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

Patent 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.

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