By Christopher P. Singer —

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.

Final Action Practice:

Because the revised rules relating to continuation practice limit the number of continuation applications and requests for continued examination (RCE) to two and one, respectively, per application family (see our earlier reports on 37 C.F.R. § 1.78(d)(1)(i) and 1.114), applicants and practitioners receiving Final Office actions will view them with a new gut-churning sense of dread.  Thus, the Final Office action represents an important crossroads for the applicant, and warrants a carefully thought out plan of action.  In this situation, the case can be taken to appeal, one of the precious continuations or single RCE can be filed, or the application can be abandoned.

Assuming that one elects to continue with prosecution by filing either a continuation application or the RCE, it will very important to guard against receiving a first Office action final rejection (or a second Office action final rejection).  The Patent Office reminds applicants that Final actions are improper in a first action after filing a continuation or RCE if the application contains material that was presented after final rejection, or close of prosecution, but was denied entry because it either raised new issues that require new consideration or search or new matter concerns.  Accordingly, applicants can hedge against a first Office action final rejection by requesting entry of the amendment, argument, or new evidence under 37 C.F.R. § 1.116.  Also, it will be important to confirm that the finality of the Office action is appropriate.

Interestingly, in the "Background" section of final rule notice the Patent Office mentions that it considered eliminating first Office action final practice as unnecessary in view of the limited availability to file continuing applications.  Nevertheless, the Patent Office decided to retain this practice because the continuation and claims rules provide that an applicant may file the RCE in any application in the family without any justification (the reasoning of which escapes me, as one may have just used the RCE to continue prosecution).

The Patent Office is also revising aspects of its second action final practice.  Such actions can be made final except when the action contains a new ground of rejection that is not: (1) necessitated by an amendment of the claims, including an amendment to eliminate unpatentable alternatives; (2) based on an IDS filed after a first Office action on the merits; (3) based on a double patenting rejection; or (4) necessitated by applicant’s identification of claims in a CIP that find 35 U.S.C. § 112 support in a prior-filed application.  These changes reflect aspects of the shifting of certain burdens to applicants, such as required by 37 C.F.R. § 1.78(f) (identifying applications and patents naming a common inventor) and § 1.78(d)(3) (identifying earliest support for claims in a CIP application).  Certainly, the changes to continuing application practice has underscored the importance of avoiding or delaying Final Office actions and will force practitioners to be creative in crafting strategies for effective responses to Final Office actions.

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. §§ 1.78(d)(1) and 1.114: Streamlined Examination," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.117: Refund Due to Cancellation of Claims," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.142: Suggested Restriction Requirements," September 6, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.114: RCE Practice," September 5, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.75(b): 5/25 Limit on Claims," September 4, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1): Claims for Benefit of Prior-Filed Applications," September 3, 2007
• "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:

• "Rules Challenger Amends Complaint and Withdraws PI Motion," September 11, 2007
• "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