Buoyed by the evidence presented by professors Mark Lemley and Kimberly Moore, the PTO has proposed a set of sweeping changes to curb the “problem of continuation practice.”
CHANGE IN CONTINUATION PRACTICE: The First proposed rule change would make the following changes:
- Any second or subsequent continuation, CIP or RCE must include “a showing to the satisfaction of the Director as to why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution after a single continuation, CIP or RCE”; and
- Multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and a common assignee must include either (i) an explanation to the satisfaction of the Director of how the claims are patentably distinct, or (ii) a terminal disclaimer and explanation to the satisfaction of the Director of why patentably indistinct claims have been filed in multiple applications.
CHANGE IN EXAMINATION OF CLAIMS: The PTO has proposed that examiners focus their initial examination solely on a set of “representative claims” that are designated by the applicant for initial examination. According to the PTO,
The changes proposed in this notice will allow the Office to do a better, more thorough and reliable examination since the number of claims receiving initial examination will be at a level which can be more effectively and efficiently evaluated by an examiner.
Applicants that do not include designations of representative claims will be delayed.
The PTO has requested comments that can be e-mailed to AB93Comments@uspto.gov and AB94Comments@uspto.gov for the continuation practice changes and claim examination practice changes respectively by May 3, 2006.