USPTO publishes significant changes to rules governing patent prosecution |
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Note in December 2007: In the matter of Tafas v. Dudas, 2007 U.S. Dist. LEXIS 80474 (E.D. Va. Oct. 31, 2007), the Virginia based Federal Court granted a temporary injunction preventing the new rules from coming into force. The court is set to hear further arguments in the matter in January 2008 and until such time as the court rules otherwise, the new rules discussed here will not be in effect. The date of 1 November 2007 (marked ‘*’) mentioned below is therefore not the date at which the new rules will come into effect. Furthermore, certain provisions of the new rules will have to be revised in light of the delay such as the transitional provisions. On 21 August 2007 the United States Patent and Trademark Office (USPTO) published a set of rule amendments. The amendments are intended to streamline the prosecution process for patent applications and come into force on 1 November 2007*. The amendments mark a significant change in the manner in which the USPTO will prosecute applications and will have far-reaching effects for applications pending on 1 November 2007* and those filed thereafter. The changes to the law generally affect the way in which a US application can be extended and specifically affect the rules relating to requests for continued examination, Continuation applications, the number of claims an application may contain and the allowability of “similar” applications belonging to the same applicant. The first major change to the rules provides that an applicant is now limited to two continuing applications per application. Continuing applications include continuation applications and continuation in part applications (CIPs). These are used when, for example, one set of claims has been allowed by the examiner, but another set rejected. The rejected claims may then be prosecuted in a continuing application. A CIP is used to add improvements to the subject-matter of an extant application. This provision will apply to all applications pending on 1 November 2007*. Between 21 August and 1 November 2007* applications in respect of which more than two continuing applications have been filed in the past may form the basis for one additional continuing application. By limiting the number of continuation applications, it is intended to shorten the time that the subject-matter of an application will continue to be prosecuted in related applications. These related applications are referred to as a “family”. A request for continued examiner (RCE) is filed when an application has been rejected. This Request is accompanied by claim amendments, and a fee, and re-starts the examination process as if the now-amended claims are being presented for the first time. In a further major change to the rules, an applicant who wishes to file more than one RCE per patent application family (i.e. the original application and any continuation applications) will have to show that the additional RCEs are justified. This is intended to significantly shorten the maximum time period an application can spend undergoing prosecution. To prevent circumvention of the new limit to continuing applications by filing separate but similar applications, the USPTO may enforce an effective amalgamation of “similar” applications (i.e. applications having similar filing or priority dates, owned by the same applicant, having at least one inventor in common and having similar claims). Furthermore, there is now an obligation on the part of the applicant to inform the USPTO of all their US applications filed within two months of one another having at least one inventor in common. An examiner will then decide whether these qualify as similar applications and, if so, will require that the number of claims be reduced. The other major change relates to the number of claims which an application may contain. Under the new rules, an application may only contain 25 claims of which five may be independent claims. Importantly, this rule is applied to all new applications filed after 1 November 2007* as well as to all pending applications in which the first Office Action has not yet been mailed by this date. This will therefore have a significant effect on many pending applications were the applicant will have to choose which claims to present for prosecution. Additional RCEs, continuation applications or claims may however be filed if they can be justified. An applicant will have to make representations to the USPTO explaining why additional claims, continuation applications or RCEs should be allowed. In many cases this will however involve representations regarding the scope of the claims which may have future legal consequences. Therefore such representations should be carefully considered before being used. There can be little doubt that these rule amendments herald a major change to how US patent applications will be prosecuted. More importantly, there is a window of opportunity before 1 November 2007 to review pending applications and decide if action is justified now in light of the changes. One area where action before 1 November 2007 is certainly justified is to review those pending applications where more than two continuing applications have already been filed and decide whether a further continuing application is justified before the new rules come into force. Peer Watterson Right click here to download printer frieldly version: A detailed presentation regarding the changes is available at:
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