e., whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application or international application). If an application *is identified* as a *continuation-in-part application*, the 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.”

    In the hypo you quoted that included INI(1)-CIP(2)-CON(3), how would your Rule 78(d)(3) “reference” identify their relationships under Rule 78(a)?

    Assuming 2 has disclosure in addition to that of 1 and assuming that 3 has the same disclosure as 2 and assuming that 1, 2 and 3 were filed serially, the identification would have to include “3 is a continuation of 2″ and “2 is a continuation-in-part of 1.”

    According to Rule 78(d)(3), how application *is identified* in the Rule 78(d)(3) reference determines whether you have to identify each claim’s priority. See id. (“If an application *is identified* as a *continuation-in-part application*…”).

    In other words, the definitions in Rule 78(a) allow one to determine how to identify the one-to-one relationship between one application to another in the Rule 78(d) “reference”, but only the particular, one-to-one references matter for purposes of whether one has to identify claim priority under Rule 78(d)(3).

    [Shakes fist and yells profanities at USPTO rule makers]

  16. “”OK, so after Nov 1, a continuation of a CIP, by definition, only discloses and claims what was in the CIP — NO NEW SUBJECT MATTER, that’s why it’s a continuation. Because it’s a continuation application, it doesn’t fall under the CIP provisions of d(3)or anything else.”

    exactly”

    I disagree – I don’t think the rule is that clear.

    After Nov. 1, I believe a CON of a CIP can be *either* a CON *or* a CIP (or both?) depending on how you read the rule (it all depends on which application “the prior-filed application” refers to). To quote again:

    “Reading 1.78(a) carefully (which you should never do), if you file this string INI(1)-CIP(2)-CON(3), then the CON(3) is under the new rules:

    a) a CON under Rule 78(a) if “the prior-filed application” in (a)(3) refers to CIP(2); and/or
    b) a CIP under Rule 78(a) if “the prior-filed application” in (a)(4) refers to INI(1).”

  17. “OK, so after Nov 1, a continuation of a CIP, by definition, only discloses and claims what was in the CIP — NO NEW SUBJECT MATTER, that’s why it’s a continuation. Because it’s a continuation application, it doesn’t fall under the CIP provisions of d(3)or anything else.”

    exactly

  18. Brad,

    Ya’ lost me again:

    “. . .a continuing application filed after 11/1/07 that would have been referred to as a “continuation of a CIP” under the old rules will be a CIP under 1.78(a) if filed after 10/31/07, so 1.78(d)(3) will apply.”

    That is only true if your CIP has been transformed to a CIP by virtue of new subject matter disclosed but not claimed.

    To wit (I love that phrase):

    78(a)(4): a CIP is a continuing application as defined in (a)(1) .. that discloses subject matter not disclosed in the prior-filed application. [No mention of what's claimed.]

    78(a)(3): a continuation application is one that discloses AND CLAIMS only subject matter that was disclosed in prior application.

    OK, so after Nov 1, a continuation of a CIP, by definition, only discloses and claims what was in the CIP — NO NEW SUBJECT MATTER, that’s why it’s a continuation. Because it’s a continuation application, it doesn’t fall under the CIP provisions of d(3)or anything else.

    How do you reach the contrary conclusion that a continuation application of a CIP is a CIP after Nov 1? Read on. . .

    For an additional element of PTO idiocy consider that a CIP is defined on the basis only of what is disclosed, not what is claimed. The old Rule 53(b) was a CIP “may disclose and claim” new subject matter. I know of no case law where merely disclosing new matter, without claiming new matter, converted a continuation to a CIP. But that’s what happens now.

    If you claim no new subject matter in the child, but you have one paragraph of new subject matter in the spec — that paragraph transforms your continuation application to a CIP, according to 78(a)(4).

    But under Rule 78(b)(3) you have to identify the claims in your transformed CIP that are supported by the parent application. But you don’t have any such freakin’ claims because the only new matter in the child is in the spec.

    I’m going to go out and buy $5000 shares of Glaxo, just to show them my appreciation.

    Beam me outta’ here, Scotty.

  19. Sorry–in my excitement over noticing this first on another website, I overlooked Dennis’s post on it. But since the Rules have been consuming my life, I was expecting any such suit to be announced in all caps, at least! ;)

  20. Brad, good point about the (possible) change in the definition of CIP after Nov. 1, 2007. Perhps a good strategy is then to file your continuations early/often (i.e. before Nov. 1, 2007) if we assume these rules will actually be going into effect (which may not be a good assumption).

    Reading 1.78(a) carefully (which you should never do), if you file this string INI(1)-CIP(2)-CON(3), then the CON(3) is under the new rules:

    a) a CON under Rule 78(a) if “the prior-filed application” in (a)(3) refers to CIP(2); and/or
    b) a CIP under Rule 78(a) if “the prior-filed application” in (a)(4) refers to INI(1).

    Looks like they haven’t given “proper antecedent basis” for the phrase “the prior-filed application”. Could we reject them?

    It seems to me like the entirety of 1.78(a) doesn’t give a patent applicant adequate notice as to how the US[A-P]TO will categorize applications (and whether they will be trying to re-categorize applications filed before Nov. 1, 2007 using the brand new pigeonholes of 1.78(a)).

    New Rule 1.78(a) is very poorly written and will need to be “waived” and clarified left and right by the US[A-P]TO.

  21. If an application is a continuation of a CIP, it is not a CIP. It’s a continuation and, therefore, is beyond the scope of the rule.”

    Yes and no. A currently pending continuation is not subject to 1.78(d) because under 1.78(a) it is a continuation not a CIP and therefore 1.78(d)(3) does not apply; however, a continuing application filed after 11/1/07 that would have been referred to as a “continuation of a CIP” under the old rules will be a CIP under 1.78(a) if filed after 10/31/07, so 1.78(d)(3) will apply. It remains to be seen whether you could remake the “continuation of a CIP” filed after 10/31/07 into a legitimate continuation by deleting the subject matter that was added into the CIP and therefore, theoretically, taking the case out of the scope of the definition of CIP that applies to any case filed as of 11/1/07.

  22. “If an application is a continuation of a CIP, it is not a CIP. It’s a continuation and, therefore, is beyond the scope of the rule.”

    RTFR is apparently correct today (but may not be tomorrow). I received an e-mail containing the USPTO’s own responses to 9 questions, including this one:

    “If a pending case is itself not a CIP, but there is a CIP in the chain of parentage for that case, do the requirements of Rule 78(d)(3) to identify the claim of priority for each claim apply to the claims of the pending case?

    No.”

    Hearsay, yada, yada, yada. I know.

  23. “I’m betting the USPTO is going to try to “clarify” this too…although to me that smacks of amending the rule as written.”

    I wouldn’t put it past them. In “clarifying,” they essentially rewrote “examined in any prior filed application” to mean “examined in a US nonprovisional or a US-nationalized PCT)” — thus excluding PCT Chapter II examination. Why wouldn’t they rewrite “continuation-in-part” to mean “continuation-in-part or any application claming the benefit thereof”?

  24. “Don’t they need to go through rulemaking again if they screwed up when they wrote the rule? Oh wait, the rulemaking rules don’t apply to the USPTO…”

    No kidding. These rules should have gone through another notice and comment period to allow them to address their ambigiuties and omissions. Unfortunately, the USPTO was more interested in getting them done, instead of getting them right.

  25. HP, thanks for posting the link, I’m pretty pissed about the hours I spent culling through various copending filings in preparation for compliance with 1.78f, *before* the USPTO posted its “clarification” yesterday. Thanks guys. Incompetent rulemaking might be “good enough for government work” but it sure ain’t good enough for the real world.

    BfishyB: I agree it seems odd that if I got a restriction requirement in a pending CIP, and file a divisional after Nov. 1, that I shouldn’t have to make a statement at the time I file the divisional about support in the predecessor apps for the divisional claims. I’m betting the USPTO is going to try to “clarify” this too…although to me that smacks of amending the rule as written. Don’t they need to go through rulemaking again if they screwed up when they wrote the rule? Oh wait, the rulemaking rules don’t apply to the USPTO…

  26. While RTFR’s reading of the rule regarding CIP support may be literally correct, I don’t think it’s in the spirit of what the rule is trying to achieve. I would be conservative and comply with the logic of the rule, rather than risk giving the examiner an excuse to make the second OA final.

  27. Bierbelly said: “A FAOM is the first action that actually deals with the substance of the claims, i.e. patentability, 112 issues and the like, usually from the actual examiner. A written restriction requirement is NOT a FAOM.”

    Understood, but the question is whether an RCE “restarts the clock”, so that the next office action after an RCE is a FAOM.

  28. pat atty: As noted above, the identification required by Rule 78(d)(3) does not apply to the claims of descendants of CIPs because the rule refers to the claims in the CIP itself — not the claims in any descendant of a CIP.

    “If an application is identified as a continuation-in-part application, the 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.” 72 FR at 46839 (emphasis added).

    If an application is a continuation of a CIP, it is not a CIP. It’s a continuation and, therefore, is beyond the scope of the rule.

  29. Does anyone know:

    (1) if I have pending a continuation; and
    (2) the continuation claims priority somewhere in its lineage to a CIP;
    (3) do I have to comply with with 1.78(d)(3) requirement of showing support on a claim by claim basis?

  30. What if we do the following:
    a) file a PCT and a US Non-Provisional on the same day;
    b) prosecute the US Non-Provisional – get rejections, learn what the Examiner wants, etc.
    c) before the PCT nationalization deadline, abandon the US Non-Provisional.
    d) nationalize the PCT – maybe with a preliminary amendment that overcomes the prior art cited by the Examiner – this could save me an RCE – that’s what I use RCEs for ANYHOW.

    Will the nationalized PCT be entitled to one fewer continuation ?????

    Please answer !!!

  31. A FAOM is the first action that actually deals with the substance of the claims, i.e. patentability, 112 issues and the like, usually from the actual examiner. A written restriction requirement is NOT a FAOM.

  32. A new – and hopefully easily answered – question, I believe – when is an office action a FAOM? Specifically, is the next office action after an RCE an FAOM, or not? My guess is that it is not, but I would definitely like some reassurance of this, for 5/25 reasons mainly. I don’t think I’ve seen this in the PTO FAQ’s, or elsewhere.

  33. Thanks to everyone for the helpful and detailed comments here–they’re really helping me as I try to overcome my whiplash and navigate through the rules.

    Thanks to several people for noting the different definitions of “examined”–it will be interesting to see how it gets worked out. In the meantime (“interestingly” for our patent rights), based on the interim interpretation of “examined,” we decided not to file a demand in a PCT which we plan to prosecute in both the US and the EP. Unfortunately, there will soon also be new rules in the EP (EPC2000) which will penalize Applicants for *not* filing a demand–so probably we’re going to have to pay a bunch of extra examination fees in this case, as a direct result of the PTO’s “arbitrary and capricious” disregard for the impact of their flip-flopping (sorry–the technical term for this escapes me because I’m so annoyed). Gee, do you think we could petition to file the demand after the deadline, based on reliance on the PTO’s interpretation of “examined” from Aug. 21 to Oct. 10??? I’m not going to hold my breath.

  34. Posthumous wrote:
    “How much support would there be from the professional community for such a suit in terms of: affidavits, expert testimony, brain-storming, drafting/reviewing pleadings, et al support? I am only admitted to the Western Div of Va., but would prefer to file on the west coast. Anyone have an inclination to get involved?”

    One of my biggest regrets right now is that I am not in a position to do this myself, as I would dearly love to file such a suit. However, I think there are many patent professionals (myself included) who would be willing and able to contribute at least a small amount of personal money–perhaps as much as I used to spend on ABA or AIPLA dues, since they are clearly not representing my interests. Perhaps there are some law students who could be recruited to do some of the briefing and research, and I’m sure you could get helpful input from many of the people who post on this site (pro and con).

    I think the fact that the PTO is publishing substantial “clarifications” and modifications to the rules within three weeks of the effective date is further evidence that the rules and the process that generated them are all deeply flawed.

  35. Has anyone looked at the question of what constitues “commonly owned” for the purposes of 37 CFR 1.78(f)? The USPTO says it means the same thing as under 35 USC 103. MPEP 706(2)(l) gives various examples, but without legal support.

    I am most curious about the USPTO’s ability to require a parent corporation to cull through the applications of subs, and subs of subs, etc. in order to comply. Oftentimes, these different legal entities have separate docketing systems. Additionally, it might be that a given inventor might work for the different legal entities at different times.

    While the USPTO’s position was great when it came time to disqualify prior art under 102(e), (f) or (g), it seems to be a big (undue?) burden now.

  36. Obviously, these new rules have caused massive confusion and expense to all of us. What I would really like to know is, how is Dr. Tafas coming along??

  37. The office itself hasn’t decided how the rules will be further “clarified.” The examining corps hopes to have training on the new rules by the END of November. Guess we’ll just make it up as we go between the 1st and then.

  38. Actually, I don’t think there is any way that the USPTO could interpret “examined” differently in 1.78(a)(2) — they must be stuck with the same meaning they espoused for “examined” in 37 1.78(d)(1)(ii)(B).

  39. There’s nothing in the clarification that makes it more likely that the waiver of 78(d)(4) applies to the 78(d)(3) identification of claims because there’s nothing in the clarification that indicates whether the identification is part of the “reference” required in 78(d)(3).

    But, assuming that the identification *is* part of the “reference,” the deliberate failure to identify claims under 78(d)(3) could not be remedied by a petition under 1.78(e) because the delay would not be “unintentional” as required by 1.78(e)(3).

  40. Sorry for the radio silence on this thread – too many clients with too many questions.

    It looks like the very recently posted “Clarification” confirms my interpretation that the 1.78(d)(3) requirement could have been interpretted as requiring submission of the table showing support by 11/1/07 in order to avoid the default of having priority be limited to the filing date of the CIP. The delay until 2/1/08 seems consistent with the 4 month requirement of 1.78(d)(4) (in this case 4 months from the effective date of the rules) and the 1.78(f) requirements, so it is not surprising.

    Like almost every other aspect of the rules, however, even this obligation was never a complete loss of rights. There is typically some kind of savings provision, petition or other option that can be taken to preserve rights, just that all of the options would be more expensive (in the case of missing the 1.78(d)(3) date, an applicant could recover the earlier claims of priority by submitting the table late and then filing a petition under 1.78(e) with a fee of $1365 for acceptance of late presentation of priority claim). The rules are not only complex and mind-numbing, they are devious in the way in which applicants are herded into a preferred path of prosecuting applications without every completely foreclosing alternative paths. Given the rumors that swirled about regarding potential lawsuits over the new rules, this approach makes complaints about the new rules very difficult to sustain.

    I will update my response later after I have had a chance to more fully review the clarification.

    Brad

  41. real anonymous: That’s the way I read it. Rule 1.78(d)(3) identification of priority for individual claims is due as of filing for all applications filed on or after November 1, 2007. But the penalty for failing to do so remains unclear. (Basically, only a risk that the examiner can go final where the examiner changes the rejection based on the applicant’s assertion of an earlier priority date.)

    On another note, it appears to me that there is *no* duty to provide an identification for claims in a descendant of a CIP. Consequently, if you have a CIP somewhere back in your priority chain, the rules don’t apply because they specifically refer to the claims in the CIP itself — not claims in any descendants of a CIP.

    And, yes, I would respectfully request that the USPTO clarify their clarification as to Rule 78(a)(2).

  42. “Is this really a clarification if they discuss the meaning of “examined” as used in 37 1.78(d)(1)(ii)(B), but are silent as to the meaning of examined in 1.78(a)(2)?”

    What are you looking for, SF, a clarification of the clarification? :-)

    Perhaps you needn’t wait too long.

  43. O.K. from the clarification linked to by hp:

    1) For CIPs in which FAOM has been mailed before Nov. 1, 2007, compliance with 37 CFR 1.78(d)(3) is waived;

    2) For CIPs filed before Nov. 1, 2007, the compliance date is Feb. 1, 2008 (but according to FAQ B10, if you delay the identification until after the FAOM, the Examiner can thereafter change his rejection and make it final).

    3) For applications filed on or after Nov. 1, 2007, is compliance needed upon filing? (That is, is there no 4/16 grace period like in 1.78(d)(4)?)

  44. Is this really a clarification if they discuss the meaning of “examined” as used in 37 1.78(d)(1)(ii)(B), but are silent as to the meaning of examined in 1.78(a)(2)?

  45. “The USPTO has posted a “clarification” of their suckwad rules package… waiving the items folks are most up in arms about:”

    I guess that’s a good thing. So, uh, what other obnoxiousness would we like waived? Maybe we can knock these pins down one by one by the sheer force of our collected grumblings.

  46. Inquiring Mind – one of their “waivers” hp linked to (be sure to thank the Director):

    This notice is also clarifying the meaning of the term “examined”
    as used in 37 CFR 1.78(d)(1)(ii)(B): 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 that occurs as a result of the
    filing of a Demand for international preliminary examination.
    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). The question and
    answer (C11) on this issue that was originally posted on September
    26, 2007, will be revised for consistency with this notice.

  47. This is obscene. We are, what?, 55 comments into this thing, and we still haven’t got it sorted out. That’s just the question of when does one have to file notice under one rule. How do you think this blog would look if entered into evidence in a federal suit against the PTO?

    I am in the early stages of assessing the propriety, potential utility of, and grounds for filing a complaint in a USDC seeking a mandamus that the PTO withdraw the new rules, seeking to enjoin enforcement of the rules, seeking a DJ on the legality of the rules under the APA, and the constitutionality of the rules under the Due Process Clause, and seeking fees under the Equal Access to Justice Act.

    How much support would there be from the professional community for such a suit in terms of: affidavits, expert testimony, brain-storming, drafting/reviewing pleadings, et al support? I am only admitted to the Western Div of Va., but would prefer to file on the west coast. Anyone have an inclination to get involved?

  48. Sorry-correction:

    Question B10 in the most recent FAQ seems to say what happens if you ***fail to*** identify support before a FAOM.

  49. Question B10 in the most recent FAQ seems to say what happens if you identify support before a FAOM. Looks like it increases the chances of the next OA being made final, which is the nastiest thing they can do to you in the new one-RCE-per-family reality:

    B10. What happens if applicant inadvertently fails to identify the claims in a CIP application for which the subject matter is disclosed in the manner provided by 35 U.S.C. 112, 1, in the prior-filed application? (Posted on 8/21/07)

    Applicant must identify the claim or claims in the CIP application for which the subject
    matter is disclosed in the manner provided by 35 U.S.C. 112, 1, in the prior-filed
    application. See 37 CFR 1.78(d)(3). Any claim in the CIP application for which the subject matter is not identified as being disclosed in the manner provided by 35 U.S.C. 112, 1, in the prior-filed application, will be treated as entitled only to the actual filing date of the CIP application, and will be subject to prior art based on the actual filing date of the CIP application. To avoid any unnecessary delay in the prosecution of the application, applicant should provide the identification before the examiner begins to conduct a prior art search. If the failure to identify the claims for which the subject matter is disclosed in the manner provided by 35 U.S.C. 112, 1, in the prior-filed application, causes the examiner to include a new prior art rejection in a second or subsequent Office action, the inclusion of the new prior art rejection will not preclude the Office action from being made final.

    Furthermore, in situations in which it is not readily apparent where the specification of the application, or an application for which a benefit is claimed, provides written description support and enablement under 35 U.S.C. 112, 1, for a claim or a limitation of a claim, the examiner may require the applicant to provide such information under 37 CFR 1.105(a)(1)(ix).

  50. The rules say, “The changes to 37 CFR 1.17, 1.26, 1.52, 1.53, 1.76, 1.78 (except 1.78(a) and 1.78(d)(1)), 1.104, 1.105, 1.110, 1.136, 1.142(a), and 1.145 are applicable to any nonprovisional application pending on or after November 1, 2007.” FR 46717

    Thus, to answer JN’s question, the Examiner could ask for that priority information. (See also FAQ B10.)

    In view of this statement in the rules, isn’t 1.78(d) compliance required as of November 1, 2007 for any pending nonprovisional application because there is no other compliance date exception?

    As mentioned above, there doesn’t appear to be any consequences for failing to make this identification. (1.78(d)(4) only discusses the priority claim reference for the application as a whole, not the identification of priority for individual claims.) Thus, Brad’s statement regarding that the identification “should” be still needs some explanation.

  51. I agree with BabelBoy: Brad Pedersen needs to justify his assertions that “a table showing the priority date for each claim should be filed by November 1, 2007 pursuant to Rule 78(d)(3)” and that “[l]ate filing of the table may require the filing of a petition to correct the claim of priority for the application.”

  52. Assuming that 1.78(d)(3) applies only to applications filed after 11/1/07, could the Examiner request the same info under 1.105(a)(1)(IX) for CIPs filed prior to 11/1/07. I guess my question is, do we know to what applications 1.105(a)(1)(IX) applies?

    Thanks

  53. In the absence of any rule-mandated consequences for failing (intentionally or inadvertently) to identify the supported claims of the CIP, it may be that the USPTO intends to just examine all CIPs as if they are entitled only to their actual filing dates and then request, if the applicant believes that the claims are supported by the earlier application, that the applicant provides proof of the earlier effective filing dates. (See FAQ B10 — noted by BabelBoy above.)

  54. After plowing through Rule 78, I think the answer to the CIP question is in 78(f)(1). A CIP is (usually) within the scope of subs (A)-(C), and claims priority to the filing date of its parent…therefore it’s deemed to be “filed on the same date” as the parent (at least as to patent term).

    FR 46717 indicates the compliance date for 78(f)(1) is the later of the period in 79(f)(2) or 2/1/08.

  55. I’m tellin’ you guys, gals, whatever, FAQ B10 is the sword of Damocoles that cuts this Gordian knot like a knife through hot butter, to borrow a phrase or two.

    It says that if you identify your Section 112 support prior to the FOAM on the CIP, you can speed the process up a bit. Does that sound like a Nov 1 deadline??????

    For those of you, like me, who couldn’t find the flippin’ FAQs, they’re buried here: link to uspto.gov

    I’m still waiting for Brad Pedersen, who kicked this whole thing off, to step back in here and tell us what he was thinking when he said there was a Nov 1 deadline for Rule 78(d)(3). I don’t think there’s a Nov 1 deadline for anything.

    Eventually, we will reach a critical mass of sufficiently pi$$ed off patent attorneys who realize that the windfall in fees they’ll get to sort out these rules for their clients is not worth the aggravation — or the threat of malpractice and ethics complaints, which Dudas repeatedly threatens in the FR. At that point the courts will have to step in.

  56. “apparently the current HTML version of the 9/18/07 presentation says 1.78(d), whereas the current PPT version of the 9/18/07 presentation says 1.78(d)(1).

    Any votes on which one will trump the other, and when the USPTO will fix the apparent error?”

    I would like to believe that the 1.78(d) reference is the correct one, but I fear that since the FR refers specifically to 1.78(d)(1), it does worry me.

    Counter point – would it not be reasonable to deduct that unless it is specifically mentioned, the revised rules would only apply for applications filed after November 1?
    or am I again being too naive?

  57. TMA: As real anonymous noted, 78(d)(4) gives the date for 78(d)(3)’s “reference” to priority applications — not 78(d)(3)’s “identification” of claims. If the reference doesn’t include the identification, there is no articulated identification-compliance deadline (other than the effective date of the rule) and definitely no articulated consequences for failing to make such identification.

  58. O.K., folks, apparently the current HTML version of the 9/18/07 presentation says 1.78(d), whereas the current PPT version of the 9/18/07 presentation says 1.78(d)(1).

    Any votes on which one will trump the other, and when the USPTO will fix the apparent error?

    It’s like a comedy.

  59. “How come you see something different?

    Now I am truly perplexed and bewildered!”

    TMA, did you see the two slides we linked at:

    link to nipra.org

    Those are straight from the PPTs, honest, and that’s what I’m seeing! Also, we know (?) 78(d)(4) gives the date for the “reference” – what we are looking for is a date for the “identification” which most people think is/should be separate from the “reference”.

  60. “Alas, you’re looking at outdated presentations….”

    But I copied the section from the 9/18 presentation (in html format:
    link to uspto.gov )

    How come you see something different?

    Now I am truly perplexed and bewildered!

  61. “where does Rule 78(d)(4) refer to the (d)(3) “identification”?”

    In the revised 1.78(d)(4) it says:

    “(4) The reference required by 35
    U.S.C. 120 *and paragraph (d)(3)* of this
    section must be submitted during the
    pendency of the later-filed application.
    If the later-filed application is an
    application filed under 35 U.S.C. 111(a),
    this reference must also be submitted
    within the later of four months from the
    actual filing date of the later-filed
    application or sixteen months from the
    filing date of the prior-filed application.

    See FR 46839

  62. TMA, you’ve got an eagle eye! But, alas, you’re looking at outdated presentations….

    In the 8/21/07 PPT presentation:

    “The rule changes to continuing application practice under § 1.78(a) and § 1.78(d) are applicable to:
    o Applications* filed on or after November 1, 2007; and
    o Applications entering the national stage on or after November 1, 2007.”

    In the 9/18/07 PPP presentation:

    “The rule changes to continuing application practice under § 1.78(a) and § 1.78(d)(1) are applicable to:
    o Applications* filed on or after November 1, 2007; and
    o Applications entering the national stage on or after November 1, 2007.”

    See that difference? Initially in the 8/21/07 presentation, the USPTO was apparently (?) operating under the assumption that all of Rule 78(d) did not apply to applications filed before Nov. 1, 2007. But then in the 9/18/07 presentation, they started following the FR (at 46716 and 46717), saying that only Rule 78(d)(1) did not apply to applications filed before Nov. 1, 2007! Is this, by any chance, arbitrary and capricious rulemaking? Is the USPTO making Rule 78(d)(3) apply to pending applications when you didn’t actually mean to?

    NIPRA has a preliminary page up on the possible implications of this (which will need to be further researched and perhaps expounded):

    link to nipra.org

  63. Don’t you think it is a bit simpler: the deadline to submit the 1.78(d)(3) identification, is the same deadline we always had to keep for submitting the reference to an earlier application (clearly so since 1.78(d)(4) which outlines the deadline, refers both to the 35 USC 120 reference and the (d)(3) identification)
    The question whether the (d)(3) requirement applies to applications filed before November 1, 2007, still baffles me if I refer only to the FR (46716-46717). However, according to the USPTO’s ppt. presentation:
    “Continuing Applications 37 CFR 1.78(a) and (d)
    • The rule changes to continuing application practice under § 1.78(a) and § 1.78(d) are applicable to:
    o Applications* filed on or after November 1, 2007; and
    o Applications entering the national stage on or after November 1, 2007.
    • This final rule does not impact an applicant’s ability to file continuing applications between August 21, 2007 and October 31, 2007.
    *Including reissue applications, but not reexamination proceedings. ”

    From this I can only conclude that 1.78(d) and specifically 1.78(d)(3) *does not apply* to applications filed before November 1, 2007.

    Am I wrong? Anyone?

  64. Another point, in case (hopefully) somebody with more resources than us decides that the cost/benefit balance is tipping in favor of a suit against the rules: this confusion about various aspects of the rules (e.g., IPERs and DIVs; date of compliance for 1.78(d)(3)) is one of the things the Notice and Comment provisions of the Administrative Procedure Act are intended to prevent. This confusion even among patent professionals who are studying the rules and all the associated materials is further indication that the rules simply are not clear, and in some cases don’t make sense. If the final rules had actually gone through a proper Notice and Comment (as opposed to being significantly and substantively changed behind closed doors, without any opportunity for comment), people would have made these comments during that period, providing the opportunity for all these issues to be addressed *prior* to the rule being made final. PTO, you may despise patent attorneys, but this is a Very Bad Thing.

  65. Thanks, Real Anonymous, for clearly stating what I was trying to get at. I tend toward SF’s reading of 1.78(d)(3): the “reference” to prior filed apps does not need to include a statement regarding support for CIP claims in earlier filed apps; that statement is a separate requirement. If this is indeed the case, then I’m not concerned about compliance, b/c all of my pending CIPs are already compliant with respect to the “reference”.

    Of course, as someone noted above, this leaves open the question of non-compliance with the statement regarding support: if I never file such a statement, what’s the upshot for the app?

    Notwithstanding my own view, since I’m risk-averse, and the CAFC gives deference to the USPTO in interpreting its own rules, I’ll probably wimp out and file the statement regarding support on Nov. 1 in pending CIPs.

    (BTW, what are the odds that some anally retentive person at the PTO will say, “I don’t care that new rules weren’t in effect before Nov. 1; as of that date, you were more than 4/16 after the earlier filing, so you’re not in compliance, you lose your priority date”? It would make great fodder to challenge the validity of the rules.)

    Maybe it’s time for the U of C law school to offer a course in clear rule drafting…

  66. Hey BabelBoy. Publish that chart. I will buy it. I need the visual, no matter how convoluted it may be. I’m so confused. Thanks to Dudas, I now have an aversion to reading any fine print. I’m doomed!

  67. Hey,Real

    I like your part about the lithium depletion jump. By Nov 1 we’re all going to have to jump the dose on our lithium Rx!!

    Reminds me of Aug 21, the day this non-sense took flight. A guy in the building next door here in Vancouver, BC also took flight right out of a window, about 30 stories up. “Gotta’ be a US patent attorney.” I told my boss, as we watched the rescue truck pull up to the body. I was just kidding then, not realizing yet what a disaster this is. I’m not so sure now the guy didn’t take the easy way out. Like I say, patent guys and gals, double up on your lithium until we work our way through this Dudas quagmire.

    I have worked out flow-diagrams for these new rules. They give you motion sickness just looking at them. Looks like a linguini dinner.

    Babel Boy

  68. Brad or ANYONE else out there,
    I have a CIP for which I WANT to disclaim priority.

    How do I go about doing this?
    i.e. under 37 CFR WHAT???
    Is this discussed in the MPEP?
    What is UTPO form?
    Is this a petition?

    Thanks!

  69. “By this flow, is the CIP claim identification for 112 support to appear in the ‘reference’? Sure seems so by the flow.”

    That’s the ambiguity. I think the reference does not include the claim identification because the rule reads:

    “If an application is identified as a continuation-in-part application, THE 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.” (emphasis added)

    not

    “If an application is identified as a continuation-in-part application, THE REFERENCE 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.”

  70. Please compare this clause in KA16:

    “If an Office action on the merits was mailed before November 1, 2007, the next Office action cannot be made final if it contains a new ground of rejection necessitated by applicant’s identification of the claims in a CIP for which the subject matter is disclosed in the prior-filed application.”

    with this Q/A in M2:

    “When can a second Office action be made final? A second or any subsequent Office action on the merits may be made final, except when the Office action contains a new ground of rejection that is not: … 5. Necessitated by applicant’s identification of the claim or claims in a CIP application for which the subject matter is disclosed in the manner provided by 35 U.S.C. 112, ¶ 1, in the prior-filed application.”

    Huhh? Aren’t they saying exactly the opposite?

  71. O.K., I’m reconfused.

    Clearly (?) 1.78(d)(3) becomes effective on Nov. 1, 2007 (FR 46717).

    1.78(d)(3) refers to the continuing child application making a “reference” to each prior filed parent application. Here’s the “flow” of how 1.78(d)(3) reads (note the disjointed “jump” in the middle which is what we are interested in):

    1) The child application must contain or be amended a “reference” to the parent application;
    2) the “reference” must identify the parent application by application number.
    3) the “reference” must identify the type of continuing relationship with the parent (e.g. divisional, CIP);
    [begin lithium depletion jump]
    If the application is a CIP, the applicant must identify the claims(s) for which subject matter support under 35 USC 112 is found in the parent application.
    [/end lithium depletion jump]
    4) for nonprovisional child applications, the “reference” must appear on the application data sheet or in the first sentence of the specification following the title.

    By this flow, is the CIP claim identification for 112 support to appear in the “reference”? Sure seems so by the flow. And if yes, then we know the compliance date for the “reference” from 1.78(d)(4): “this reference must also be submitted within the later of four months from the actual filing date of the later-filed [child] application or sixteen months from the filing date of the prior-filed [parent] application.”

    So I filed my CIP child on 9/2/2005. By what date do I need to file my claim identification for 112 support under 1.78(d)(3)? By 1/3/2006? The rule wasn’t effective then. By 11/1/2007? The rule doesn’t state that.

    Also, I’m confused about this clause in KA16:

    “If an Office action on the merits was mailed before November 1, 2007, the next Office action cannot be made final if it contains a new ground of rejection necessitated by applicant’s identification of the claims in a CIP for which the subject matter is disclosed in the prior-filed application.”

    This says *exactly* the opposite of what I would expect the USPTO to say (i.e. they usually say whenever the applicant necessitates any new grounds, the action is final).

    It’s ludicrous that government regulators can write jibberish, and we then have to try and figure it out.

  72. With such silence, would not that mean that compliance with [the identification aspect of] Rule 78(d)(3) is immediately required as of November 1, 2007 for all pending cases?

  73. BabelBoy states, “there appears to be no compliance deadline for Rule 78(d)(3).”

    Rule 78(d)(3) requires one to file a reference (or priority claim) in continuing applications and, in CIPs, to identify the claims that are supported by the earlier application.

    Rule 78(d)(4) provides a deadline for filing the reference (or priority claim) required by Rule 78(d)(3), which deadline is the latter of 4 months from the CIP’s filing date or 14 months from the earlier application. See 37 CFR 1.78(d)(4) (“The reference required by 35 U.S.C. 120 and paragraph (d)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application…”). The reference/priority-claim has a deadline and consequences for failing to meet that deadline. Id.

    Strangely, Rule 78(d)(4) does *not* provide any such compliance deadline for identifying the claims in a CIP that are supported by the earlier application. (So I stand corrected as to that point because, in my quick review, I erroneously thought the 4/14 month deadline applied to both the reference and the identification. Thanks BB!)

    With such silence, would not that mean that compliance with Rule 78(d)(3) is immediately required as of November 1, 2007 for all pending cases?

    Also, what are the consequences for failing to identify the claims in a CIP that supported by the earlier application? Rule 78(d)(4) provides for a waiver as to the reference/priority-claim, but not the identification of the supported claims.

  74. SF

    With due respect, I think you and Brad are lost, which is a compliment given that anyone with more than half a wit would be confused by this PTO BS. These rules and comments are written by mor0ns for mor0ns,which means I have a leg up on the rest of you.

    Nowhere do I find — including FAQ KA16 — a compliance deadline of Nov 1 for Rule (78)(d)(3), or anything. FAQ KA16 asks what must be filed before Nov 1 and the answer is clearly stated in the first line of the answer: nothing. There is no other way to read the first line.

    The last line does not contradict the first. The last line says the rule APPLIES to CIPs pending on Nov 1. That is the applicability deadline — not the compliance deadline. You use the applicability deadline to identify the CIPs that require a Rule 78(d)(3) statement. You use the compliance deadline to determine when the statement becomes tardy.

    Looks to me like Posthumous is right, there appears to be no compliance deadline for Rule 78(d)(3). Certainly not Nov 1. Maybe it’s assumed to be Feb 1, 2008 as per the rest of the rules, but FAQ B10 says filing the 78(d)(3) statement anytime before the first examination will avoid unnecessary delay, implying you can even file the statement after the FOAM. [Yes FOAM -- first action on the merits, not FAOM. Why would any cretin choose a mnemonic like FAOM that you can't remember?]

    Until you see the distinction between the applicability deadline and the compliance deadline, you will never be able to work your way through these rules. I mean, this is the EASY part.

    We still need to hear from Brad Pedersen, who first concluded that the compliance deadline for Rule 78(d)(3)is Nov 1. Please check in, Brad, and clean up this mess. Where did you get the compliance date of Nov 1 for Rule 78(d)(3)?

    Babel Boy

  75. “But someone at the PTO must think that’s a frequently asked question, I guess.”

    I have a feeling that they made this FAQ up to give them an opportunity to emphasize when this particular rule kicked in. But both the question and the answer were awkward. [Insert obligatory sarcastic comment regarding the USPTO's incompetence here.]

  76. Thanks, SF, I wonder if I would have ever seen that. I certainly wouldn’t have been on the lookout for a “Do the rules establish a duty before they become rules?” question.

    But someone at the PTO must think that’s a frequently asked question, I guess.

  77. “Can someone please interpret the KA16 answer in laymen’s English for me? It seems to say ‘no’ and then answer ‘yes’.”

    Sure. There is no requirement to *submit* any identification *before* November 1, 2007. Period. HOWEVER, if the CIP application is still pending on November 1, 2007, the identification rules kick in and identification may be due immediately. For example, if, on November 1, 2007, it’s been longer than the 4/14 months deadline articulated in the rule, the identification must be submitted on November 1, 2007.

  78. I was also wondering about the compliance date of Nov. 1 for Rule 78(d)(3), and I’m not sure about where it is in the Final Rule as published, but I did see the answer to FAQ “KA16.” While the answer may make your head spin and remind you of Alice in Wonderland, I think the last sentence indicates that Nov. 1 is the deadline.

  79. Brad, where are you seeing a compliance date for Rule 78(d)(3) of Nov 1?

    Nov 1 is the applicability date for 78(d)(3) as per pg 46717, col. 1. But that is distinct from compliance date. The paragraph on compliance dates, pg 46717, col 1., does not mention Rule 78(d)(3).

    Also please note, practitioners: every pending CIP you have as of Nov 1 for every client is going to require some sort of filing.

    To accomplish the necessary file reviews and filings in 2 months (between Aug 21 and Nov 1) would likely be an invalid and capricious exercise of power in violation of the Due Process Clause and the Administrative Procedures Act, which pretty well sums up this whole new rules mess.

  80. The frequently asked questions resolves the FR’s ambiguity:

    If applicant cancels all of the claims directed to a nonelected invention before rejoinder occurs and files a divisional application, the restriction requirement will not be withdrawn and the non-elected claims that are now canceled will not be rejoined. This will preserve applicant’s rights under 35 U.S.C. 121 and 37 CFR 1.78(d)(1)(ii). See MPEP § 821.04(b).

  81. Note, however, that the FR does state: “If applicant cancels all of the claims directed to a non-elected invention before rejoinder occurs and files a divisional application, the restriction requirement will not be withdrawn and the non-elected process claims that are now canceled will not be rejoined. This will preserve applicant’s rights under 35 U.S.C. 121 and § 1.78(d)(1)(ii). See MPEP § 821.04(b).”
    See 46728.

    But this blurs the line between “a non-elected invention” and “*the* non-elected process claims.” The MPEP passage discusses election of a product claim where the process claims are restricted.

  82. meAnontoo wrote, “yes, but you’re talking species restriction, which is always subject to the chance that there might be an allowed generic claim. if it is not a species restriction, or there is no generic claim, the advice is valid.”

    The advice is not valid because the advice is specifically addressing and assuming that there was a subsequently allowed generic claim and subsequent *rejoinder* of a species. See McEwen (“Moreover, as the rejoinder is technically a withdrawal of the original restriction requirement, applicant would not be able to file a divisional application containing the claims needing to be cancelled…”).

    The advice suggested filing a divisional while the restriction was still in force (prior to the allowance of the generic claim and rejoinder). As shown in the quote above, the USPTO will treat a withdrawn restriction as if it never happened, thus the “divisional” must be recast as a continuation.

  83. real anonymous–yes, I did receive a second email (which included a first); thanks very much. Your analysis makes sense to me (and thanks for posting it!) but unfortunately the PTO at least for now does not seem to agree. Nor does the PTO appear to care what chaos is caused so long as they can declare victory. Because we are a small company which cannot afford a legal challenge, we are pretty much stuck with doing the best we can under the present regime, and I am not optimistic that a petition based on your most excellent argument would succeed in the present PTO even though it pains me to just succumb to this injustice.

  84. Inquiring Mind, the USPTO’s position (expressed in FAQs C7 and C11) may violate PCT Article 11 which indicates, “Any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) shall be equivalent to a regular national filing within the meaning of the Paris Convention for the Protection of Industrial Property.” Wouldn’t it appear that if FAQ C11 calls the international examination an “examination” for Rule 78(a)(2) purposes, but not a FAOM for FAQ C7 “waiver” purposes, that PCT appliations are no longer “equivalent” to U.S. applications as is required by treaty?

    Perhaps you received an e-mail about this?

  85. Also note the posting on PatentDocs from Sept. 28 regarding IPERs precluding the subsequent filing of DIVs, along with C11 of the updated PTO FAQ (dated 9-27-07). Fortunately others are reading 1.78(1)(ii)(B) more narrowly than I was at first (so that my initial fear that IPERs from parallel PCT chains were also preclusive was incorrect), but it does seem that an IPER from “the prior-filed application” will preclude filing DIVs on the claims examined in the IPER. We have several cases where no lack of unity of invention was identified and all claims were examined in the IPER, but the same claims were restricted x ways during national phase, and now apparently all must be prosecuted in CONs, which of course will be limited under the new rules to “one more” without petition.

  86. Peanut gallery questions – it seems like the answers generally would be:

    1 – 78(f) compliance (identifying related cases) is not required in a case once a Notice of Allowance has been issued – see 78(f)(1)(i) first two lines; however, the case as allowed would need to be cited in any other cases pending as of 2/1/08 which meet the requirements of 78(f)(1) – common assignee and common inventor, and terminal disclaimers would need to be filed under 78(f)(2) in any pending family case with Patentably Indistinct claims over the allowed case.

    2 – 78(d)(3) compliance is due 11/1/07 for most pending CIP cases filed by 7/1/07 or 4 months after filing date or 16 months after the filing date of the application for which CIP priority is being claimed – see note above on Currently Pending CIP Cases.

  87. Here’s another one for the peanut gallery: what’s the deadline for letting the USPTO know which claims in a CIP filed before August 21 are supported by the earlier application? It seems that Nov. 1 is the deadline to provide a statement about the relationship between the CIP and the earlier application(s), i.e. the standard “This application is a CIP of USSN XX/YYYYYY…” (see 1.78(d)(4) and the list of deadlines on pp. 46716-7), but it’s unclear from 1.78(d)(4) if the statement about support in the earlier application is part of the “reference required by 35 U.S.C. 120 and paragraph (d)(3)”. Anyone have thoughts on this?

  88. Here’s a question for the peanut gallery: suppose I’ve got an app that’s pending on Nov. 1. Under new 1.78(f), I need to notify the PTO of a copending, commonly-owned, common-inventor app by Feb. 1, 2008. I get a notice of allowance shortly after November 1, pay the issue fee and the patent issues before Feb. 1, 2008, without me complying with the 1.78(f) reporting requirement. Is my patent at risk, or is it protected by the fact that it issued before the deadline for compliance arrived? Seems to me it shouldn’t be at risk, inter alia b/c once that notice of allowance goes out, the app is no longer with the Examiner, and my reporting under 1.78(f) at that stage will make no difference, but I’d like to hear arguments to the contrary (and yes, I realize prudence dictates I should simply play it safe…)

  89. anonymous-

    yes, but you’re talking species restriction, which is always subject to the chance that there might be an allowed generic claim.

    if it is not a species restriction, or there is no generic claim, the advice is valid.

  90. James McEwen recommends: “Thus, when an application is subject to a restriction requirement, non-elected claims should be immediately cancelled so that a divisional application containing the non-elected claims can be filed….”

    The USPTO apparently reads the rules differently:

    Furthermore, upon the allowance of a claim that is generic to all of the claimed species (either in the initial application or any continuing application), the application is no longer subject to a requirement to comply with the requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121. In such a situation, if applicant had filed a ‘‘divisional’’ application to the non-elected species following the provisional restriction in the prior-filed application, that ‘‘divisional’’ application would no longer be proper under §§ 1.78(a)(2) and 1.78(d)(1)(ii). This is because the ‘‘divisional’’ application would not meet the conditions set forth in §§ 1.78(a)(2) and 1.78(d)(1)(ii). If applicant wishes to maintain the application, then applicant must delete or correct the benefit claim to indicate that the application is a continuation application, provided the requirements set forth in § 1.78(d)(1)(i) can be satisfied. In such case, the Office will treat the application as one of the two continuation applications of the prior filed application permitted under § 1.78(d)(1)(i). But, if the prior-filed application already has its benefit claimed in two other nonprovisional applications, applicant must delete the benefit claim in the application. See § 1.78(d)(1)(i). Therefore, applicant is cautioned not file a divisional application drawn to a non-elected species if a generic claim is pending in the initial application or any continuing application of the initial application and could be found allowable.

    New Rules at 46727-46728.

  91. “What if a restriction requirement was responded to prior to Nov. 1, 2007 WITH traverse. Under the new Rules, it would seem that Divisionals are not permitted.”

    Only if the traversal was granted. Merely arguing for traversal of the Restriction Requirement (in whole or in part) would not preclude a divisional if the Restriction Requirement is upheld.

  92. The comments are correct that there are many pitfalls to disclaiming priority to a CIP, just as there are many pitfalls in having designated a case as a CIP in the first place. Caveat jurist!

    In cases where the claim set in the CIP includes at least one element for which support in the specification relies on subject matter added as part of the CIP, that claim set is only entitled to the priority date of the CIP. If this is so, then the best practice may be to disclaim priority to the parent so as to set up two patent families, each of which would then be entitled to the 2+1 continuation/RCE limits. Of course in determining whether to disclaim priority of a current CIP, any 102(b) issues need to be carefully reviewed, both with respect to the inventor’s own work and potential intervening prior art.

  93. “Thus, when an application is subject to a restriction requirement, non-elected claims should be immediately cancelled so that a divisional application containing the non-elected claims can be filed and to ensure that the applicants do not accidentally violate the 5/25 rule upon rejoinder.”

    Has anyone determined the answer to this question:? What if a restriction requirement was responded to prior to Nov. 1, 2007 WITH traverse. Under the new Rules, it would seem that Divisionals are not permitted. I hope I am wrong about this.

  94. “Also, disclaiming the priority claim in a CIP where the priority application was published anywhere more than a year before the CIP filing date will normally be 102(b)/103 fatal to most or all of the CIP claims.”

    … and, even if the parent’s prior publication occured less than one year before the CIP’s filing, there could be an on-sale bar event that occured more than one year before the CIP’s filing. (e.g., parent filed on day 1, sale on day 2, CIP filed day 539, parent publishes day 540)

  95. Re the new CIP rule requiring prompt identification of all CIP claims allegedly entitled to claim the benefit of a prior application, or disclaiming such a priority claim, this is neither optional or risk-free. Every CIP claim making such a priority claim must be completely 112 supported by the specification of the priority application, and an improper claim for that might even risk inequitable conduct. Also, disclaiming the priority claim in a CIP where the priority application was published anywhere more than a year before the CIP filing date will normally be 102(b)/103 fatal to most or all of the CIP claims. Tronzo v. Biomet, Inc., 47 USPQ2d 1829 (Fed. Cir. 1998), and In re Ruescetta and Jenny, 255 F2d 687, 118 USPQ 101 (CCPA 1958).

  96. “Regardless of whether an RCE has already been filed in a family, if multiple members of the family are currently under final Office Actions, file an RCE in each case prior to November 1. Otherwise, the applicant will be limited to only one RCE in the family without the required Petition.”

    I tentatively disagree – if no RCEs have been filed in the family, perhaps you should file CONs/DIVs instead of RCEs before Nov. 1, 2007. That way, you get your CONs and you *also apparently get* (under the very wording of 1.114(f)(1), at least until the USPTO should try to indicate otherwise) an RCE opportunity for *each* of your CONs.

    This is due to an apparent error in 1.114. An analysis is linked here:

    link to nipra.org

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