By Kevin E. Noonan —

As Patent Docs
reported on Wednesday, Patent Commissioner John Doll (at right) was the luncheon speaker at
the American Conference Institute’s Biotech Patents conference in Boston.  During the question-and-answer session, the Commissioner
was asked about information one participant had received from a Patent Office
official regarding divisional application practice.  Specifically, the question was about the
effect of filing a Chapter II Demand and receiving an International Preliminary
Examination in a PCT application claiming priority to a provisional application
that had also been converted to a U.S. non-provisional application.  In the scenario, the U.S. Examiner imposes a
restriction requirement in the non-provisional application, and the question
was whether the applicant had a right to file a divisional application on the
non-elected
claims.  The Patent Office
official had told the questioner that the Office would consider a divisional to
be precluded for any claims examined during the International phase, since the
new rules limited divisional application claims to claims that had not been
previously examined.  According to the
official, the International Preliminary Examination would qualify as a
"previous examination," and the divisional filing would be improper.

Commissioner
Doll stated at lunch that it was not the Office’s intention that an International
Preliminary Examination would preclude an applicant from filing divisional
applications in response to a U.S. Examiner-imposed restriction requirement in
a national phase application.  He also
promised to "get back to us" on the proper interpretation of the
rule.

It seems
that overnight Commissioner Doll either had a change of heart or was informed
that he was misinformed.  To clarify, if
a PCT application undergoes International Preliminary Examination, the Patent
Office will count that as a "previously-examined claim" and preclude
an applicant from filing a divisional application on any such claim in response
to a restriction requirement.  This
interpretation can be found in Frequently Asked Qustions (FAQ) Nos. C8 and C11
on the Patent Office website:

C8.  If applicant filed an initial application which is an
international application designating the U.S. and the international
application contains two inventions, can applicant file one continuation
application and submit a suggested restriction requirement (SRR) in the
continuation application rather than file two continuation applications?  Will
the Office count the withdrawn claims in determining whether the continuation
application exceeds the 5/25 claim threshold?  (Posted on 9/26/07)

Yes, an applicant may file a continuation application and
submit an SRR in the continuation application in lieu of filing two separate
continuation applications.  If the SRR is accepted and the examiner makes a
restriction requirement, applicant may file a divisional application for the
claims to the non-elected invention that has not been examined.  Note that
applicant may not file a divisional application to claim an invention that has
been examined in the international application designating the U.S. upon the
filing of a Demand.

The Office will not count the withdrawn claims in
determining whether an application exceeds the 5/25 claim threshold.  Therefore,
if the elected invention in the continuation application is drawn to 5/25 or
fewer claims, applicant is not required to file an ESD before the FAOM.

C11.  If applicant filed an initial application which is
an international application designating the U.S. and the International
Searching Authority determined that the international application lacks unity
of invention under PCT Rule 13, can the applicant file a divisional application
for the non-elected invention that was not examined in the international
application?  (Posted on 9/26/07)

Yes, applicant may file a divisional application for each
non-elected invention that was not examined in the international application.  However, if applicant filed a Demand and paid the additional examination fees
and all of the inventions were examined in the international application,
applicant may not file a divisional application.  This is because under PCT
Article 31, "examination" in the international phase is contingent
upon the filing of a Demand for international preliminary examination.  The
non-elected invention would be examined within the meaning of 37 CFR
1.78(d)(1)(ii) in the international application designating the U.S.

Thus, it is
now foolhardy to file a Chapter II Demand in any PCT application claiming
priority to the U.S.  In view of the
differences, long touted by the Patent Office and recognized in voluminous case
law, between the standards of an International Preliminary Examination and a
U.S. Patent Office examination, this interpretation exceeds the ironic and
borders on the nonsensical (and probably is contrary to U.S. law), but that
doesn’t seem to be a factor in the Office’s decision-making.

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1)(i) & (vi): PCT Practice," September 23, 2007
• "An Analysis of the New Rules: USPTO Releases ESD Guidelines," September 17, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.265: Examination Support Document," September 13, 2007
• "An Analysis of the New Rules: Revisions to First Action and Second Action Final Practice," September 11, 2007
• "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:

• "Commissioner Doll Addresses ACI Biotech Patents Conference," September 26, 2007
• "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