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  • An Analysis of the New Rules: Revisions to First Action and Second Action Final Practice

        By Christopher P. Singer —

    Uspto_seal_no_background
    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:

    Federal_register_cover
    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:

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

  • Rules Challenger Amends Complaint and Withdraws PI Motion

    Tafas v. Dudas, No. 07-CV-846 (E.D. Va.) (filed Aug. 22, 2007)

        By Robert Dailey —

    Ikonisys
    Triantafyllos Tafas has amended his complaint challenging the new USPTO rules set to take effect November 1, 2007.  In addition, Tafas has withdrawn his motion for a preliminary injunction (PI) enjoining the PTO from implementing the new rules.  His notice withdrawing the PI motion states that he is withdrawing the motion because it relied on his previous complaint.  But he has yet to file a new PI motion based on the newly filed amended complaint.

    The amended complaint largely repeats the claims of the original complaint.  In the previous complaint, though, Tafas had been rather vague about the manner in which the new rules violate the Patent Act and the Administrative Procedure Act (APA).  The amended complaint fleshes out these statutory claims with greater specificity.  As discussed in a previous post, Tafas is most likely to prevail, if at all, on these statutory arguments.

    Uspto_seal
    Tafas has added one additional statutory argument based on the Regulatory Flexibility Act (RFA).  Under the RFA, when a federal agency issues new rules that could affect small entities, "the agency shall prepare and make available for public comment an initial regulatory flexibility analysis" in relation to the proposed rule.  See 5 U.S.C. § 603(a).  The agency must then prepare a final flexibility analysis when the final rules issue.  Id. at § 604.  The RFA permits the agency to avoid these requirements only "if the head of the agency certifies that the rule will not, if promulgated, have a significant economic impact on a substantial number of small entities."  Id. § 605(b).  In this instance, the PTO simply claimed the exception for itself without listening to the chorus of small entities decrying the innovation-squelching effects of the new rules.

    Tafas appears to have a strong argument under the RFA.  This complements his solid arguments under the APA.  Of course, what Congress gives (via the APA or the RFA), it can take away through patent reform.

    We will keep watching the progress of this case and provide periodic updates as they become available.

    • Tafas’ amended complaint can be viewed here.
    • Tafas’ withdrawal of motion for a preliminary injunction can be viewed here.

    For additional information on this case, please see:

  • An Analysis of the New Rules: 37 C.F.R. §§ 1.78(d)(1) and 1.114: Streamlined Examination

        By Donald Zuhn —

    Uspto_seal_no_background
    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) and 1.114:

    As discussed in our earlier reports on 37 C.F.R. §§ 1.78(d)(1) and 1.114, the new continuation and claims rules establish a "2 + 1" rule, which allows an applicant to file two continuation or continuation-in-part (CIP) applications and only one request for continued examination (RCE) per application family without any justification.  Because an applicant cannot agree to forgo a continuation application (or CIP) to obtain a second or third RCE or forgo an RCE in exchange for a third continuation or CIP under the new rules, the Patent Office will be implementing a new streamlined continuation application procedure.  This new procedure recognizes the time to examination differences between continuation applications and RCEs (i.e., continuation applications generally take longer to be examined than RCEs).

    Federal_register_cover
    Under the new streamlined continuation application procedure, an applicant may request to have a continuation application filed on or after November 1, 2007 placed on an examiner’s amended docket (otherwise known in PTO parlance as the examiner’s Regular Amended docket).  In the absence of such a request, the continuation application will be placed on the examiner’s new continuing application docket (otherwise known in PTO parlance as the examiner’s New Special Docket).  Continuation applications placed on an examiner’s Regular Amended docket will ordinarily be picked up for action quicker than continuation applications placed on the examiner’s New Special docket.

    To properly request that a continuation application be placed on an examiner’s Regular Amended docket, the following conditions must be satisfied:

    1.  The applicant must make a request that the continuation application be placed on an examiner’s Regular Amended docket.

    2.  The application must disclose and claim an invention or inventions that were disclosed and claimed in the prior-filed application.

    3.  The applicant must agree to abide by any invention or species election made in the prior-filed application.

    4.  The prior-filed application must be under a final Office action or under appeal at the time the continuation application is filed.

    5.  A letter of express abandonment must be filed for the prior-filed application at the time the continuation application is filed.

    In addition, in order for a continuation application to be placed on an examiner’s Regular Amended docket, the continuation application must also be complete under § 1.51(b), or completed under § 1.53(f), and in condition for publication under § 1.211.  Thus, if an applicant delays in submitting the filing fee and oath or declaration (or a copy of the oath or declaration from the prior-filed application), the Patent Office will delay the docketing of a continuation application even if the applicant has requested streamlined docketing.

    In its final rule notice, the Patent Office notes that the new streamlined continuation application procedure only applies to the placement of the continuation application on an examiner’s Regular Amended docket, and that the continuation application will be otherwise treated as a new application.  In particular, the Office notes that for streamlined continuation applications:

    1.  An applicant must pay the basic filing fee ($300), search ($500), and examination ($200) fees, and any required excess claims fees ($200 per independent claim and $50 for dependent claims), rather then the lower RCE ($790) fee.  [Cynical applicants may not be surprised to learn that the Patent Office has managed to turn the "2 + 1" rule – which makes no more sense than a "3 of anything" rule – into a revenue generating proposition.]

    2.  The application will be assigned a new application number.

    3.  The continuation application is subject to the patent term provisions of 35 U.S.C. 154(b) and § 1.702 et seq. as a new continuation application.

    For additional articles in this series, please see:

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

    Changes to Rules 78(d)(1) and 114:

    • Changes to Rule 78(d)(1) can be found here.
    • Changes to Rule 114 can be found here.

  • An Analysis of the New Rules: 37 C.F.R. § 1.117: Refund Due to Cancellation of Claims

        By Christopher P. Singer —

    Uspto_seal_no_background_2
    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. § 1.117:

    In light of the new and harsh rule changes relating to the consequences of a patent application containing more than 5 independent or 25 total claims (see our earlier report), the USPTO has anticipated that applicants may wish to file amendments that cancel pending claims in order to avoid filing the unsavory examination support document (ESD).  Amended rule 37 C.F.R. § 1.117 details the circumstances under which an applicant may request a refund of excess claims fees in an application that has yet to be examined on the merits.

    Federal_register_cover_2
    Applicants can request a refund for any excess claims fees under 37 C.F.R. §§ 1.16(h), (i), or (j) or under §§ 1.492(d), (e), or (f), paid on or after December 8, 2004, in an application that has yet to have an examination on the merits.  Any amendments filed with a certificate of transmission or mailing under 37 C.F.R. § 1.8 will not be considered as filed on the date indicated on the certificate for the purpose of determining whether it was filed before an examination on the merits has been made.  Subsection (b) of this rule states that if the request for a refund is not made within two months (non-extendable) from the filing date of the amendment cancelling the excess claim(s), the Office may keep the excess fees.

    In the section of the Patent Office’s final rule notice entitled "Discussion of Specific Rules," the Office notes that an examination on the merits (35 U.S.C. § 131) for the purposes of this rule has been made once: (a) the Office issues a first Office action on the merits; (b) the Office issues a notice of allowability or allowance; or (c) an action under Ex parte Quayle is shown in the Patent Application Locating and Monitoring (PALM) system as having been counted.  The discussion in the final rule notice also notes that the Office lacks authority to grant a refund for claims withdrawn from consideration that were directed to a non-elected invention or species.

    For additional articles in this series, please see:

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

    Changes to Rule 117:

    (a) If an amendment canceling a claim is filed before an examination on the merits has been made of the application, the applicant may request a refund of any fee under § 1.16(h), (i), or (j) or under § 1.492(d), (e), or (f) paid on or after December 8, 2004, for such claim. If an amendment adding one or more claims is also filed before the application has been taken up for examination on the merits, the Office may apply any refund under § 1.117 to any excess claims fees due as a result of such an amendment. The date indicated on any certificate of mailing or transmission under § 1.8 will not be taken into account in determining whether an amendment canceling a claim was filed before an examination on the merits has been made of the application.
    (b) If a request for refund under this section is not filed within two months from the date on which the claim was canceled, the Office may retain the excess claims fee paid in the application. This two-month period is not extendable. If an amendment canceling a claim is not filed before an examination on the merits has been made of the application, the Office will not refund any part of the excess claims fee paid in the application except as provided in § 1.26.

  • Court Report

        By Sherri Oslick —

    Gavel_16
    About Court Report:  Each week we will report briefly on recently filed biotech and pharma cases, and a few interesting cases will be selected for periodic monitoring.

    Sepracor Inc. et al. v. Sun Pharmaceutical Industries Ltd.
    3:07-cv-04213; filed September 4, 2007 in the District Court of New Jersey

    Infringement of U.S. Patent Nos. 7,211,582 ("Methods for treating urticaria using descarboethoxyloratadine," issued May 1, 2007), 7,214,683 ("Compositions of Descarboethoxyloratadine," issued May 8, 2007) and 7,214,684 ("Methods for the Treatment of Allergic Rhinitis," issued May 8, 2007) following a paragraph IV certification as part of Sun’s filing of an ANDA to manufacture a generic version of Sepracor’s Clarinex® (desloratidine, used to treat allergies).  View the complaint here.

  • Patent “Reform” Bill Passes House of Representatives

        By Kevin E. Noonan —

    Congress
    On Friday, the U.S. House of Representatives passed H.R. 1908, a bill intended to
    "reform" U.S. patent law.  Pushed by special interests (mostly in the
    IT arena) frustrated by the proliferation of patent rights over the
    past twenty-five years, the bill would fundamentally change U.S. patent
    law.  Whether "reform" is needed or not, this bill constitutes more
    overhaul than reform, and is unlikely to better improve U.S. technology
    or inventors; sole inventors and universities are the parties most
    likely to be harmed.

    The scope of the bill is sufficiently all-encompassing that a thorough analysis must wait until Patent Docs
    has had a chance to review it more completely.  However, there are a
    few highlights (or lowlights) that can be immediately gleaned from a
    cursory review.  These include:

    1.  Section 102 has been replaced by a novelty section providing for
    a first-to-file system, where a patent filing can more easily be made
    in the name of the "real party in interest" (i.e., an assignee
    or someone that the inventor owes a duty to disclose).  First-to-file
    does not include acts of derivation, where the first to file derives
    the invention from the true inventor.  The provisions also retain the
    one-year grace period for disclosure, publication, public use, or sale
    by the inventor.  Section 103 is changed to specify the effective
    filing date, rather than the date of invention, for determining
    obviousness.  Section 104, relating to inventions made abroad, is
    repealed in its entirety.  These provisions will not be implemented,
    however, until the President provides an Executive Order finding that
    Europe and Japan have enacted a one-year grace period for disclosure,
    public use, or sale of an invention by the inventor or real party in
    interest.

    2.  Interference proceedings are abolished, replaced by actions to
    show derivation of an invention from the "true" inventor.  A floor
    amendment to the bill by Congressman Conyers of Michigan preserved the
    right to an interference for any patent application filed before the
    effective date of the amendment.

    3.  A post-grant opposition proceeding is created, requiring that a
    petition to cancel claims of a granted patent be filed within one year
    of the patent grant date.  The Director is also given the power to sua sponte
    institute a cancellation proceeding.  As with current re-examination
    practice, the Director’s decision to grant or refuse a cancellation
    proceeding cannot be appealed.  Moreover, a third party who fails to
    invalidate a patent in a civil action cannot provoke a cancellation
    proceeding against that patent, and repetitive petitions by the same
    party against the same patent are also prohibited.  Sanctions are
    available for abuses of these provisions.  A cancellation proceeding
    can be initiated on the basis of art that had been cited or considered
    during prosecution (i.e., eliminating the current reexamination
    standard that a new question of patentability be supported by the
    assertion of new art not considered during prosecution).  A floor
    amendment to the bill by Congressman Conyers of Michigan preserved the
    right of a patentee to pursue infringement actions despite concurrent
    cancellation proceedings, and precludes the use of the existence of a
    cancellation proceeding as evidence of invalidity or unenforceability
    in any civil action or before the ITC.  These provisions take effect
    one year after the bill becomes law.

    4.  Derivation proceedings, appeals, and cancellation proceedings
    are to be held before the Patent Trial and Appeal Board, which replaces
    the Board of Patent Appeals and Interferences.

    5.  Available damages (where actual damages are not established) are
    limited to a reasonable royalty depending on the "economic value
    properly attributable to the patent’s specific contribution over the
    prior art."  Damages are not to be determined from the "entire market
    value" of sales of the infringing article, but a court (or jury) can
    consider the terms of any non-exclusive licensing of the patents.  A
    patentee can provide evidence of additional value for combination
    inventions where the components of the combination are in the prior art.

    6.  Willful infringement can be found only when the infringer was
    put on notice in writing by the patentee.  The notice must raise a
    reasonable apprehension of suit in the accused infringer, and set forth
    with specificity how the allegedly infringing article infringes each
    claim of the patent asserted by the patentee.  Frank copying, or
    persisting in the infringing activity after a court determines
    infringement, are also grounds for finding willful infringement.
    Willful infringement cannot be found where the infringer has "an
    informed good faith belief that the patent was invalid or
    unenforceable, or would not be infringed by the conduct later shown to
    constitute infringement of the patent."  Such a belief can be
    established by an opinion of counsel or behavior directed at avoiding
    infringement.  Willfulness cannot be plead (and presumably, not
    expressed to a jury) until after the court finds infringement.

    7.  The opportunity for third parties to submit art and other information during ex parte examination is expanded.

    8.  The prior inventor defense is expanded to no longer be limited to business method patents.

    9.  Methods for avoiding taxes are expressly excluded from patentable subject matter under Section 101.

    10.  Venue rules are made more limited, requiring venue to be where
    the defendant is incorporated or has its principle place of business,
    or has committed "a substantial portion of the acts of infringement"
    and has "an established physical facility."

    11.  Interlocutory appeals regarding claim construction are created,
    at the discretion of the trial court but not the Federal Circuit.

    12.  The provisions of the bill also authorize the Patent and
    Trademark Office to require information from applicants including
    search reports and other information relating to patentability
    searches.  These requirements do not apply to "microentities," which
    encompass traditional small entities but do not include parties named
    on more than 5 patents or applications, or that have more than 2.5
    times the median household taxable income.

    13.  Inequitable conduct is defined by statute and requires findings
    of materiality and intent, but the provisions of this section do not
    immunize applicants or their attorneys from liability attendant to
    filing search reports or patentability reports.

    14.  The bill also authorizes retroactively the actions recently
    taken by the Patent Office with regard to the continuation rules by
    expanding the Director’s rulemaking authority under Section 2.
    However, a floor amendment by Mr. Issa of California provided for a
    stay of any such regulations for 60 days to permit Congress time to
    disapprove such regulations.

    15.  Violation of the best mode requirement is no longer grounds for invalidating a patent.

    The vote in the House was 220-175, with Democrats voting 160-58 and
    Republicans voting 60-117.  There are significant differences with the
    Senate version of the bill, which may come to a vote in the next few
    weeks.  The Bush administration opposes certain provisions of the House
    version as well, and the political considerations make it unlikely that
    the bill as passed in the House will be the final version of any bill
    signed into law by the President.  Those considerations are but cold
    comfort to those who view many of these provisions with disapproval or
    despair, since they appear to significantly decrease the advantages
    U.S. patent law has provided for over a generation, to solve alleged
    problems many believe exist only for certain special interest groups.

    Patent Docs will provide a more detailed analysis of the rules over the next several days.

  • Conference & CLE Calendar

    Calendar_15
    September 10, 2007 – New USPTO Rule Packages on Claim Examination and Continuation Applications (American Intellectual Property Law Association)

    September 12, 2007 – Biotechnology/Chemical/Pharmaceutical Customer Partnership Meeting (U.S. Patent and Trademark Office)

    September 18, 2007 – Trying a Patent Validity Case in a Post-KSR World (Practising Law Institute)

    September 18-19, 2007 – Pharma/Biotech Patent Boot Camp (American Conference Institute) – San Francisco, IL***

    September 19, 2007 – Final USPTO Rules on Claims and Continuations (Practising Law Institute)

    September 20, 2007 – KSR International Co. v. Teleflex, Inc.: Where Do We Stand Five Months Out? (West LEGALworks)

    September 24-25, 2007 – Biosimilars 2007 (Scherago International, Inc.) – George Washington University, Washington, D.C.

    September 26-27, 2007 – Advanced Forum on Biotech Patents (American Conference Institute) – Boston, MA***

    September 27-28, 2007 – Biotechnology: Business and Legal Developments (Law Seminars International) – Seattle, WA

    October 10-12, 2007 – Stem Cells European Business Summit – Edinburgh, Scotland

    October 12, 2007 – Intellectual Property Law Summit 2007 (West LEGALWorks and Intellectual Property Law Association of Chicago) – Chicago, IL

    October 25-26, 2007 – Biotech and Pharma Public-Private Partnerships Forum (American Conference Institute) – Washington, D.C.***

    October 25-27, 2007 – Biotechnology: Patent Prosecution, Licensing, Litigation & Hatch-Waxman (Patent Resources Group) – Palm Springs, CA

    November 13-15, 2007 – Pharma and Biotech Collaborative Agreements (American Conference Institute) – New York, NY***

    ***Patent Docs is a media sponsor of this conference or CLE.

  • AIPLA CLE on New Continuation and Claims Rules

    AIPLA The American Intellectual Property Law Association (AIPLA) will be offering a live online seminar entitled:  "New USPTO Rule Packages on Claim Examination and Continuation Applications" on September 10, 2007 from 12:30-2:30 PM (EST).  Speakers Charles E. Van Horn of Finnegan, Henderson, Farabow,Garrett & Dunner, LLP and Susan P. Pan of Sughrue Mion PLLC will provide their insights on adapting one's practice in light of the USPTO rule changes.

    The registration fee for the online seminar ranges from $145 to $625 depending on the number of attendees and AIPLA membership status.  Those interested in registering for the online seminar, can do so here.

  • NAPP Opposes New Continuation and Claims Rules

        By Donald Zuhn —

    Homelogo
    On August 21, 2007, the U.S. Patent and Trademark Office published new rules concerning continuation and claims practice that will significantly impact the way patent attorneys and agents prosecute applications before the Patent Office.  While patent practitioners  – especially those prosecuting applications directed to biotech and pharmaceutical inventions – have decried the new rules for the adverse effect they are likely to have on the protection of patentable inventions, industry groups have curiously remained silent.  It now appears, however, that at least one industry group to be affected by the new rules – the National Association of Patent Practitioners (NAPP) – has broken the silence.

    In a statement released to its members on the NAPP Discussion List, the nonprofit trade association for patent attorneys and patent agents recently announced that "upon receipt of a vocal outcry" against the new rules from its membership, the NAPP had begun taking action to oppose the rulemaking.  In addition, the NAPP statement noted that while "[c]ertain recent postings on the NAPP Discussion List have expressed concern that our organization has not taken any action in response to the release of the new rules relating to claims and continuations," the group’s Directors and Officers had met to discuss these concerns, and "unanimously agreed that implementation of the new rules will be detrimental to all of our practices," and therefore, shared its members’ concerns about the "significant adverse impact of these rules."

    In addressing its membership’s concerns, the NAPP also recalled that when the new rules were first proposed by the USPTO in January 2006, the organization "provided a vigorous and forceful response to that proposal" (see "Response to Request for Comments; Proposed PTO Rule on Continuation Practice" and "Response to Request for Comments; Proposed PTO Rules on Claim Limits"), and observed that a number of the organization’s suggestions had been adopted by the Patent Office, thereby "lessening the adverse impact of the final rule package."  The NAPP acknowledged that "despite the overwhelmingly negative comments of NAPP and over 300 other individuals and organizations (many of which are more powerful and have deeper pockets than NAPP), the PTO has nevertheless promulgated [a] restrictive rule package," noting that "[i]n the face of the PTO’s determination to proceed with restrictions on the number of claims and continuing applications, and the legislature’s apparent unwillingness to take any action to restrain the PTO, NAPP’s options, and indeed those of the entire patent bar, are limited."

    With respect to the group’s future plans, the NAPP stated that it could be most effective in continuing to express its opposition to the new rules "by filing or joining an amicus brief, if a case arose which posed the appropriate question(s) in an appropriate forum."

    We thank Patent Docs reader Jerry Miller for directing our attention to the NAPP announcement and for graciously providing us with a copy of the organization’s statement.

  • An Analysis of the New Rules: 37 C.F.R. § 1.142: Suggested Restriction Requirements

        By Donald Zuhn —

    Uspto_seal_no_background
    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. § 1.142:

    In view of the "2 + 1" rule, which allows an applicant to file only two continuation or continuation-in-part applications and only one RCE per application family without any justification (see our earlier reports on 37 C.F.R. §§ 1.78(d)(1) and 1.114), the new continuation and claims rules will almost certainly leave patent practitioners seeking out that which they previously disdained: restriction requirements.  The reason for this change of heart?  Under the new rules, an applicant is allowed to file a divisional application for each restricted invention after receiving a restriction requirement, and each divisional application forms the basis of a new application family entitling an applicant to file an additional two continuations and an RCE (under the new rules, an applicant cannot file a continuation-in-part off of a divisional).

    Federal_register_cover
    Under newly added 37 C.F.R. § 1.142(c), the Patent Office has provided a mechanism by which applicants can now actively seek a restriction requirement: the suggested restriction requirement (SRR).  In particular, this provision of the rules allows an applicant to file a suggested requirement for restriction if two or more independent and distinct inventions are claimed in a single application.  Under Rule 142(c), an SRR must be filed before the earlier of the first Office action on the merits or an Office action that contains a restriction requirement or invitation to comply with the unity of invention requirement.  In addition, the SRR must be accompanied by an election without traverse of an invention to which there are no more than five independent claims and no more than twenty-five total claims (i.e., to comply with the 5/25 rule; see our earlier report on 37 C.F.R. § 1.75(b)), and must identify the claims to the elected invention.

    If the examiner accepts an applicant’s SRR, then the claims to the nonelected invention, if not canceled by the applicant, will be withdrawn from further consideration by the examiner.  If the examiner refuses the applicant’s SRR, the applicant will be notified in an Office action, which may contain a notice requiring the applicant to file an examination support document (ESD) or reduce the number of claims to satisfy the 5/25 rule, as well as the examiner’s own restriction requirement.  If the examiner makes his or her own restriction requirement, the applicant will be notified of the restriction requirement and given a two-month period – that is not extendable under § 1.136(a) – within which to make an election consistent with the examiner’s restriction requirement in order to avoid abandonment of the application.

    Because of changes to Rule 142(a), applicants should not discount the possibility that the Patent Office may find that the examination of multiple inventions in a single application no longer presents the Office with undue hardship (especially when the alternatives for the applicant are filing an ESD or canceling claims).  In particular, Rule 142(a) has been amended to read:

    If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action may require the applicant in the reply to that action to elect an invention to which the claims will be restricted.

    (emphasis added).  The prior version of Rule 142(a) stated that the "examiner in an Office action will require" (emphasis added).  According to the Patent Office, the change to Rule 142(a) finds support in 35 U.S.C. § 121, which "authorizes, but does not compel, the Director to require that an application containing two or more independent and distinct inventions be restricted to one of the inventions," and is "consisten[t] with current Office practice under which a requirement that an application containing claims to two or more independent and distinct inventions be restricted to a single invention is discretionary" (see final rule notice).

    Citing M.P.E.P. § 803, the Patent Office also notes in the final rule notice that "[a]n application containing claims to two or more independent and distinct inventions typically is not restricted to a single invention if the search and examination of all of the claims in the application can be made without serious burden."  Thus, while it may have been difficult to convince the Patent Office to examine two or more inventions in a single application under the old rules, cynical patent practitioners can be forgiven for believing that such a task may have just gotten easier under the new rules.  With respect to appealing an examiner’s decision not to restrict, the final rule notice states that:

    [a] decision not to restrict an application to a single invention is not an action or requirement within the meaning of § 1.181(a).  Thus, any review of an examiner’s requirement for restriction that differs from a suggested restriction requirement will only concern the appropriateness of the examiner’s restriction requirement and will not address the appropriateness of the applicant’s suggested restriction requirement or compare the examiner’s restriction requirement and the suggested restriction requirement.

    The changes to 37 C.F.R. § 1.142(c) are applicable to any nonprovisional application that is filed (or enters national stage) on or after November 1, 2007, and any pending nonprovisional application in which a first Office action on the merits was not mailed before November 1, 2007.  Unfortunately, patent practitioners may have to wait until well into 2008 to see how the Patent Office actually applies the "slight" change to Rule 142(a) and the added provisions of Rule 142(c).

    For additional articles in this series, please see:

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

    Changes to Rule 142:

    (a) If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action may require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action.

    * * *

    (c) If two or more independent and distinct inventions are claimed in a single application, the applicant may file a suggested requirement for restriction under this paragraph. Any suggested requirement for restriction must be filed prior to the earlier of the first Office action on the merits or an Office action that contains 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 in the application. Any suggested requirement for restriction must also be accompanied by an election without traverse of an invention to which there are no more than five independent claims and no more than twenty-five total claims, and must identify the claims to the elected invention. If the suggested requirement for restriction is accepted, the applicant will be notified in an Office action that will contain a requirement for restriction under paragraph (a) of this section. Any claim to the non-elected invention or inventions, if not canceled, is by the election withdrawn from further consideration.