Originally published October 25, 2007
This notice summarizes the United States Patent & Trademark Office (USPTO) rules changes that were published on August 21, 2007 and that will become effective on November 1, 2007. In many instances, aspects of the new rules apply retroactively.
This notice certainly is not exhaustive, but rather aims to provide (I) a high level discussion of three primary changes to the patent rules, (II) note possible courses of action related to the new rules, and (III) discuss possible ramifications to the industry at large.
It should be noted that this notice only provides an introductory overview of a few of the more significant new USPTO patent rules. The rule changes are expansive, rather complex and their application and impact vary significantly under differing circumstances. Please note, due in part to the interplay of the new rules discussed herein, application filing strategies may vary greatly. As these new rules have yet to go in effect or be tested, many uncertainties remain. Although numerous courses of action have been discussed throughout the industry, no clear consensus as to best practices has yet been reached; and in fact professionals disagree as to the application and consequences of the new rules. As a consequence, It is important to contact your intellectual property counsel directly to discuss a prosecution strategy moving forward.
I. Rule Change Summary
The USPTO’s rule changes fundamentally and drastically change the patent application process. Before going into detail on the changes, it may be useful to note the meanings of a few basic patenting concepts.
An "applicant" is someone that files a patent application with the USPTO. The applicant’s filing of a patent application with the USPTO and the process of seeking a patent grant is commonly referred to as "prosecution." In the past, "continuations" and Requests for Continued Examination ("RCEs") were important in advancing the prosecution and granting of patent applications. Often during patent prosecution, the USPTO would issue final rejections of a patent application, and continuations and RCEs offered applicants a way of continuing with the pursuit of a patent grant. In many instances, continuations were pivotal in the procurement of valuable patent rights.
Generally, these new rules will make obtaining a patent grant more difficult because the new rules limit the number of claims applicants may pursue, the number of continuations that applicants may employ, and place additional restrictions on the way in which patent applications may be submitted and pursued. The end result is that these new rules make patent prosecution more complex and costly for applicants and implement arbitrary limits/caps to the types of patents that applicants can obtain.
By way of summary, the USPTO changed the rules in three major areas, including: (A) a "5/25" claim limitation rule; (B) a "2+1" continuation limitation rule; and (C) a multi-application claim recombination ("Lasso") rule.
- The 5/25 Claim Limit Rule
- 2+1 Continuation Rule
- Lasso Rule
With the new rules, the USPTO will seek to reduce the number of so-called patent claims that applicants may submit. The patent claims describe the bounds of an applicant’s intellectual property. In the past, other than the cost of filing additional claims, applicants had less disincentive for submitting greater numbers of claims. By filing more claims, patent applicants were able to more particularly point out and seek to own more inventive aspects of their inventions.
With the new rules, the USPTO is effectively discouraging applicants from filing more than 5 independent claims or more than 25 total claims in a single patent application. For patent applications that have more than 5 independent claims or more than 25 total claims (i.e., the "5/25" claim limit), the USPTO will require that a patent applicant perform duties that, prior to these new rules, were the responsibility of the USPTO.
In particular, when exceeding the 5/25 claim limit, the applicant will be required to perform a "prior art" search. Perhaps more significantly, for applicants that are "large entities" (i.e., those that have more than 500 employees), they may need to report the relevancy of the discovered prior art to their patent claims. The USPTO refers to this search and report as an Examination Support Document (ESD). Although the sufficiency standards for such reporting is not well established as of yet, some consider such reports to be effectively undesirable admissions against self interest.
For patent applications that are limited to 5 independent claims and a total of 25 claims (or less), the USPTO will not require an ESD and instead will rely on its own search and analysis as it has in the past. Such patent applicants will continue to have an obligation to disclose the existence of so-called "prior art" to the Patent Office .
The 2+1 rule is a limitation on the number of so-called "continuations" an applicant may pursue. Prior to this rule, applicants essentially enjoyed unlimited continuations and/or Requests for Continued Examination, which provided greater opportunities to pursue added patent protection. After November 1, 2007, patent application filings will be limited to two (2) continuation applications and one (1) RCE per patentably distinct invention (the original application and the two allowed continuations are considered "continuation family"). Another aspect of the new rules allows only one Request for Continued Examination (RCE) for the continuation family. This gives rise to a "2+1" rule for the limited number of continuations/RCEs per continuation family that are now allowed, i.e., 2 continuations and 1 RCE by right.
A continuation application and/or an RCE are valuable because they allow an applicant to continue pursuing a patent application even after a final rejection by the USPTO. In the past, it was common to use both continuations and RCEs to ultimately obtain a grant of a patent.
Applications filed before November 1, 2007 are also retroactively constrained by the 2 +1 rule. Importantly, if an applicant has already pursued continuations for an existing application, the patent office will provide only "one more" continuation by right.
Applicants may obtain additional Continuations/RCEs by filing a Petition with the Patent Office and providing a reason why the additional continuation/RCE is necessary. However, the USPTO has not specified what would constitute a sufficient showing to obtain a grant of a Petition.
With the new "Lasso" rule, the USPTO will determine whether certain applications are related and potentially recombine 'patentably indistinct' claims from multiple patent applications into a single application. The USPTO may rope together claims from separately filed patent applications when there is common subject matter. Applications that have a common inventor, filing date, priority claim, and have overlapping subject matter are presumptively considered to have common subject matter.
A rebuttable presumption arises when the applications have common subject matter and contain 'patentably indistinct' claims. More specifically, if a claim in one patent application is supported by the disclosure/specification of another patent application, the claims as between the two patent applications are subject to USPTO scrutiny for potentially being lassoed together.
As such, the USPTO may require applicants to recombine all patentably indistinct claims into a single application. One problem with this "lassoing" together of claims is that the recombined application will likely exceed the new 5/25 claim limitation rule, thereby bringing those claim limitations and complications further into play.
II. Possible Courses of Action
As discussed above, there is significant interplay as between the new rules. Accordingly, there are many possible courses of action that vary significantly based on a client's current patent application portfolio. What follows is not advice, but rather a summary of some courses of action provided by in the new rules. You may wish to seek guidance by contacting counsel for advice specific to your circumstances.
For the purposes of this discussion, there are two types of pending applications: (A) those that have received an office action prior to November 1, 2007, and (B) those that have not.
- Pending applications that have received an Office Action
- Pending applications that have not received an Office Action
- ESD - Self-search
- SRR - Self-restriction
- Claim reduction
Applications in which the USPTO has already issued a substantive Office Action are not affected by the 5/25 claim limitations. As such, there is a great advantage afforded the applicant in moving forward with more claims than allowed by the new 5/25 claim limit.
However, even when an applicant has received an office action prior to November 1, 2007, such applications are still affected by the 2+1 rule for continuation limitations and may be affected by the Lasso rule as well.
As discussed above, if the application already has two continuations, the USPTO will give 'one more' continuation as a matter of right for the application that may be filed after November 1, 2007. Continuations beyond the 'one more' provided by right are granted only after a successful Petition. It is important to note that at this time it is unclear to what evidence the USPTO will require to consider additional continuations 'necessary' and persuade the office to grant a petition. Further, at this time it is unclear what effect the Lassoing of applications related to one with a substantive office action will have.
Pending patent applications that have not received an Office Action are affected by the 5/25 claim limitation as well as the 2+1 continuation limitation rule and Lasso rule.
There are at least three things that an applicant can do if they have an application with more than 5/25 claims: (i) perform a search, (ii) suggest a restriction, or (iii) reduce the number of claims for the patent application:
The USPTO will allow more than 5/25 claims if the patent applicant performs a search for prior art. Significantly, if the applicant is a large entity (e.g., if the applicant employs 500 or more employees), then the applicant must explain and map the relevancy of each relevant portion of each reference from the search to each patent claim element. Importantly, however, certain small entities are exempted from the requirement to identify all the limitations of claims found in prior art references. The applicant must then provide comments discussing how the patent application claims are believed to be distinguished over the prior art references. The USPTO calls this applicant search and support document an Examination Support Document (ESD).
The USPTO might allow the applicant to purse more than 5/25 claims in a patent application with a Suggested Restriction Requirement (SRR). An applicant may use a suggested restriction requirement to break a patent application into pieces such that each piece has no more than 5/25 claims. If the USPTO believes there are several patentably distinct applications, it might grant such a break-out restriction. In such a case, the applicant can pursue each break-out as separate "divisional" applications. Significantly, each divisional case would not count against the 2+1 continuation limitation rule. In fact, each divisional application would be entitled to an additional 2+1 continuations.
Alternatively, an applicant may amend the pending claims to cancel all claims that exceed the 5/25 claim limitation.
III. Possible Ramifications of Rule Changes
These fundamental patent procurement rule changes will likely:
- change patent filing and procurement strategies.
- cause some to consider preemptive continuation strategies.
- greatly increase the complexity of procuring a patent.
- require greater numbers of appeals to obtain patent grants.
- spur many to conduct Intellectual Property (IP) portfolio audits in the near term.
- cause many to alter budgets for future patent procurement.
The above is a non-exhaustive list of rule changes. These rule changes affect applicants differently based on their individual circumstances. The industry has debated the implications and even the likelihood of these changes taking place (as several entities have filed suit against the USPTO to prevent the new rules from going into effect). Unfortunately, to date, no clear consensus has been reached and professionals continue to disagree as to the proper application and/or consequences of the new rules. Therefore, it is likely prudent to assume the rule changes will be implemented.
As such, patent applicants may wish to consult counsel for further direction regarding their particular circumstances and patent portfolio.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
