On August 21, 2007, the United States Patent and Trademark Office (USPTO) published new rules governing the prosecution of patent applications in an attempt to improve the efficiency and effectiveness of patent examination. These rules, which are effective as of November 1, 2007, will (1) limit the number of continuing applications and requests for continued examination permitted by right during prosecution, (2) limit the number of claims allowed in a patent application, and (3) add new reporting requirements for applicants with multiple commonly owned pending applications or patents.
1. The Two Plus One Rule: New Limits to the Number of Continuation Applications and Requests for Continued Examination in an Application Family
The new rules limit the number of continuing applications and requests for continued examination (RCEs) that an applicant can file. If you routinely use continuations and RCEs to extend prosecution, you may have to adjust your prosecution strategy.
Under the new rules, a patent application or chain of applications is allowed by right a total of two continuation and/or continuation-in-part (CIP) applications and one RCE. For CIP applications, the rules require the applicant to identify the claims in the CIP that are entitled to the parent application's filing date (those claims that would be supported by the specification of the original application). However, a divisional application (an application for a patently distinct invention filed in response to a restriction requirement) starts its own chain, and is also allowed two continuation applications and an RCE. CIPs of divisional applications are not allowed.
For clients who have a currently pending chain of applications that already exceeds the "two plus one" rule, the USPTO has promulgated a "one more kick at the can" rule. If the number of pre-August 21 continuation or CIP applications already equals or exceeds two, a chain is allowed one additional continuation or CIP filing after August 21. However, if the pending chain already contains an RCE, then no more RCEs will be allowed by right.
Although further prosecution is no longer a matter of right, an applicant may petition for additional continuations, CIPs, and RCEs beyond the "two plus one" rule. For additional RCEs and continuation applications, applicants must submit (1) a fee and a petition, (2) an amendment, argument, or evidence in support of the additional application (an IDS alone cannot support an additional application), and (3) a showing that the amendment, argument, or evidence sought to be entered could not have been submitted prior to the close of prosecution in the application. Although such petitions will be considered, the USPTO warns that after the rules change, applicants "should not rely on the availability of additional continuing applications or RCEs" in prosecuting applications.
2. The 5/25 Claim Rule: New Limits to the Number of Claims Examined
Under the new rules, the USPTO has limited the number of claims that an applicant may present in a patent application without providing supporting documents to the examiner. This new rule will be of most interest to our biotechnology clients and others who typically file patent applications having a large number of claims.
Without supporting documents, an applicant may not present more than five independent claims and 25 total claims for a single invention. The claim count will not include withdrawn, non-elected, and cancelled claims. However, the claim count will include all claims from co-owned applications claiming the same invention. Thus, it will not be possible to circumvent this rule by preparing multiple applications for a single invention that have more than the permitted number of claims when combined.
However, an applicant may present more than five independent claims and 25 total claims if an examination support document (ESD) is prepared. An ESD requires the applicant to perform a global patent and prior art literature search, and to submit detailed information about the closest prior art to the invention, along with an analysis as to why the claims are patentable over the cited references. Because we anticipate that the preparation of an acceptable ESD will be extremely difficult and expensive, our attorneys will help you to decide which prosecution strategy will best suit your needs.
3. New Reporting Requirement for Owners of Multiple Patent Applications
If you recently applied for two or more patents (e.g., non-provisional Patent Applications "A" and "B"), you may be subject to a new reporting requirement by the USPTO. This reporting requirement will apply to your Patent Application "A" if the following five (5) things are true:
1. Patent Application "A" hasn't received an Office action from the assigned US Patent Examiner;
2. Patent Application "A" names one inventor also named in Patent Application "B";
3. Patent Application "B" is either still pending or already issued as a US Patent;
4. Patent Applications "A" and "B" are owned by the same person/company or are subject to an obligation of assignment to the same person/company; and
5. Patent Applications "A" and "B" were either filed on the same date prior to November 1, 2007, or were filed on or after November 1, 2007, and can both claim priority to calendar dates that are within two months of each other.
Thus, for each Patent Application "A" which has not been examined, you must report each non-provisional Patent Application "B" that has (i) a common inventor, (ii) a common owner, and (iii) a filing or priority date within two months of a filing or priority date of Patent Application "A".
Your report for each Patent Application "A" must be filed in the USPTO before February 1, 2008.
To prevent evasion of the "Two Plus One" and "5/25 Claim" Rules, discussed above, the USPTO has added an additional requirement. If Patent Applications "A" and "B" have the same filing or priority date and disclose substantially overlapping subject matter, then you will be required to explain how the claims in Patent Applications "A" and "B" are patently distinct. If the claims are not patentably distinct, then you must submit a terminal disclaimer with reasons why the claims are not in the same application. If your explanation is not accepted, the USPTO may require you to eliminate patentably indistinct claims from all but one of these applications. This elimination will, in effect, limit your total claims to 25 and your continuation applications to the two plus one rule, as discussed above.
Omega 5 oil companies such as POMEGA LLC might be affected.
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