By Jason Derry —

Patent Docs has learned from posts to the "EFS-Web" list that the U.S. Patent and Trademark Office is now identifying applications in private PAIR as failing to comply with the new 5/25 claim limitation rules.  Users of Partridge, a free program developed by the Oppedahl Patent Law Firm LLC to help monitor status changes in PAIR, have reported that several of their pending applications that have more than 5 independent claims and more than 25 total claims are now shown in PAIR as "flagged for 5/25" or "Request for SIR — Recorded."  The last identifier is a bit of a mystery, since the users reported that they had not requested SIRs.

The Patent Office seems to be actively identifying pending applications in which a notice of non-compliance with 37 C.F.R. § 1.75(b) needs to be issued.  Thus, applicants should be identifying their applications that are destined to receive a notice under Rule 75(b)(3), and should decide how to place those applications into compliance with the new claim limitation rules.  Otherwise, applicants will be forced to comply with the new 5/25 claim limits within a two-month, extendable time limit imposed by a notice under Rule 75(b)(3).  Unless the notice accompanies a requirement for restriction from the Examiner, options for responding to the notice include: (1) filing an Examination Support Document (ESD); (2) filing a new set of claims that comply with the 5/25 limits; or (3) filing a Suggested Requirement for Restriction (SRR).

For additional information regarding this topic, please see:

• "Patent Office Has Stopped Examining Patents with 25+ Claims," Patently-O

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