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(a) Two Big Changes Coming:
The US Patent Office is playing "get tough" with its newly published rules on patent claims and patent continuation applications. These new rules will be effective November 1, 2007, and will apply not only to newly filed patent applications, but also to those that are currently pending.
These new tough rules will affect your pending patent applications in two important ways.
First - Patent applications can no longer have more than 5 independent claims or more than 25 total claims "as of right".
Second - Patent applications can have no more than 2 Continuations and 1 Request for Continuing Examination (RCE) "as of right".
The above term, "as of right" either means "without having a damn good explanation" or "without doing a whole lot of extra work", as I will explain below.
(b) The "5/25" Claim Rule
As stated above, patent applications can no longer have more than 5 independent claims or more than 25 total claims as of right.
This new rule is to be retroactive and applies to any pending application1 that has not had a First Office Action on its merits by November 1, 2007. The new rule applies regardless of when the application was actually filed, and regardless of the date of priority that the application claims. What this means to you is that you may have pending patent applications with claim sets that will soon need to be "cleaned up" and shortened.
Exactly how the Patent Office will quickly review all of the currently pending patent applications and quickly hunt down those with excessive claims should prove to be interesting. Here is what the Patent Office is planning to do:
Notices will be mailed out from the Patent Office for those patent applications having more than 5/25 claims. In the case of currently pending applications, a 2 month time period to respond will be given. During this time period, you have to decide which claims to cancel (or combine) to shorten your claim set2. Fortunately you can get refunds for your cancelled excess claims, but such refunds will be given only for claims that were cancelled prior to the First Office Action "on the merits". Also, the request for refund of the cancelled claim fees must be made within 2 months of their cancellation.
As stated above, this new 5/25 rule applies to all patent applications that have not yet been examined "on the merits". The Patent Office has stated that a "Restriction Requirement"3 is not a First Office Action "on the merits". So, just because you've had a Restriction Requirement in the case doesn't mean you're safe from application of the new rules.
You can't use multiple dependent claims to sneak around the new rules either. A multiple dependent claim will be: "considered to be that number of claims to which direct reference is made therein". What this means is that the claim: "The system of claim 3 or 4, wherein ….." will be considered to be 2 claims for the purposes of the 5/25 rule.
Lastly, you can't use a "Species Election"4 to avoid the new 5/25 rule. Instead, you have to conclude prosecution with respect to the generic claim in the application prior to filing divisional applications. Moreover, any "rejoined claims"5 will be counted toward the 5/25 claim limit.
Fortunately, a proper Markush claim will still be considered to be one single claim for purposes of the 5/25 rule.
(c) But What If I Still Want More Than 5/25 Claims?
If you're still fixated on pursuing more than the maximum 5/25 claims, you still can, but the Patent Office will make life rough for you. They will do this by asking you to file something called an "Examination Support Document" (ESD).
What is an ESD? Basically, preparing and filing an ESD is your chance to play examiner on your own case. You are required to search the art, present what you've found to the Patent Office and also argue/show why your claims are patentable. Although this may sound great, it can be a dangerous proposition with some real risks. Remember, with patent prosecution, what you say will be held against you. Therefore, all of your comments and your analysis become part of the official file history record and can be used by others in launching future attacks on the validity of your patent.
In addition to being risky, preparing an ESD is a lot of work! An ESD is a comprehensive report which must contain: (1) a statement that a pre-examination search has been made, (2) a listing of references deemed most closely related to the subject matter of each claim, (3) an identification of claim limitations disclosed by each reference, (4) a detailed explanation of patentabilty for each independent claim, and (5) a showing of where each limitation of each of the claims finds support in the written description of the specification.
In addition, you must state the field of search by US Patent Office class and subclass, and for database searches, the search logic, chemical structure or sequence used as the query must be stated. Your search should involve US and foreign patent documents, and non-patent literature as well.
All that's a lot of work! However, if you qualify as being a "small entity" (typically having less than 500 employees), you do not have to perform above requirement (3) (i.e.: identifying the claim limitations disclosed by each reference). This is a small comfort since, in essence, most of the real work (and danger) in filing an EDS is in step (5) (i.e.: preparing a detailed explanation and analysis showing how each of your independent claims are patentable over the references you've cited).
Lastly, if the Patent Office does not like your EDS, you will be given 2 months (non-extendable) to re-submit it. However, this 2 month period is extendable to 6 months in which to file an ESD if your application was on file before November 21, 2007.
(d) The "Only 2 Continuations and 1 RCE" Rule
As stated above, patent applications can no longer have more than 2 Continuations and 1 Request for Continuing Examination (RCE) "as of right". Fortunately, these 2 Continuations and 1 RCE can be filed in any order, or even filed together.
However, this new rule is were the Patent Office is playing really tough. They're making it a lot harder to get around this new rule. Basically, if you want more than 2 continuations or 1 RCE, you have to file a Petition, and show why the extra filing is necessary. That may prove to be very hard to do under the new rules since you must convince the Patent Office that your new filing (and any amendment, argument or evidence filed therewith) could not have been previously submitted.
How can you ever convince the Patent Office that you could not have filed your case previously? When would such a Petition for an extra filing be granted? When would such a Petition be dismissed?
The Patent Office has given us a few clues as to when a Petition will be granted or dismissed by giving us a few examples, as follows.
Several examples of when a Petition to permit the filing of an extra continuation application may be permitted are: (1) data needed to support a showing of unexpected results has just become available to overcome an obviousness rejection; (2) the Final Office Action rejection contains a new ground of rejection that couldn't have been anticipated by you and you seek to submit new evidence that you couldn't have submitted earlier; and (3) an interference is declared in an application containing claims corresponding to the count and claims not corresponding to the count. As can be seen from this list, examples of when an extra filing may be permitted are quite limited!
The Patent Office has also given several examples of when a Petition to permit the filing of an extra continuation application would not permitted. They are: (1) an argument that a Final Office Action rejection in a prior case was premature; (2) an argument that an Amendment After Final rejection should have been entered in the prior application. But it gets worse, as follows.
The Patent Office has also stated that you can not file a 2nd RCE even if you're only filing it to submit an Information Disclosure Statement (IDS)! This is really playing tough as this rule would prevent you from presenting newly discovered prior art references after your application has been allowed.
The Patent Office has also stated that it is "not likely" to permit an extra RCE for the purposes of correcting inventorship, or for provoking an interference. This is also playing tough.
In addition, if new subject matter is being added in a Continuation-In-Part (CIP)6 application (and not being claimed) to support a Petition arguing that the new matter could not have been presented earlier, and thus that the CIP filing is required, the Patent Office has also stated that it will not grant the Petition.
In reaching their decisions as to whether to grant these Petitions, the Patent Office says it will consider: (1) whether applicant should appeal or Petition; (2) the number of applications filed with substantially identical disclosures; and (3) whether the evidence, arguments or amendments are being submitted with reasonable diligence.
This all adds up to show that it will be tough indeed to file more than the maximum 2 continuations and 1 RCE in the vast majority of your cases.
But can I get around these new rules by filing divisionals or CIPs or just filing lots of different applications (that don't claim priority to a common application)? Will that work to get around these limitations both on maximum numbers of filings and maximum numbers of claims? Don't get too excited. See below.
(e) What About Divisional Applications?
There is some good news here. You may always file a divisional application in response to a "Restriction Requirement". As such, there is no limitation on the number of divisional filings per se. Also, the divisional need not be filed during the pendency of the original application, as long as the copendency requirement is met.
Filing unlimited additional divisionals sound like a great idea! Can you make your own divisionals? In part, yes.
You can file your own "Suggested Restriction Requirement" (SRR) before receiving your the First Office Action on the merits. In your SSR, you must state that there are two or more independent and distinct inventions in your application, and you must pick which invention (and associated claims) you want to have examined first.
Unfortunately, the examiner is not bound to accept your proposed SRR. The examiner may accept your proposed SSR, reject your proposed SSR, or make an entirely different Restriction Requirement. Therefore, the value of proposing your own Restriction Requirement may be quite limited. In many cases it may make sense not to file an SSR. (This is especially true if the examiner would rather have just went ahead and examined more claims than you would have asked for). Filing a SSR may make sense only in a limited number of cases when the distinction between the different inventions is very clear.
Should you decide to file an SRR, it must be filed before the examiner's own Restriction Requirement. If your SSR is accepted, the Examiner will simply treat the non-elected claims as withdrawn in the next Office Action. Under the new rules, you are only given 2 months (non extendable) to reply to the Restriction Requirement. (Under the old rules, you would have had a full 6 months to reply).
On the positive side, you can still file 2 continuations of your divisional application, as of right.
On the negative side, however, you can (only) 1 RCE in a whole divisional application family7, as of right. In other words, you can't file one RCE for each one of your divisional applications.
On the very negative side, you cannot file a CIP of a divisional application at all under the new rules.
On the very, very negative side, all divisionals must be filed by November 1, 2007 for any application of your that received a US Restriction Requirement if the case was previously examined as in international application under Chapter II of the Patent Cooperation Treaty.8
Lastly, remember that divisional applications can only be filed to previously non-elected inventions that were not previously examined.
(f) What About Filing Continuations-In-Part (CIPs) On Your New Ideas?
There is bad news here too! Filing unlimited CIP applications is also prevented under the new rules. In other words, the new "only 2 continuations" rule applies to CIPs as well.
But wait a minute. CIP applications are filed as you come up with new inventions that are related to your earlier applications. As such, CIPs disclose new modifications or improvements to your previously filed patent applications. Is the Patent Office trying to stop you from filing patent applications on your new inventions too, or what?
Not exactly. What the Patent Office is trying to do is to stop you from alleging that you are filing applications on your new inventions, while you are really just trying to file more claims on your old inventions. The Patent Office is also trying to ensure that you do not get around the 5/25 maximum claims rule by filing CIP applications.
In addition, the Patent Office has also stated that any claim in a CIP that is not identified as having an earlier priority date will be treated as only having the actual filing date of the CIP for prior art purposes. As such, if the prior-filed application has been published for 1 year, it may be used as prior art against it.
Although the Patent Office may be attempting to prevent applicants from getting around the 5/25 maximum claim rule, and from extending claim coverage to an old idea through new CIP filings, the effect of the new rules will be much bigger. Specifically, you will now be limited to filing at most 2 CIP applications. The days of filing an unlimited number of related CIP applications to your new ideas as you develop them is over.
What this means for you is that you will be filing more and more new patent applications (i.e.: applications that are not related to your earlier patent applications) rather than filing CIPs.
This will force you to file patent applications that stand on their own, and are patentable over your earlier filings (since your earlier filed applications may be prior art against your newest applications). Previously, many CIPs were only directed to minor modifications or additions to previously filed inventions. By claiming priority to these earlier cases, CIPs prevented the earlier filings from being prior art. Those days may be over.
In the future, your new patent applications should be directed to inventions which are patentable on their own, rather than patent applications directed to small improvements to your existing patent filings.
The one positive upside to all this is that by filing new applications (as opposed to CIPs), your patent term will not be limited to that of the prior filed application.9
(g) What About Filing Several Different Applications That Aren't Related to One Another To Get Around The New Rules?
Can you get around the new rules (re: maximum number of continuations or claims) by filing several different applications that aren't related to one another, rather than filing continuations? What about filing several applications on the same day, or close to one another?
If you think you can outsmart the Patent Office by filing a number of different patent applications to get around either the 5/25 or the limits on numbers of continuations rules - think again. The Patent Office has tried to outsmart you on this strategy as well. Here's how.
The Patent Office will now be on the lookout for applications10 that have something called: "substantial overlapping disclosures" - and you will have to help them!
Under the new rules, you must identify your pending applications or patents that are commonly owned, have a common inventor, and have an actual filing date, or a claimed filing or priority date within 2 months of that of the application you're filing.
In addition, you must identify these commonly owned patent applications within 4 months of their filing date or national stage date or within 2 months from the mailing date of the Filing Receipt of the patent application to be identified.
The reason that you have to identify these patent applications is so that the Patent Office can determine whether these different patent applications have "patentably indistinct" claims. If they do, watch out since the Patent Office will now count all these applications together in determining compliance with the 5/25 maximum claims rule11. (In other words, the Patent Office will treat multiple patent applications as a single application for the purposes of the 5/25 rule.) Moreover, the Patent Office may even require you to place all your patentably indistinct claims in 1 application.
Under the new rules, if pending applications are commonly owned, have a common inventor, the same filing or priority date, and have "substantial overlapping disclosure", the Patent Office will presume that they contain "patentably indistinct" claims. You can rebut this presumption by explaining why your applications are patentably distinct (or possibly explain why 2 patentably indistinct applications should be maintained).
If the application is a CIP, you must identify the claims that are directed to the new subject matter. Any claims that are not identified as being directed to the new subject matter are then subjected to the 5/25 rule.
It is important to remember that the compliance burden is on you not the Patent Office with regard to identifying your related patent applications. Specifically, for each pending application filed prior to November 1, 2007 that has not been allowed, a paper identifying the commonly-owned applications and patents meeting the above criteria needs to be filed with the Patent Office. Generally, this must be done by February 1, 2008 in order to avoid abandonment of your application.
You have to be careful here. This is especially true if you have different law firms prosecuting different patent applications for you. The only way for your patent attorneys to identify your various cases may be if you tell them about their existence. You will need to develop a strategy to identify your applications and patents regardless of the law firm that prosecuted them.
Lastly, the Patent Office has even stated that: "Applicants are also cautioned against trying to file applications outside of this 2 month window." However, exactly how the Patent Office will deal with this situation remains to be seen.
(h) Can't I Just Have One More Continuation - Please??
The Patent Office is giving a break to those who already have their patent applications on file prior to the new rules coming into force, as follows:
You can file "one more" continuation or CIP on or after Nov 1, 2007 for applications filed before Aug 21, 2007. This is true even if you had filed 2 continuations or CIPs previously. However, you do not have the right to file "one more" continuation or CIP on or after Nov 1, 2007 if you have filed one or more continuation or CIP applications between Aug 21, 2007 and Oct 31, 2007.
As such, the "one more" filing provision ensures that you may file one more continuation or CIP application of an application that was filed before August 21, 2007. However, it does not to provide you an automatic right to file an "extra" continuation or CIP for applications filed before August 21, 2007.
Therefore, in a patent family already having two continuation applications, you get "one more" continuation after October 31, 2007 under the new rules, without the need for a petition, but only if priority is only claimed to non-provisional applications filed before August 21, 2007, and no other continuation application filed on or after August 21 also claims priority to the prior applications.
One final quirk in the new rules relates to filing a foreign originating patent application in the US. Specifically, you may file a 3rd continuation or CIP without a Petition if: (1) the prior application is an international application designating the US; (2) no "Demand" has been filed; and (3) the prior filed application does not claim the benefit of any other non-provisional or international application designating the US.
Just because you may get to file an "extra" continuation or CIP application, remember that you are not entitled to an extra RCE! Specifically, you can not file a 2nd RCE after November 1, 2007 just because another RCE was filed (anywhere in the application family) before Nov. 1, 2007. So what does this mean?
If you've got an RCE to file - get it on file it before November 1, 2007!
(i) "Streamlined Examiner Docketing":
The Patent Office is talking about developing something called: "streamlined continuation application docketing" procedure. Details are still sketchy, but this proposed system would permit you to request that your continuation12 application examined quicker, as follows.
Under this proposed system, you could request to have your continuation application placed on a faster docket if: (1) the application is complete13; (2) the application discloses and claims an invention that was disclosed and claimed in a prior-filed application; (3) you agree that any election in response to a Restriction Requirement carries over to the continuation application; (4) the prior filed application is final or appealed, and (5) the prior filed application is expressly abandoned upon the filing of the continuation.
That's right, you may get faster examination of your continuation application, but only after you have abandoned the priority application!
(j) SO WHAT DO I DO NOW ??
Ok, now you're familiar with the new rules. So what do you do now?!
For starters, the most important thing to do is to ask yourself today is: "Do I need or want to file any continuation, CIP or RCE's?" If you do, you should get these new cases on file before November 1, 2007 before the new rules take effect.
To answer this question, you should consider the following scenarios: (a) Do I have any cases that currently have Final Office Action rejections? If so, it may make sense to file an RCE to continue prosecution; (b) Are there any recently discovered references I need to the examiner to consider, and should I submit them with an RCE to get them considered?;(c) Are there any applications of mine for which I've already filed 2 or more continuations? If so, do I need to file another continuation? If so, now is the time to do it! and (d) Have I filed any PCT Chapter II Demands on my cases before filing them in the US? If so, did I get a Restriction Requirement in the US? If so, now is the time to file those divisionals!
1(including US national phase applications, and reissues, but not reexaminations).
2(As will be explained below, other options are available should you still wish to pursue more than the 5/25 claims, but they can be messy and risky).
3A Restriction Requirement is a statement from the patent examiner that you have more than one invention in your patent application, and a request for you to select one invention to be examined first (and the claims corresponding to that invention.
4A "species election" is a situation where the Examiner asks the applicant to select one of several embodiments of the invention to be examined first.
5(claims examined after the species election).
6A CIP is a patent application that includes your latest new patentable idea, but claims priority to one of your existing patent applications.
7Note: An application "family" includes the application and all its continuation or continuation-in-part applications.
8Note: this scenario will not happen in the vast majority of US patent applications, but when it does happen, it would prevent you from patenting one or more of your inventions!
9CIP applications have the same expiry dates as those of the prior filed patent application. As such, CIPs always have shorter terms than those of the application to which it claims priority.
10Note: does not include provisional patent applications.
11NOTE: the Patent Office will not include claims in your issued patents, allowed applications and appealed applications when computing the 5/25 maximum number of claims.
12(not RCE).
13It's fee is paid and a signed Oath has been filed.
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