By Donald Zuhn —

On August 21, 2007, the U.S. Patent and Trademark Office published new rules concerning continuation and claims practice that will undoubtedly have a profound effect on the way patent attorneys and agents prosecute applications before the Patent Office.  In view of the 128-page Federal Register notice
regarding the new rules, the Patent Office’s nearly two hour webcast on
August 23, 2007 (and the webcast’s accompanying 109-page presentation), and the Office’s 45-page list of Frequently Asked Questions, Patent Docs believes it may be helpful to examine the rules piece-by-piece in an attempt to identify areas where patent attorneys and agents will need to modify their patent prosecution practice.

37 C.F.R. § 1.78(d)(1):

The prior version of 37 C.F.R. § 1.78 contained subparts (a) to (c).  Among the new subparts added to Rule 78 is subpart (d), which is further divided into five parts.  Rule 78(d) provides conditions under which an application may claim the benefit of a prior-filed nonprovisional or International application.  In particular, a nonprovisional application will be entitled to claim the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the U.S. only if it satisfies the requirements set forth in at least one of the paragraphs of § 1.78(d)(1)(i) through (d)(1)(vi).  In the event that an applicant makes a benefit claim that does not satisfy at least one of the paragraphs of Rule 78(d)(1)(i) through (d)(1)(vi), the Patent Office will refuse to enter the benefit claim, or will delete the claim if present.

Rule 78(d)(1)(i) specifies that a continuation or continuation-in-part application of a prior-filed nonprovisional application is permitted when (1) the continuation or continuation-in-part application claims the benefit of no more than two prior-filed applications, and (2) any application whose benefit is claimed has its benefit claimed in no more than one other nonprovisional application (excluding applications that satisfy the provisions of Rule 78(d)(1)(ii)-(iv)).  Rule 78(d)(1)(i), therefore, allows an applicant to continue prosecution of an application via two continuation applications, a continuation application and a continuation-in-part application, or two continuation-in-part applications.

Rule 78(d)(1)(ii) specifies that a divisional application is permitted when the divisional application (1) contains claims to a non-elected invention that was subject to a restriction or unity of invention requirement in a prior-filed application, and (2) the non-elected invention was not examined in the prior-filed application.  Rule 78(d)(1)(ii), therefore, allows an applicant to obtain examination of claims that have been withdrawn from consideration in a prior-filed application due to a restriction or unity of invention requirement.

Rule 78(d)(1)(iii) specifies that a continuation of a divisional application is permitted when (1) the divisional application satisfies the benefits of § 1.78(d)(1)(ii), (2) the continuation discloses and claims only an invention that was not disclosed and claimed in the divisional application, (3) the application claims the benefit of only the divisional application, any application to which the divisional application claims the benefit pursuant to § 1.78(d)(1)(ii), and no more than one intervening prior-filed nonprovisional application (i.e., only one continuation application of the divisional application filed between the divisional application and the second continuation application of the divisional application), and (4) no more than one other nonprovisional application claims the benefit of the divisional application.  Rule 78(d)(1)(i), therefore, allows an applicant to continue prosecution of a divisional application via two continuation applications (but not a continuation-in-part application, since the PTO states in its final rule notice that Rule 78(d)(1)(iii) was not designed "to permit an applicant to seek patent protection for a new invention that merely bears some relationship to an invention or inventions that were disclosed and claimed in a divisional application").

Rule 78(d)(1)(iv) applies to "bypass" continuation or continuation-in-part applications.  A bypass application is an application that claims the benefit of an international application that did not enter the national stage.  Under Rule 78(d)(1)(iv), an applicant filing a bypass application will be permitted to file "one more" continuation or continuation-in-part application without having to file a petition and showing under § 1.78(d)(1)(vi), provided that (1) a Demand for international preliminary examination has not been filed and the basic national fee has not been paid for the international application, and the international application does not claim the benefit of any other nonprovisional application or international application designating the U.S., and (2) the bypass application claims the benefit of no more than three prior-filed applications, and any application whose benefit is claimed has its benefit claimed in no more than two other nonprovisional applications (excluding applications that satisfy the provisions of Rule 78(d)(1)(ii)-(iv)).

Rule 78(d)(1)(v) applies to situations in which a prior-filed nonprovisional application becomes abandoned due to an applicant’s failure to timely reply to a Notice of Missing Parts.  Under Rule 78(d)(1)(v), an applicant filing such an application will be permitted to file "one more" continuation or continuation-in-part application without having to file a petition and showing under § 1.78(d)(1)(vi), provided that the application claims the benefit of no more than three prior-filed applications, and any application whose benefit is claimed has its benefit claimed in no more than two other nonprovisional applications (excluding applications that satisfy the provisions of Rule 78(d)(1)(ii)-(iv)).

Rule 78(d)(1)(vi) permits an applicant to file a continuing application claiming the benefit of a prior-filed application without satisfying Rule 78(d)(1)(i)-(v), provided that the applicant also files a petition, fee, and showing that an amendment, argument, or evidence sought to be entered with the continuing application could not have been submitted during the prosecution of the prior-filed application.  Rule 78(d)(1)(vi), therefore, allows an applicant to continue prosecution of an application via a continuing application to obtain consideration of an amendment, argument, or evidence that could not have been submitted during the prosecution of the prior-filed application.  The petition must be provided within four months of the filing date or entry into national stage of the continuing application.

As described in the Patent Office’s new rules FAQ, the PTO will determine on a case-by-case basis whether an applicant’s showing is satisfactory.  Factors that the Patent Office will consider when deciding whether to grant a petition include: (1) whether an applicant should instead file an appeal or petition to withdraw the finality of an Office action, (2) the number of other filed applications having substantially identical disclosures, and (3) whether the showing was submitted with reasonable diligence.  The PTO warns, however, that "[a]pplicants should not rely upon the availability of additional continuing applications or RCEs in prosecuting an application."

The requirements of Rule 78(d)(1) apply to any application filed on or after November 1, 2007, or any application entering national stage on or after November 1, 2007.

For additional articles in this series, please see

• "An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents," August 27, 2007

For additional information on this and other related topics, please see:

• "Inventor Sues PTO to Prevent New Continuation Rules from Taking Effect," August 30, 2007
• "Patent Office Provides Recorded Web-Based Discussion of New Rules," August 30, 2007
• "New PTO Continuation Rules: Unfair to Biotech?" August 29, 2007
• "Proposed Agenda for September 12, 2007 Biotechnology/ Chemical/Pharmaceutical Art Group Meeting," August 24, 2007
• "The ‘Word’ on the New Continuation Rules (from the USPTO Webcast) – Part II," August 24, 2007
• "The ‘Word’ on the New Continuation Rules (from the USPTO Webcast) – Part I," August 23, 2007
• "New Continuation and Claims Rules Published," August 22, 2007
• "More on M.P.E.P. § 710.06," August 20, 2007
• "Patent Office to Hold Webcast on New Claim and Continuation Rules on August 23, 2007," August 20, 2007
• "Patent Office Announces that New Continuation and Claims Rules Will Be Published . . . Tomorrow," August 20, 2007
• "Procuring Patent Protection from the Present USPTO," August 15, 2007
• "New Continuation and Claims Rules to Be Published in Late Summer," July 25, 2007
• "They Just Don’t Get It – ‘Patent Reform’ at the USPTO," April 11, 2007
• "Patent Applicants Beware: The Rules Are Changing (Again)" Part 1 and Part 2, November 6, 2006

Text of new Rule 78(d)(1):

(d) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or international application. A nonprovisional application (including an international application that has entered the national stage after compliance with 35 U.S.C. 371) may claim the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States of America under the conditions set forth in 35 U.S.C. 120 and paragraph (d) of this section.

(1) A nonprovisional application that claims the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States of America must satisfy the conditions set forth in at least one of paragraphs (d)(1)(i) through (d)(1)(vi) of this section. The Office will refuse to enter, or will delete if present, any specific reference to a prior-filed application that is not permitted by at least one of paragraphs (d)(1)(i) through (d)(1)(vi) of this section. The Office’s entry of, or failure to delete, a specific reference to a prior-filed application 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 paragraph (d)(1) of this section.

(i)(A) The nonprovisional application is either a continuation application as defined in paragraph (a)(3) of this section or a continuation-in-part application as defined in paragraph (a)(4) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of no more than two prior-filed applications; and
(B) Any application whose benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in such nonprovisional application has its benefit claimed in no more than one other nonprovisional application, not including any nonprovisional application that satisfies the conditions set forth in paragraph (d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this section.

(ii)(A) The nonprovisional application is a divisional application as defined in paragraph (a)(2) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application that was 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; and
(B) The divisional application contains only claims directed to an invention or inventions that were identified in such requirement to comply with the requirement of unity of invention or requirement for restriction but were not elected for examination and were not examined in the prior-filed application or in any other nonprovisional application, except for a nonprovisional application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such divisional application and satisfies the conditions set forth in paragraph (d)(1)(iii) or (d)(1)(vi) of this section.

(iii)(A) The nonprovisional application is a continuation application as defined in paragraph (a)(3) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a divisional application that satisfies the conditions set forth in paragraph (d)(1)(ii) of this section;
(B) The nonprovisional application discloses and claims only an invention or inventions that were disclosed and claimed in such divisional application;
(C) The nonprovisional application claims the benefit under 35 U.S.C. 120, 121, or 365(c) of only the divisional application, any application to which such divisional application claims benefit under 35 U.S.C. 120, 121, or 365(c) in compliance with the conditions set forth in paragraph (d)(1)(ii) of this section, and no more than one intervening prior-filed nonprovisional application; and
(D) The divisional application whose benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in such nonprovisional application has its benefit claimed in no more than one other nonprovisional application, not including any other divisional application that satisfies the conditions set forth in paragraph (d)(1)(ii) or any nonprovisional application that claims the benefit under 35 U.S.C. 120 or 365(c) of such other divisional application and satisfies the conditions set forth in paragraph (d)(1)(iii) or (d)(1)(vi) of this section.

(iv)(A) The nonprovisional application claims benefit under 35 U.S.C. 120 or 365(c) of a prior-filed international application designating the United States of America, and a Demand has not been filed and the basic national fee (§ 1.492(a)) has not been paid in the prior-filed international application and the prior-filed international application does not claim the benefit of any other nonprovisional application or international application designating the United States of America;
(B) The nonprovisional application is either a continuation application as defined in paragraph (a)(3) of this section or a continuation-in-part application as defined in paragraph (a)(4) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of no more than three prior-filed applications; and
(C) Any application whose benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in such nonprovisional application has its benefit claimed in no more than two other nonprovisional applications, not including any nonprovisional application that satisfies the conditions set forth in paragraph (d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this section.

(v)(A) The nonprovisional application claims benefit under 35 U.S.C. 120 or 365(c) of a prior-filed nonprovisional application filed under 35 U.S.C. 111(a), and such nonprovisional application became abandoned due to the failure to timely reply to an Office notice issued under § 1.53(f) and does not claim the benefit of any other nonprovisional application or international application designating the United States of America;
(B) The nonprovisional application is either a continuation application as defined in paragraph (a)(3) of this section or a continuation-in-part application as defined in paragraph (a)(4) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of no more than three prior-filed applications; and
(C) Any application whose benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in such nonprovisional application has its benefit claimed in no more than two other nonprovisional applications, not including any nonprovisional application that satisfies the conditions set forth in paragraph (d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this section.

(vi) The nonprovisional application is a continuing application as defined in paragraph (a)(1) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application, is filed to obtain consideration of an amendment, argument, or evidence that could not have been submitted during the prosecution of the prior-filed application, and does not satisfy the conditions set forth in any of paragraphs (d)(1)(i) through (d)(1)(v) of this section. A petition must be filed in such nonprovisional application that is accompanied by the fee set forth in § 1.17(f) and a showing that the amendment, argument, or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application. If the continuing application is an application filed under 35 U.S.C. 111(a), this petition must be submitted within four months from the actual filing date of the continuing application. If the continuing application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this petition must be submitted within four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in the international application.