119 thoughts on “Live comments on PTO Presentation on Continuation Changes

  1. 119

    Mr. Bates has an excellent perspective. The availabilty of effective patent protection in the US is becoming so remote as to be a fraud on the unsuspecting public, and a mythical hope to unsuspecting investors and stockholders.

    Could a 25 claim limit actually work in the US. Not now. Not with the current US case law. Folks that do much foreign work easily will recognize the most fundamental problem – the current inability or unwillingness (or just complete ignorance) on the part of the courts in the US to give claims an “ordinary engineering meaning” where a robust “doctrine of equivalents” would give sufficient meaning to claim terms to protect against someone obtaining the substantial benefit of the claimed invention. US case law demands specificity of claims for various embodiments, as equivalents most likely will not be granted in claim interpretation. In Canada, claims are given a “purposive construction” interpretation – not a strict “Mickey Mouse”, word by word, strict content only meaning as in the US, currently. In Europe, similar result. In Japan, even a more engineering or technical person’s view of the scope is afforded the limited claims seen in Japanese cases.

    Will the US courts change their jurisprudence and go back toward a “doctrine of equivalents” ? Don’t bet on it. Right now, some courts can’t even use “novelty” and “obviousness” in a manner that is conventional and time tested in patent work. See, for example, the recent design patent decsion (Egyptian Goddess Inc v Swisa Inc, CAFC 08/29/2007) which turns conventional novelty and obviousness definitions to incomprehensible mush.

    – RG –

  2. 118

    Effective filing date and actual filing date. No matter what; the effective filing date can be relied on for whatever is taught in the orig filed (Parent) PatApp. BTW Your concerns of the USPTO going to hell in a hurry is now a moot point. I am an 80 yr old former Examiner that will never accept another Client except to advise him not to seek patent protection. Once upon a time, the USPTO was the primary reason for the USA Greatness. Not any more. It makes me puke. Marcus Bates of Odessa Texas.

  3. 117

    Dear Malcolm,
    Did you like my imitation of one of your commentary styles above?
    I’ve always wanted to try it. It felt good. I like your style.
    You know what they say about imitation, but watch out for the diapers.

    [A]nonymous patent hero is right – – enough chit-chat already.
    Straight above, our anonymous patent hero hero has a dead serious question.
    I have no doubt that the PTO’s internal newsletter’s “insult to injury,”
    “salt in the wound” false boldface “assertions” are actionable,
    perhaps class-actionable. After all, this is America.

    For me today, I’m oft to college in route to Maryland on my semi-annual rumrun.

  4. 115

    Dear Just a Patent Attorney,

    Thanks for your tip. I’m going to have my IT man decipher what you said as soon as I get one. I must confess; I am mostly PC programs/computer illiterate, and not inclined to do anything about that. I am constantly frustrated by these machines and their software that makes them work ok. I happened by mere accident to find my close quote tip. I am however intimately familiar with some rudimentary coding subjects. For example, I spearheaded, with the help of my professor friend & coinventor, reinventing Hamming error detecting and correcting edac coding in the 80s. We found out after the fact that we were 30 years too late; Richard Hamming did it at Bell Labs in ’48.

    One of my favorite and simplest inventions was coding wherein the original code was equated with the inversion. I specialize in simple pragmatic inventions other inventors miss altogether or the significance thereof.

    One of the simplest things I ever invented took me over twenty years from when I started looking for it. I didn’t feel too dumb because, after all, it had been overlooked for centuries by millions of educated people (they didn’t know to look for anything).

    I can, however, also invent on a system level, and have been somewhat successful at doing so. I learned computer stuff starting from the ground up. I started with Heath kits in the ’50s, Army radar in the mid ’60s, rube-Goldberg electro-mechanical machinery in the late ’60s to ’80s, the HP35 in ’72 (I bought every new HP that came down the pike and attended many HP seminars for refreshments and $50). Then, in the mid ’70s, I programmed TicTacToe on an advanced-for-the-times programmable calculator with a continuous loop cassette made by Compucorp (which I think Monroe bought into). I got the cigar-box programmable “handheld” calculator w/ attached cassette to do two TTT moves for every loop of the tape. It took me nine months of programming from start to finish mostly working after hours till dawn to make a perfect TTT program. My manufactory business mostly ran itself except for the IP lawsuits I became deeply involved in working with attorneys from as many as six firms at one time – – I had been sued in the Cook County cesspool court system by a crooked fortune 500 company in a kangaroo court, and it took a lot of doing to get unscrewed.

    After two weeks of programming TTT, the program played well. I spent most of the nine months time making it play perfectly and play two moves per cassette loop – – I was obsessed with memory efficiency. I’d take a wild guess and say today’s programs could operate in way less than half the number of steps but who cares, memory is dirt cheap and getting cheaper by the minute. When I showed my TTT program to the head of programming at Compucorp/Monroe on Park Avenue as I recall, she scratched her head in disbelief saying the machine cannot do that, it must be a trick.

    Anyway, for better or worse, that programming experience taught me to stay away from programming and think on a larger scale. I guess you can tell that I like writing, mainly about tecky type stuff, my experiences and other things I know first hand. I try to be entertaining, and I need to kill some time till my ship comes in.

    I’ll be gone for a couple of days driving my son to college near Maryland, but I’ll leave you with another tip: liquor prices in Maryland are about half compared to NY prices. Cheers.

  5. 114

    Does it make you all feel better that the direction from the supervisors in my Art Group is to wait on cases that have more than 25 claims…..

    Basically, they’re telling us that, if a case has more than 25 claims, NOT to submit a FAOM until we receive an ESD.

    LOL, as if I didn’t figure that one out for myself….

  6. 113

    JaOI – here is an even better punctuation tip:

    Turn off “smart quotes” in Word (its in the AutoCorrect dialog). Smart Quotes, such as your single open quote mark, is a special, non-ASCII character and wreaks havoc when used in ASCII based documents. You can always turn it back on when you want to do some desktop publishing.

    I often type e-mails in my wordprocessor (mostly OpenOffice, but some in MS Office) and copying and pasting special characters often produces interesting results in ASCII e-mails. (Anyone who uses html e-mail needs to learn more about security and privacy!)

  7. 112

    Patently-O TidBits, punctuation comment:

    JOAI fiddles with punctuation while the purposes of the Alexandria patent buildings get toasted Live.

    You know what annoys me? When a patent number is abbreviatedly cited a second time in attorneys’ briefs, a single open quote mark is often improperly used, to wit: ‘123. Of course, it should be a single close quote mark like so: ’123.

    Here is the easiest way I’ve found to type a single close quote mark in MS Word:
    Hold down the “Ctrl” key and hit the single quote key twice in succession. The first hit produces nothing, but, voila, the second produces the desired close single quote to go with an abbreviated patent number. Try it. You’ll thank me in the morning.

  8. 111

    Re: PTO newsletter:

    Shutters, head down. Gets up,
    mixes third Manhattan.

    Shutter again, sips, sips …

    Faint cry is heard.

  9. 110

    I thought the attorneys here would get a kick out of this. The PTO’s internal newsletter just announced: “Claims and Continuations Webinar a Resounding Success.” “Last week’s USPTO-sponsored webinar on the new rules on Claims and Continuations was an enormous success for the agency and its customers. The office quickly provided interested stakeholders with up-front and detailed information on the new rules that had been published only two days earlier.”

    So there you go. All your questions and concerns were adequately addressed. No more complaining now, ya hear?

  10. 109

    LOL, we got to move these refrigerators!, we got to move these color tv’s!

    Save us from the ball and chain!

    Sissies, wimps!

  11. 108

    5 5/7/5 on 5/25 and ESD

    Excuuuse me? Say what?
    we ain’t searchin’ all that crap
    File an ESD!

    You invent too much!
    inventions are too complex
    do exam your own damn self!

    Examiners are
    hard to find and keep its seems.
    Pay more, treat better?

    Mouse trap, DNA
    All Inventions Examined
    in 20 Hours

    Excuuuse me? Say what?
    we ain’t readin’ all that crap
    file an ESD!

  12. 107

    me – That might work, if the 17 claims are “Patentably Distinct”. But, if they are allegedly not? Then they get counted as being in the same application and ESD kicks in no matter how you slice and dice them and no matter how many application filing fees you pay….

    …of course, at this point, you would have paid a professional to do a search (i.e., the examiner), I suppose you could write up the results of that search…and submit it….

    Would the PTO take the position that the examiner’s search is insufficient?

    I suppose they might… since the ESD requirement seems to say that on its face….

    When McDonald’s has trouble keeping up with the demand for Happy Meals, do they make you fill out a petition explaining why you deserve extra fries and why extra fries were not ordered earlier?

  13. 106

    “I would call the examiner and ask him to enter the amendment placing application in condition for allowance by examiner’s amendment and issue the notice of allowance with it thereby avoiding the 5/25 ESD issue altogether.”

    I disagree. New 37 CFR 1.75(b)(1) reads:

    (1) An applicant must file an
    examination support document in
    compliance with § 1.265 that covers
    each claim (whether in independent or
    dependent form) before the issuance of
    a first Office action on the merits of the
    application if the application contains
    or is amended to contain more than five
    independent claims or more than
    twenty-five total claims. An application
    may not contain or be amended to
    contain more than five independent
    claims or more than twenty-five total
    claims if an examination support
    document in compliance with § 1.265
    has not been filed before the issuance of
    a first Office action on the merits of the

    The ESD must be submitted, if at all, before FAOM, and I believe it doesn’t matter whether the applicant or the examiner attempts to make the amendment breaking the 5/25 threshold. It won’t be permitted

    Do you have a rule section (or rule sections) which support your position? (I would be happy and grateful to see it/them. But then what incentive would the examiner have to doing such, well besides being kind?)

  14. 105

    SF-Actually, I would call the examiner and ask him to enter the amendment placing application in condition for allowance by examiner’s amendment and issue the notice of allowance with it thereby avoiding the 5/25 ESD issue altogether. In fact, you can prepare a “copy” of the “proposed examiner’s amendment” and send it to the Examiner so there is no additional work necessary on the examiner’s part (and to make sure they get it right). They get their count and are happy.

  15. 104

    > So… Ya file an application with 3 independent claims and 17 dependents all nicey nice within 5/25. You prosecute… eventually your get a final office action. All the dependents are allowed. All the independents are rejected. All the dependents depend directly from an independent. To get the broadest coverage without appeal you have to

    > Place 17 claims in independent form and cancel the independent claims…sigh, ok ya do it…

    > Now you have to file an ESD for violating 5/25? The Examiners search isn’t good enough? I have to do it all again? That makes as much sense as having to pay 17 Independent claim fees….

    Tommy, the correct course of action here is to request that the examiner make a 17-way restriction. :-p

  16. 102

    And one other thing: The 5/25 rule does not apply to applications filed before Nov. 1 which have received a FAOM. However, any continuations filed on those applications are subject to the rule, and if any claims are deemed patentably indistinct in the later filed continuation, all of the claims in the parent get sucked into the calculation. The only way to avoid that (per the FAQ – I don’t see it in the rules per se) is to file the continuation after receipt of the notice of allowance in the parent case (the 15/75 rule for covering an invention in a combination of parent and 2 con’s, the con’s being prosecuted serially, and each not exceeding 5/25, obviously). I have a parent case that may receive a FAOM before Nov. 1, but if it doesn’t, it is within the 5/25 rule (2 ind’s and 25 total claims, actually). I need to file a CIP, but I’m afraid to wait until a notice of allowance due to a possible bar date for the improvement. The parent case actually has a generic claim that would cover the species claim in the CIP (my cip is to a species not disclosed in the parent case, but I wnat the narrower claim to cover our rears b/c it is the commercial embodiment now). I’m thinking about filing the CIP and actually abandoning the parent case, since I think the examiner may argue that the species claim in the cip is patentably indistinct from that in the parent, and now I exceed the 5/25 rule. My head is spinning!

  17. 101

    During the webinar yesterday, the speaker said that you can file as many continuations/cips as you want before Nov. 1, and then after Nov. 1, only “one more” continuation/cip. The rule would support that, as 1.78(d) is effective only for applications filed on or after Nov. 1, so that would make sense. However, the slides state that you only get one more continuation/cip after Aug. 21, 2007, regardless of the number of con/cip’s filed before then. Is the slide wrong?

  18. 100

    Amoeba – check out the FAQ – I believe your question is addressed there. The problem with species is that the restriction is provisional – if your generic claim is allowed, the claims get rejoined. It is kind of confusing. If it is a straight out restriction of patentably distinct inventions (not an election of species), then if you have a 5/25 issue, you cancel, as oppose to withdraw, the non-elected claims and file them whenever you want, during the pendency of the parent, in a divisional – no danger of rejoinder b/c they are cancelled. The whole non-elected species issus is different.

  19. 99

    Say, does anybody know how the divisional and continuation stuff works with species requirements? If I have a big species requirement, which during prosecution, because the way the species are spliced up, the arguments and amendments result in claims covering nonelected species which have to be canceled, e.g. more 2 sets of these unelected species groups/claims. What happens? Are the canceled group of claims considered to be like unelected inventions, such that I can file divisionals covering them? If I have more than 2 unelected groups, I’d use up my available continuations…

  20. 98


    A reexam is a proceeding, not a patent application. The rules discuss the two separately. I don’t think filing a reexam of a current patent would mean that the patent is now subject to the new rules and, therefore, invalid. I think that a patent that issues from an improper continuation, could be subject to challenge in a reexam, citing intervening references.

    But, we are talking about a rule violation, not a statutory violation. The PTO has the authority to waive its rules. So, if you file a reexam, can’t the patentee file a petition to waive the rules to allow preservation of the priority claim? Rule 78(d) doesn’t say that the PTO can’t waive this rule. Only that the failure to delete does not constitute a waiver. Because you can’t predict whether the PTO will have sympathy for any specific patentee or requester (and decisions on petition have no pecedential value so I wouldn’t count on that to predict the outcome), I don’t think I would choose reeam as a route to invalidate such a patent. The court seems to be a safer venue to litigate.

  21. 97

    Do we have any Nevada attorneys out there? I am wondering if the Casinos are taking odds on how fast there rules go-down in flames. This is better than the Super Bowl. We can all thank Chief Justice Rheinquist for this mess. In the mid-1980s, when he was one back medication, he authored an opinion that was in complete contravention to established U.S. history. He stated that the ex post facto prohibition applied only to criminal law. Now these public servants think they can change the rules whenever they want. For example, not more than 8 years after that sad decision by Rheinquist, Billy-Jeff Clinton promulgated the first retroactive tax increase in the history of the United States. He was undoing the tax breaks of Bush 41. Can you imagine what the next democrat with do with Bush 43’s tax breaks? What we have here is another example of retroactive effect of legislation. This must stop. We are in a struggle for nothing less than Freedom. Can you imagine what can happen to our national character if we allow government agencies to retroactively apply rules? We might as well return to have the Crown of England be the head of our country.

  22. 96

    “Clarity Moves Innovation…” the title of the USPTO Webcast..

    What *clarity*? I must have missed that slide. Anyone see it?

  23. 95

    Points to Ponder & C:

    What about re-exam? The grounds would be 102 & 103 — not procedural grounds. Of course, you would rely on 1.78(d) to show that the patent (which was filed on a patent application after 11/01/2007) is not entitled to the priority, but in the end, you’d be arguing 102 & 103. I’m not sure, however, if you can rely on 1.78(d) to show that the patent is not entitled to the priority. Slide 30 of the USPTO PowerPoint says that the new rules apply to applications filed after 11/01/2007, but not reexamination. Does this mean that reexaminations will ignore the 1.78(d) problems of the earlier applications that were filed after 11/01/2007?

  24. 94

    Point to Ponder,

    I think this is a different situation than Exxon. In Exxon, the PTO determined that it would not enter an amendment to grant a filing date. The Exxon court noted, repeatedly, that there was no statutory or regulatory requirement that precluded the PTO from refusing to enter the amendment. Here, you have Rule 78(d)(1) that says explicitly “The Office’s entry of, or failure to delete, a specific reference to a prior filed applcaition that is not permitted by at least one of paragraphs d(1)(i) through (d)(1)(vi) of this section does not constitute a waiver of the provisions of paragraphs (d)(1) of this section.” You don’t even have an inferred waiver of the rule.

    I think there is a real good argument that the claim for priority is dead and intervening art (like the first utility that published more than a year before this third con was ever filed) can be used against the validity of the claim.

    What I think is interesting is the possibility that the mere filing of an improper third continuation can actually render the second continuation’s priority claim also invalid. Literally, that second continuation is claiming priority to the first utility, which now has its benefit claimed in the first continuation and the third continuation, the third continuation not complying with (d)(1)(ii) through (vi). There is no temporal provision to protect the continuations that came before the third con. So, if you file the third continuation with the petition (d)(1)(vi) which is denied (or the PTO simoly doesn’t notice that you needed a petition), how do you resurrect the validity of the second conintuation’s priority? Amend to delete the priority claim in the third con before you abandon it? Can amending to remove a claim for priority preserve a subsequent continuation (assuming that you still have copendency with the earlier one?)

    What about those PCTs out there that claim priority to a utility but never entered national stage because of the parallel US line? I think those count as a con too. And I don’t see how you can reserve or delete the US designation to avoid it.

  25. 92

    Webcast was a waste of time, just listening to someone read Powerpoint slides. Lame.

    PTO—“steady as she sinks”. These changes place more and more burdens on attorneys/practices, hence higher costs for clients and more trouble in and out of court and with the client.

    Considering that most cases have 25 or less claims not but examination is still slow and of spotty quality (getting worse every year for the last fifteen years, these and changes will not cure the growing problems with the PTO and the process.

    Lower the cost, turn it into a registration system (which it really is), duke it out in court.

    Oh for the days of quality examination, filing and issuing for a few hundred dollars and a “no toll road” in the PTO (i.e. not charged a fee for everything.)

  26. 91

    I believe the 5/25 rules were promulgated in clear violation of the APA-mandated notice and comment procedure since they are anonvery different from, and therefore not a “logical outgrowth” from the representative claims rules that were proposed originally. There was no APA-mandated opportunity for public comment on this aspect of the new rules.

  27. 89

    Answer to SF –

    After a patent issues, and with the exception of inequitable conduct issues, the validity of a patent is not open to collateral attack based on technical deficiencies in administrative procedure. Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 1253-54, 60 USPQ2d 1368, 1371 (Fed. Cir. 2001); Magnivision, Inc. v. The Bonneau Co., 115 F.3d 956, 960, 42 USPQ2d 1925, 1929 (Fed. Cir. 1997) (“Procedural lapses during examination, should they occur, do not provide grounds of invalidity. Absent proof of inequitable conduct, the examiner’s or the applicant’s absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued.”)

  28. 88

    35 u.s.c. 132 says, “The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant.”

    Doesn’t “to provide for… at the request of the applicant” imply that the USPTO cannot refuse to continue examination? Anyone know what the legislative history says about this?

  29. 87

    Malcolm: I was thinking litigation. Try re-exam and point out the break in the chain. I think that might work.

  30. 86

    “Now you have to file an ESD for violating 5/25?”

    No! You *can’t* file an ESD after a FAOM. My understanding is you need to file a continuation with an ESD and 17 independent claims, or choose to place just 5 of the dependent claims in independent form.

    Unfortunately, the scenarios for non-elected dependent claims (over 25) which depend from allowed independent claims get even worse.

  31. 85

    So… Ya file an application with 3 independent claims and 17 dependents all nicey nice within 5/25. You prosecute… eventually your get a final office action. All the dependents are allowed. All the independents are rejected. All the dependents depend directly from an independent. To get the broadest coverage without appeal you have to

    Place 17 claims in independent form and cancel the independent claims…sigh, ok ya do it…

    Now you have to file an ESD for violating 5/25? The Examiners search isn’t good enough? I have to do it all again? That makes as much sense as having to pay 17 Independent claim fees….

  32. 83

    “Here’s a question for the peanut gallery: if a patent that is part of a large family issues in 2010 and the patentee sues Y, under the present rules will Y be able (in theory) to count up the continuations or whatever and — if it’s the case that one of these rules was “broken” during prosecution — invalidate the patent on those grounds?”

    Is this question posed to the “peanut gallery” that occasionally posts here, or all of us? … anyways …

    Great question. Since there’s no statutory basis for denying the priority claim, I don’t think there is any way to breaking the chain of priority. However, I would expect inequitable conduct allegations for failing to let the USPTO of its mistake.

  33. 82

    Malcolm, I think the standard today would be that the Director has the power to waive (or not apply may be a better term) any rule, and the issuance of the patent (coupled with the presumption of validity) would indicate waiver. But I could be wrong.

  34. 81

    “How is Firm A supposed to know when Firm B files an application for your joint-client MegaCorp and what that application entails? The only person with knowledge of both is MegaCorp. And, if they don’t tell you, you have problems.”

    That’s true under the present rules as well.

  35. 80

    Here’s a question for the peanut gallery: if a patent that is part of a large family issues in 2010 and the patentee sues Y, under the present rules will Y be able (in theory) to count up the continuations or whatever and — if it’s the case that one of these rules was “broken” during prosecution — invalidate the patent on those grounds?

  36. 79

    Yes, I believe you can get an additional continuation using the PCT bypass approach. Whether or not you will need an ESD, however, depends solely on the number of claims in the application (assuming no office action on the merits prior to Nov. 1).

  37. 78

    Sorry, I just caught my mistake. I should have said, “without a showing”, rather than referring to an ESD.

  38. 77

    “The common owner requirement is death for portfolio work. How is Firm A supposed to know when Firm B files an application for your joint-client MegaCorp and what that application entails?
    The only person with knowledge of both is MegaCorp. And, if they don’t tell you, you have problems. Probably inequitable conduct problems.”

    I actually submitted that question during the presentation, but they never answered it.

  39. 76

    I’m trying to understand whether this, on page 46750,

    “Under § 1.78(d)(1)(iv), if a Demand has not been filed and the basic national fee has not been paid in the international application, and the international application does not claim the benefit of any other nonprovisional application or international application designating the United States of America, the applicant may file ‘‘one more’’ continuation application (or continuation-in-part application) of such international application without there being a requirement for a petition and showing under § 1.78(d)(1)(vi).”

    provides for an extra continuation. I’m relatively new at this game, so apologies if the question’s still nonsense.

  40. 75

    questioner – I don’t see how what you propose has any bearing on whether or not you will need an ESD.

  41. 74

    NL – your best option may be to drink heavily and root for the folks at Kelley Drye. I have already undertaken the first of my suggestions (well, not literally, but I do feel very hungover after that webinar).

  42. 73

    Another question: there was a quick reference to bypass applications in the Q&A, and now I’m trying to parse the rules (starting on 46733). Am I reading it right to mean that if after November 1, I have both a PCT application and a US nonprovisional pending, both of which just claim priority to a provisional application, I could file one additional ESD-free continuation by filing it as a bypass off the PCT?

  43. 72

    Question for everyone (in view of the very enlightening presentation):

    If I filed a case in 2006 that disclosed multiple inventions (let’s say 5, for example) but only claimed 1 (with the intention of filing multiple continuations but not having sufficient cash flow at the time), what is the best strategy going forward?

    I can file 5 continuations now, before Nov. 1. However, the problem there is that all of these apps will be part of one big happy ‘family’, so if I file an RCE in ANY of these cases, I will no longer have that option for any other cases.

    Another option is to file a cotinuation claiming 5 different inventions and suggesting a restriction. Then, if the Examiner agrees, I can file 5 divisional applications, each of which can have their own RCE and their own 2 continuation. Thus, this would seem like the preferred strategy.

    Now, what if the situation is further complicated by a pending PCT application? I could enter the US via the National Stage and then get 2 more continuations.

    Any thoughts?

  44. 71


    I thought about that problem too. There’s going to have to be some client counseling about this topic, and how they hand out work to outside counsel is going to have to change.

    I’m sure they’ll be glad to hear that.

  45. 69

    As noted by Kevin Noonan over at patentdocs, the worst of the proposed rules for biotech practitioners fell by the wayside. That is, we aren’t required to file all the divisionals before the original application issues. Whoever came up with that proposed rule should be slapped.

    Anyway, I thought I’d give us an opportunity to focus on “the positive side” of things.

  46. 68

    I see an ESD (aka the Document of Doom) costing about as much as an opinion. That is, very expensive!!

    They might be giants, but not mental giants!

    I hear your pleas bro-ther, but God doesn’t give a damn!

  47. 67

    Well the mental giants at the PTO sure have made a bigger mess of the system. They should have addressed the problem not treated the symptom. Looks like they are trying to reduce the number of filings, yeah thats it! Punish the applicant instead of hiring more competent examiners….God help us now!

  48. 66

    Does anyone have any idea how much an ESD will cost the client? (probally more than the original app). How about the pricing for the search?

  49. 65

    I assume for pending applications (prior to Aug. 21) for which no FAOM has issued prior to Nov. 1, that they will wait until after Nov. 1 before issuing any notices in the event you have a 5/25 issue. I’m going to file an election tonight via fax, and I’m thinking I might receive an FAOM before Nov. 1 (unless the examiner sits on it). If I receive the FAOM prior to Nov. 1, then I should be fine, and any rejoined species claims should not require an esd, even if they cause the appln to exceed 5/25. Does that make sense?

  50. 64

    metoo – well, I guess the answer is that design app’s are treated the same, even in the scenario I presented, albeit that was not an intention.

  51. 62

    Can anyone identify the closing music? Slow cadence, minor key, IOW some form of lament, LOL!

  52. 60

    my favorite part of the webinar? the haunting music at the end. sounded like a funeral dirge – what a nice touch by the PTO

  53. 59

    metoo – they asked the question and they said no additional RCEs for IDSs. period. didn’t hear anything about ESDs regarding RCEs

  54. 54

    The common owner requirement is death for portfolio work. How is Firm A supposed to know when Firm B files an application for your joint-client MegaCorp and what that application entails?
    The only person with knowledge of both is MegaCorp. And, if they don’t tell you, you have problems. Probably inequitable conduct problems.

  55. 52

    This is funny … this last question is found VERBATIM in the FAQ at E4 (i.e. automatic granting of petition)!

  56. 51

    It seems they should have specifically ignored the written FAQ’s to answer e-mailed questions. My goodness…

  57. 50

    I can’t speak for applications filed post Aug. 21, but I suspect for applications filed before Aug. 21, esp. those with FAOM and continuations/rce’s in place, it should not be too difficult to come up with good reasons to file a second or third. Besides, the petition fee is $400 – for that money, you’d think they would grant it if the arguments are reasonable.

  58. 49

    lgb – I’m pretty certain you can file as many continuations and CIPs you want before Nov. 1. After Nov. 1, in every “family” in which no pending cont or CIP application claims priority to an app filed after Aug. 21, you get one more continuation or CIP (regardless of how many pre 8/21 apps are in that family). They did that to try their best to cut down on cont and CIP filings between now and Nov. 1

  59. 48

    What is this different requirement for SMALL ENTITY? Where is the formal definition published? I don’t think it helps any real, for-profit companies…

  60. 46

    I recall the producers of the “$64K Question” got into Dutch for a phony “live” spontaneous broadcast. Shouldn’t the PTO be held to an even higher standard?

  61. 45

    metoo – I think you are only allowed one more continuation before Nov. 1, provided you filed more than 1 prior to aug. 21 in a pre-aug 21 application? That is what the slide shows, if I’m understanding it correctly.

  62. 43

    They’re not saying that you couldn’t file that RCE, just that you’d need to file an ESD as well (if they didn’t buy your showing).

  63. 42

    what about the common scenario in which you previously received a final OA which was improper, yet you chose to file an RCE rather than petitioning. would that be enough of a justification for another RCE in the same family?

  64. 40

    metoo- good, sounds like I’m not missing much. 🙂 Let me know if design patents come up. I just saw a post that they are reading from the FAQ pdf file – I thought I remembered one of those questions.

  65. 39

    LOL – Question: Can you file as many continuations as you want before Nov. 1?
    {incredibly long and uncomfortable pause}
    short answer – yes, but you lose the right to file one after Nov. 1

  66. 38

    Ms. Peterlin read an introduction, which was then repeated verbatim by Bahr, then she totally disappeared. . . Is that probative in Aharonian’s suit?

  67. 35


    1 RCE filed, first action issued, applicant amended, Examiner finds new art and issues final rejection (necessitated by applicant’s amendment), you decide that an amendment is more proper than an appeal (i.e., the appeal is not ripe based on the new art cited) …


    shouldn’t the “showing” needed to justify the second RCE be pretty easy to make? you should just have to say that you couldn’t have presented the new arguments and/or claim amendments based on art that you never saw before.

  68. 34

    Dear Mr. Dudas,
    Will you testify for me in my inequitable conduct case when I can’t get a piece of relevant art in front of the patent office simply becuase I ran out of my one RCE? If not, can I live in one of the PTO’s conference room?

  69. 33

    Yes, LGB, you are missing some incredibly insightful comments – like how copendency under 35 USC 120 requires an application be pending before the other case actually issues (i.e., copendency does not end when a notice of allowance issues). Wow – who would have thunk.

  70. 32

    I cannot believe I’m losing the connection – I sat through an hour of nonsense, reading from slides, and now I can’t hear the q&A. I guess I’ll have to listen to it again on monday.

  71. 28

    I wonder if they are reading these comments while answering questions?

    Posted by: language nut | Aug 23, 2007 at 02:26 PM
    Mr. Barr, tf you are, EAT ME!

  72. 25

    inquiring mind – b/c they don’t know and are probably betting no one will file one.
    I’m having buffering issues and missing some of the Q&A – if they answer my design patent question, would someone post it here?

  73. 24

    metoo – the time may be when the page was launched – I was able to log in about 10 minutes before the webcast.

    Although I just heard a question that is clearly in the FAQ, so I’m wondering if these are truly questions posted from attorneys or the PTO.

  74. 23

    Gee, I wonder why they completely ducked the question about what is required for a showing?

  75. 21

    Does anyone else see this? I’m using Firefox, and in the left hand box of the pop-up window, beneath the audio controls, it has the following: 8/23/2007 9:00:03 AM Hmmmm….does that mean this entire audio stream was created this morning (i.e., is not live)??? Yet, the same window has a button for e-mailing the presenter.

  76. 19

    Here is the question I submitted:

    “How will the Office handle a refused benefit claim made while the rules are in effect once the rules are overturned in court?”

    Wonder why they aren’t answering it?

  77. 17

    It sounds like the questions/answers were pre-selected, like on the “$64K Question” a few decades ago.

  78. 16

    I just can’t force myself to listen anymore.
    As they said in the Army, “‘smoke’ ’em if you got ’em.”
    For me, I’m going for a wet lunch.

  79. 14

    Anyone else notice that Ms. Peterlin read her carefully prepared opening statement and finished with something to the effect “hope yall enjoy.” Don’t know why that “yall” thing bugged me so much but, gosh…

  80. 13

    Re: Peterlin….they could easily get her to explain it. How do half these judges get confirmed? They are grilled until they can spout details in their sleep.

  81. 12

    Metoo – Unfortunately, it is not a hypo but a real situation for me. Not only that, I have 3 pending utility applications with design application claiming their benefit (some of the design applications have issued or been allowed)that have well over 5 ind. and 25 total claims – I may be fortunate enough in the first to get an FAOM, but oh no, not so, for the other 2.

  82. 11

    Very good compliance with Administrative Procedures Act.
    Notice and Comment Rule Proposed, 500+ comments, ignoring the huge opposition, and implementing the rules anyway. Very nice PTO.

    N.B. to “Points to Ponder” I would love to hear Ms Peterlin explain this….I could use the entertainment.

  83. 10

    This is awful. They are about as dry as can be, and they are basically reading the statute, without much explanation. And I hate the guy that asks the questions, I wish him harm.

  84. 9

    Only about 20 pages to go … We should have about an hour for questions. Hopefully it will start to get more interesting shortly …

  85. 7

    Wow, a two-hour infomercial for the need for litigation.

    Gosh this is complicated. I wonder if Ms. Peterlin, who won so much praise at the beginning of the presentation, could go over it again and explain it a little more clearly.

  86. 4

    LOL – did you intentionally try to come up with a question that would stump them, LGB? Yes, it is definitely a legitimate question. And what about the common situation where you file multiple design patent applications covering different design elements of an article? It would appear that the rules apply to design patent apps, but was that intended?

  87. 3

    I was thinking the same thing – it is going pretty quickly. I submitted a question right before the webcast, so we’ll see. My question addresses the effect of a continuing design application claiming priority of a utility application (all filed before 8/21/07) -how does it affect the ability to file continuations on the utility applications? I emailed this question yesterday, and the only reply was that the rules apply to all app’s filed under Sec. 111(a) – I don’t think my question was understood. And I don’t think they thought through this particular situation.

  88. 2

    I agree wholeheartedly – all he’s doing is basically reading the slides.

    I’ve already submitted three questions. We’ll see how many they get to.

    On a positive note, they’re reading the slides fairly quickly, so I guess they’re planning on spending a LOT of time on questions (we’re only about 30 minutes into a 2 hour presentation!)

  89. 1

    I’m listening to the “webinar” now, and it is,so far, a huge waste of time. He is just reading the slides, with no elaboration. I already read the slides – I need to hear answers to questions. The only difference between just reading the slides ahead of time and listening to this webcast, is that some other guy is asking a question to introduce the slide, and then Baher answers by reading from the slides. I wish they would please stop and answer questions.

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