By Jason Derry* and Donald Zuhn —

The U.S. Patent and Trademark Office has made four significant changes to the new
continuation and claims rules, which appear to ease at least some of the new burdens
applicants are now facing as the effective date
of the new rules approaches.  In particular, the changes apply to:

(1)  The "one more" continuing application
provision (see 72 Fed. Reg. 46,717);
(2)  The CIP identification requirement of 37 C.F.R. § 1.78(d)(3);
(3)  The identification requirement of 37 C.F.R. § 1.78(f)(1); and
(4)  The meaning of the term "examined" in 37 C.F.R. §
1.78(d)(1)(ii)(B).

The full explanation of the changes can be found here.  The practical effects of these changes are described below:

(1)  The "one more" continuing application
provision set forth in the new rules notice (see 72 Fed. Reg. 46,717) allows an applicant who has filed
two or more continuation or continuation-in-part applications of an initial
application before August
21, 2007 to file "one more" continuing application on or
after August 21, 2007 without submitting a petition and showing.

In today’s notice, the Patent Office acknowledged a not so minor problem with the "one more" provision, whereby an applicant
could turn a proper "one more" continuing application into an improper one by simply filing a continuing application that satisfies Rule 78(d)(1)(ii), (iii), or (vi) after November 1, 2007.  In
particular, because the "one more" provision requires that there be
"no other application filed on or after August 21, 2007 that also claims the benefit
under 35 U.S.C. 120, 121, or 365(c) of [priority applications filed before August 21, 2007]," a
proper divisional application, for example, which claims the benefit of such
prior-filed applications would destroy the benefit claim of the "one
more" continuing application.

To eliminate this unintended consequence of the "one more" provision, the Patent Office has suspended the provisions
of Rule 78(d)(1), pursuant to Rule 183, to the extent that a continuing application that satisfies the
conditions set forth in Rule 78(d)(1)(ii), (iii), or (vi) would have been
considered an "other application filed on or after August 21, 2007 that also claims the
benefit under 35 U.S.C. 120, 121, or 365(c) of such prior-filed nonprovisional
applications or international applications.’"

(2)  For CIP applications pending before November 1, 2007 in which
a first Office Action on the merits has been mailed before November 1, 2007, applicants DO
NOT have to comply with 37 C.F.R. § 1.78(d)(3).  Thus, in these situations, applicants do not have to identify the claim or
claims in the CIP that are supported by the prior application, unless
specifically asked to do so by an Examiner pursuant to 37 C.F.R.
§ 1.105(a)(1)(ix).

Applicants still must identify support in the prior
application in CIP applications where a first Office Action on the merits has
not been mailed before November
1, 2007.  However, the date for compliance with this
requirement is now February
1, 2008 (previously, the new rules notice was silent as to any compliance date).

(3)  For applications filed before November 1, 2007, the Patent Office
is waiving the "within two months" provision in 37 C.F.R. § 1.78(f)(1)(i)(A), which required applicants to identify commonly-owned applications
and patents having a filing or priority date within two months of a subject
application.  Therefore,
applicants no longer have to worry about scouring their patent portfolios
for pending applications and issued patents that happen to be commonly owned, have a common
inventor, and have a filing or priority date that, while not the same, falls within a two month
window.  It
is important to note that applicants must still identify commonly-owned applications
or patents sharing a common inventor which have the same filing or priority date
as the subject application.

In addition, the Patent Office is also waiving the
"within two months" provision in certain instances for
applications filed on or after November 1, 2007.  While the intent of the Office may have been to simplify the identification requirement, the provision for applications filed on or after November 1, 2007 is anything but simple.  In particular, the PTO notice states that under the new version of the new rule, applicants are:

not required to identify any other
pending or patented application that has an actual filing date or benefit or
priority filing date before November
1, 2007, unless: (1) the subject application has a benefit or
priority filing date that is the same as the actual filing date or the benefit
or priority filing date of the other application; or (2) the subject
application has an actual filing date or benefit or priority filing date on or
after November 1, 2007 that is the same as or within two months of the actual filing date or the
benefit or priority filing date of the other application.

In other words, for subject applications filed on or after November 1, 2007, an applicant need only identify (1) applications and patents having a filing or priority date that is the same as a priority date of the subject application, when the subject application’s priority date is before November 1, 2007, or (2) applications and patents having the same filing or priority date OR a filing or priority date that falls within two months of the subject application’s filing or priority date, when the subject application’s filing or priority date is on or after November 1, 2007 [NOTE: This paragraph has been updated since this article was originally posted.]

(4)  Finally, it appears that the Patent Office has finally resolved an issue that has caused a recent uproar in the patent community.  As discussed in this space yesterday (see "An Analysis of the New Rules: 37 C.F.R. § 1.78(a)(2): Divisional Dilemma?"), the Patent Office’s interpretation of the phrase "examined in any prior-filed application" in Rule 78(a)(2) – as well as in Rule 78(d)(1)(ii)(B) – created (perhaps) a situation in which applicants would have to file all of their divisional applications before November 1, 2007 if an International application and Demand had been previously filed on the claim set.  As we reported, even Commissioner Doll was stumped by the effect of this rule on an applicant’s ability to file proper divisional applications on or after November 1, 2007 (see "It Ain’t Necessarily So").

With respect to the Patent Office’s revised interpretation of the term "examined," the notice states that:

The term “examined” in 37 CFR 1.78(d)(1)(ii)(B) does not include the international phase examination under
PCT Article 31 that occurs as a result of the filing of a Demand for
international preliminary examination.  Therefore, if an applicant files an
initial application which is an international application designating the U.S.
and the International Searching Authority determines that the international
application lacks unity of invention under PCT Rule 13, the filing of a Demand
and the examination of all the inventions in Chapter II would not preclude the
applicant from filing a divisional application for each invention not elected
for examination in the application after entry into the national stage,
assuming that such divisional application or applications otherwise meet the
conditions set forth in 37 CFR 1.78(d)(1)(ii).

The Patent Office has indicated that the relevant questions added to its Frequently Asked Questions on September 26, 2007 (i.e., C8 and C11)
will be revised accordingly.  [In fact, the Office has already revised the responses to questions C8 and C11.]

While the Patent Office’s new interpretation of "examination" provides some relief to anxiety-stricken applicants who have been debating whether to file a boatload of divisional applications before November 1st, the new interpretation does seem to conflict with the express language of Rule 78(a)(2), which precludes the filing of a divisional application where an invention or inventions has been "subject to a requirement to
comply with the requirement of unity of invention under PCT Rule 13" (and where the other three requirements of Rule 78(a)(2) have been met).  [Rule 78(d)(1)(ii)(B) contains a similar requirement.]

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.78(a)(2): Divisional Dilemma?" October 9, 2007
• "An
  Analysis of the New Rules: 37 C.F.R. § 1.142(c): Increasing the Chances
  of Submitting a Successful Suggested Restriction Requirement (SRR)," October 4, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.145: "Provoking a Restriction Requirement," October 3, 2007
• "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:

• "‘Impact’ of New Continuation and Claims Rules," October 8, 2007
• "Is the Patent Office Starting to Blink," October 5, 2007
• "Breaking A Very Long Silence," October 1, 2007
• "It Ain’t Necessarily So," September 28, 2007
• "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

*Jason Derry, Ph.D., who graduated with honors from DePaul University
College of Law, is a molecular biologist and founding author of Patent Docs.