Short Article Request: Short-term Reaction to PTO Rule Changes

On November 1, 2007, the PTO’s new rules will become effective. Those claims will limit the number of continuation applications that may be filed as well as the number of claims included in each application.

Article request: I would like to publish two separate short articles (<1000 words) written by Patently-O readers. Topics: (1) What action, if any, should a patent applicant take between now and November 1 to preserve rights in an of an already pending valuable patent application?; (2) Are there any actions that should be taken prior to November 1 to preserve rights in a valuable invention that is not yet associated with a patent application?

Please send your questions and short articles to: dcrouch@patentlyo.com.

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Of interest is the following statement from the PTO’s Rule Change FAQ: “[A]pplicant may file as many continuation or CIP applications as applicant wants between August 21, 2007 and October 31, 2007, without a petition and showing, regardless of the number of previously filed continuing applications.”

30 thoughts on “Short Article Request: Short-term Reaction to PTO Rule Changes

  1. I don’t think this question leads to the conclusion that the PTO made an error giving applicants a loop-hole.

    “IS ONE RCE PERMITTED FOR *EVERY* CONTINUATION/DIVISIONAL FILED BEFORE NOVEMBER 1, 2007, IF NO RCE REQUEST HAS BEEN FILED IN PARENT(S)? (Even if you file multiple CONs/DIVs from a single application, does the very wording of new 1.114 permit one RCE for each CON/DIV filed before November 1, 2007?)”

    Why? just substitute “said” for “such” in f(1)(i), (ii) and (iii) where “said application” refers to “an application” in (f). Remember that all three conditions must be met before you can file an RCE. If you meet only two conditions, you can’t file an RCE.

  2. IS ONE RCE PERMITTED FOR *EVERY* CONTINUATION/DIVISIONAL FILED BEFORE NOVEMBER 1, 2007, IF NO RCE REQUEST HAS BEEN FILED IN PARENT(S)? (Even if you file multiple CONs/DIVs from a single application, does the very wording of new 1.114 permit one RCE for each CON/DIV filed before November 1, 2007?)

    File your CONs/DIVs early, often.

    “What if before November 1, 2007 you file numerous “continuation” (or divisional) applications from a single initial application in which no RCE request has yet been filed, can you then (e.g. after November 1, 2007) file a “one more” type RCE request in each such continuation application? This would appear to be an unintended consequence of the regulatory error, because each such continuation application would still satisfy the provisions of 37 CFR 1.114(f). Perhaps the new motto for patent applicants regarding continuations and divisionals until November 1, 2007 should be, “File Early, File Often!” Note too that pre-November 1, 2007 filed continuations or divisionals may be the only way to secure adequate rights to/protections for disclosed but not-presently-claimed features in pending patent applications (since after November 1, 2007, you will apparently be limited to only two CONs/CIPs to cover these features).

    See link to nipra.org
    and link to nipra.org

  3. Rules 1.78(f)(1) and 1.78(f)(2) have far reaching implications. Rule 1.78(f)(1) requires that the applicant in any un-allowed application must identify each other pending or patented non-provisional application that has a common inventor and is commonly owned (or will be) and that has was filed within two months of the other. Rule 1.78(f)(2) requires that an applicant in any un-allowed application must rebut a double-patenting presumption or submit a terminal disclaimer and explanation in each application that has a common inventor, is or will be commonly owned, has the same filing date, and has a substantial overlapping disclosure.
    Both rules affect applications filed before Nov. 1, 2007 and prescribe specific time periods for compliance. In particular, an applicant must comply with Rule 1.78(f)(1) within the later of four different time periods: (i) four months from the actual filing date of a 111(a) application; (ii) four months from entry via 371; (iii) two months from the mailing date of the initial filing receipt of an identified application; or (iv) Feb. 1, 2008. Applicant must comply with Rule 1.78(f)(2) within the later of five different time periods: (i) four months from the actual filing date of a 111(a) application; (ii) four months frone entry via 371; (iii) two months from the mailing date of the initial filing receipt of an identified application; (iv) date on which an indistinct claim is presented; or (v) Feb. 1, 2008.
    The implication of these rules is that the practitioner must be familiar with the entire patent portfolio of the applicant. For applicants with large portfolios, say thousands of applications, unless the practitioner has all of the data regarding the existence of applications that could be subject to these rules, the practitioner cannot safely attempt to comply with the rules. Therefore, practitioners representing an applicant with a large portfolio must notify the applicant that the applicant must comply with the rules or provide information about the existence of all other applications in the portfolio so that the practitioner can comply. Because the latter could and probably would raise subject matter conflict problems, it would appear that in most cases the applicant itself must comply with the rule. If an applicant cannot give assurances to the practitioner that it is taking steps to comply with these rules, the practitioner may have to withdraw from representation.

  4. I think I am incorrect, but it looks like the 5/25 rules may apply to applications with a first action from before November 1st in that any amendment that would result in more than the 5/25 limitation would need to be restricted to less than 5/25 (with no possibility of an ESD, as the ESD must be supplied before the first Office Action issues).

    So, if an application with 30 claims has a first action that was mailed in October, then the a claim amendment is filed after November 1st that does not cancel or add any claim (hence being an amendment that results in more than the 5/25 claim limit), would the rules apply, resulting in a requirment that the claims be amended to comply with the 5/25 rule?

    I haven’t seen an answer clearly outlined in the rules package (though I only skimmed over them), but the slides that are available from the PTO site seem to support the conclusion that any claim amendments that would result in more than 5/25 claims would be noncompliant with the rules, and result in a requirement to reduce the claims to be compliant (regardless of when the first action was mailed).

  5. dang it, real anonymous. It took some thought (and coffee) to get my young mind around it, but I agree with you and NIPRA.

    The way I understand it is:
    As long as there is (i) no RCE filed in the second parallel continuation, (ii) no RCE filed in an application whose benefit the second parallel continuation claims, and (iii) no RCE filed in any application claiming benefit of the second parallel continuation, an RCE can be filed in the second parallel continuation. As such, an RCE can be filed in each of the two parallel continuations.

    I think the key is: which application is the “an application” under (f)? If “an application” is the parent, then only one RCE from the two parallel continuations. But, if “an application” is the second parallel continuation, then RCEs for everybody!

  6. Jud, thank you for your comment. Two cups should be sufficient. We were trying to describe what the rule intends, so our description might be unclear due to the underlying rule. If you have wording suggestions, feel free to post them here (or e-mail them there).

  7. ulalum, as far as I know, no one thinks “such application” in (iii) can refer back to “any application” in (ii). As such, you are under the words of the rule allowed *two* RCEs in the situation where two CONs are filed in parallel from an initial application for which no RCEs were filed (i.e. you are allowed one RCE off each CON according to rule 114). Agreed? Thank you.

    P.S. we amended the statement on the page a little… maybe that clarifies it a little.

  8. I think the NIRPA reading of 37 CFR 1.114 is flawed. If “such application” in (iii) refers back to “any application” in (ii), then to what does “such application” in (ii) refer?

    It’s clear that “the application” in (i) and “such application” in (ii) and (iii) refer back the “an application” in (f). As such, only one RCE would be allowed in the group consisting of “an application” (i), the parent of the “an application” (ii), and any continuation of the “an application” (iii). Am I missing something?

    However, I do agree that the USPTO seems to have no idea what they’re doing.

  9. “If I group the ideas among the applications so that the claims in each of the applications are patentably distinct from those in the other applications, I don’t think I would be required to combine any of the 4 applications for 5/25 purposes.”

    Assuming that all three of the new applications are continuations of the same application, share at least one inventor, share a common assignee, and have substantially overlapping subject matter (presumably would as straight continuations), they will be *presumed* to be patentably indistinct. Thus, when you cross-cite their existence by February 2008, you’ll also have to file an explanation rebutting that presumption. It won’t be an SRR, because they won’t be in the same application. But the rebuttal will still be required.

  10. anonymous wrote:

    “Each individual application is allowed to have no more than 5 independent claims and 25 total claims. However, a patent family can have up to 15 independent and 75 total claims.”

    The 15/75 limit per family doesn’t look correct to me for continuation applications filed before Nov. 1. For example, if I filed an application disclosing 20 independent ideas, I think the new rules allow me to file, for example, 3 continuations before Nov. 1, so that I have 4 pending applications, each of which has 5 independent claims, for a total of 20 independent claims, without filing any SRRs. (This scenario isn’t as unlikely at it may first appear, such as if I want to prosecute parallel method and apparatus claims (and maybe software product claims) for each of the independent ideas.)

    If I group the ideas among the applications so that the claims in each of the applications are patentably distinct from those in the other applications, I don’t think I would be required to combine any of the 4 applications for 5/25 purposes.

    I’d appreciate feedback regarding whether I’ve understood the new rules correctly.

  11. P.S.: The latest docket entry in the Tafas suit (below, as of today) indicates that no renewed Motion for a Preliminary Injunction has been filed after the Amended Complaint, so the rules _will_ go into effect November 1.

    09/21/2007 16 THE PARTIES’JOINT STIPULATION AND CONSENT ORDER Regarding Briefing Schedule 1. Defendants shall file any motion to dismiss Plaintiff’s Amended Complaint dated September 7, 2007 on or before Thursday, October 4, 2007 —- 10. The Parties will notice the hearing on any summary judgment filed by Plaintiff and any cross-motion for summary judgment filed by Defendants for Friday, December 21, 2007 —- (see order for details). Signed by Judge James C. Cacheris. Signed by Judge James C. Cacheris on 9/21/07. (klau, ) (Entered: 09/24/2007)

  12. “Prudent clients should demand that firms adjust their workflow so that nothing is ever left until the last day. ”

    Party pooper of the year candidate, right here.

  13. If patent attorneys and their clients are only now wondering what they should do to anticipate the new rules, they are seriously behind the curve, especially if they have large portfolios to analyze. Most firms operate on a perilous “last day filing” mentality, and hardly have the time to both analyze the portfolios and prepare the continuations or RCEs necessary before November 1. Prudent clients should demand that firms adjust their workflow so that nothing is ever left until the last day. I’m surprised that E&O carriers don’t require this.

  14. “If you *have* received an FAOM, amend the claims to include 5 patentably distinct independent claims and less than 25 total (which could require cancelling some you intend to pursue in the present case, so would have to add back later). It again seems unlikely the Examiner would want to examine all these patentably distinct claims, so would issue a restriction.”

    If you have received a FAOM in an application filed before November 1, 2007, the 5/25 rule doesn’t apply.

  15. real anonymous,
    On your page, either I need more coffee, or the paragraph beginning “By the language of 37 CFR 1.114(f)…” isn’t completely clear.
    Good job catching the changes in the slides.

  16. I think it’s also important to consider the ramifications of applications which at the time of filing were thought to be divisional applications. In some cases, you may want some or all of such applications to remain divisional applications, while in others, you may really want those applications to be continuations. For example assume you are about to file an application as a divisional after a two way restriction, and that the divisional will be the last pending application shortly after Nov. 1, and further assume that no RCEs were filed in the prior application. You need to seriously consider whether that application really ought to be a continuation application. The tradeoff would be between needing a possible terminal disclaimer to ward off a double patent rejection if you file a continuation, and having limited options on what can be claimed in a future continuation from a divisional filing. Even if the RCE has been filed, perhaps you might still want to file a continuation.

    Going the other way, there are a number of situations where applications you have filed as divisionals are going to turn out to be continuations. One case is where you get a restriction after a first office action in which all your claims have been examined. Any divisional filed based on that restriction is a continuation, and if the restriction is more than a 3 way restriction, you are really going to be struggling after Nov. 1 to even get applications filed on all of those allegedly distinct applications. The PTO says that in the future if the examiner issues such a restriction they will grant a waiver allowing you to file divisionals.

  17. “It again seems unlikely the Examiner would want to examine all these patentably distinct claims, so would issue a restriction.”

    The examiner can withdraw the new claims to distinct inventions after a FOAM using “Election by orginal prosecution” without issuing a restriction requirement.

  18. P.S. But note 37 CFR 1.145 has been changed in the new Rules from “the applicant will be required to restrict” (quoted above) to “the applicant may be required to restrict”…. So if you file new claims to additional inventions after the FAOM in applications which did not have an FAOM before Nov. 1, then the Examiner could (under the new Rules) choose to examine the new claims. But there would seem to be a “count” disincentive for him to do so.

  19. Haburay, I like your second idea very much!!!

    From what I can determine, perhaps this should be “standard operating procedure” for all applications in which a FAOM has been issued prior to Nov. 1, 2007. Also, from what I can tell, the 5/25 rule doesn’t apply to such cases. Thanks for the tip! (The Office would hate it if everyone started affording themselves of the new Rules in this respect… imagine the confusion trickling down from the top! But they would likely just reap what they’ve sown.)

    Regarding your first suggestion, it’s risky whenever you rely on an SRR to keep you under 5/25, because the Examiner need not restrict, and then what do you do. (He may also use a delayed restriction practice under 1.142, though new FAQ C7 implies he may need TC director approval… which has never been the case, and Rule 142 does not require it… so you’re relying on a frequently-changing FAQ then.

    “37 CFR 1.145 Subsequent presentation of claims for different invention.

    If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in ยงยง 1.143 and 1.144″

  20. What legal action? There has only been one suit filed. Where are all the lawyers that were talking smack about how many suits were gonna be filed if the rules were implemented. It’s getting late early. I have a feeling the big dogs have been bribed by Dudas, hence the lack of suits.

  21. Consider this: Let’s say you have an omnibus application in your portfolio, and it contains *many* patentably distinct inventions. Let’s say there’s one application pending in this family and you haven’t yet received a first action on the merits (FAOM). In this pending application, whether it’s the first in the family or the fifth, rather than filing “as many” continuing apps as you want before Nov 1, how about filing a preliminary amendment to add all the (at least independent) claims you think you will eventually want in the family. File it with a suggested restriction requirement to avoid 25/5 (see PTO’s slide 13). It seems unlikely the Examiner would want to examine all these patentably distinct claims, so would go along with the restriction, or come up with their own. If so, you would have the advantage of getting two continuations and one RCE from each divisional. Is this legit?

    If it is legit, consider this twist: If you *have* received an FAOM, amend the claims to include 5 patentably distinct independent claims and less than 25 total (which could require cancelling some you intend to pursue in the present case, so would have to add back later). It again seems unlikely the Examiner would want to examine all these patentably distinct claims, so would issue a restriction.

    I’m likely missing important holes in these ideas, and want to find them before doing anything rash.

  22. Re #2, for a person with limited financial resources now is the time to take out that second mortgage and then hunker down with checkbook in hand. They are in for an expensive ride with an unpredictable outcome.

  23. Remember to plan taking into account the possibility that the Rules may not (because of legal action) become effective Nov. 1 also.

    That said, if we’re all waiting for January 20, 2009, consider that examination can (often) be deferred by up to 3 years using 37 CFR 1.103.

    link to uspto.gov

    Granted, it’s not an optimal solution, but it may be better than operating in the current anti-patent atmosphere that is prevailing atop the USPTO at the moment.

  24. Each individual application is allowed to have no more than 5 independent claims and 25 total claims. However, a patent family can have up to 15 independent and 75 total claims.

  25. While one might be able to “file as many continuation or CIP applications as applicant wants between August 21, 2007 and October 31, 2007, without a petition and showing, regardless of the number of previously filed continuing applications,” this is not always helpful. If an application does not have a first office action on the merits by Nov. 1, then it must meet the 5/25 rule for the entire family. (I assume that no reasonable patent attorney will ever file an ESD.) The chances of getting a FOAM before Nov. 1 for an application filed August 22 is about 0%. Thus, if the current family already has over 5 independent claims or 25 total claims, one must cancel existing claims before one can file a new case.

    I will be interested to see the suggestions on what to do – the time between now and the next administration is not going to be easy. I take a little comfort knowing that other Departments have been harmed even more than the patent system, (e.g., the Justice Department will take a long time to recover, and Iraq might be a mess for several generations), and thus it could have been even worse if that patent office was a higher priority to W. and his cohorts.

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