Article by Jim Brogan, Bill Galliani, Christopher Hutter, Michael Tuscan & Kevin Zimmer

On January 3, 2006, the United States Patent and Trademark Office ("the PTO") proposed new rules aimed at limiting continued examination filings (71 Fed. Reg. 48) and limiting the number of claims that will receive an initial examination for patentability (71 Fed. Reg. 61). Although no official target date for implementing the new rules has been established, the PTO recently stated that at least 30 days of notice will be given before the new rules are effective and that no changes will be effective before October 1, 2006. It is widely expected that some form of the proposed rules will be published before the end of the year for enactment in January 2007. Because of the retroactive nature of the proposed rules, applicants should consider how these rules might affect their current patent prosecution strategies.

A summary of the proposed rules for limiting continued examination filings

The stated purpose of the proposed rules is to reduce the number of continued examination filings, which include continuation applications, continuation-in-part ("CIP") applications, requests for continued examination ("RCE") and voluntary divisional applications. Under the proposed rules, an applicant is limited to one such continued examination filing per parent application as a matter of right. The major points of the proposed rules are as follows:

  • A continuation or CIP can claim benefit of only a single prior-filed application ("parent application") as a matter of right. Moreover, benefit of the parent application cannot be claimed as a matter of right if either (A) another non-provisional application claims benefit of the parent application, or (B) if an RCE has been filed in the parent application. Put another way, under this provision, continuation and CIP applications are alternatives to filing an RCE. Moreover, this provision effectively requires a one-to-one relationship between continuing applications and parent applications, thereby preventing most serial priority chains or hub-and-spoke priority chains.
  • Similarly, only a single RCE in an application is allowed as a matter of right. Moreover, RCEs are not permitted as a matter of right in a continuation or CIP application.
  • The proposed rules define divisional applications to include only those applications claiming an invention that was subject to a restriction requirement and not elected for examination in the parent application. Voluntary divisional applications are treated as continuations, and are therefore be subject to the above limitations.
  • Divisional applications can claim the benefit of only one parent application as a matter of right. This provision effectively prohibits the serial filing of divisional applications, in which later-filed divisional applications claim the benefit of prior-filed divisional applications to create a chain of priority back to the parent application. Instead, this provision requires that divisional applications be filed in parallel before the parent application issues.
  • If a CIP is filed, the applicant is required to identify those claims that are supported by the disclosure of the parent application.
  • Any continuation, CIP or RCE not permitted as a matter of right must be accompanied by a petition showing why the amendment, argument or evidence presented in the new application could not have been previously submitted.
  • In such instances when a continued examination filing is not permitted, the PTO can refuse to include any reference to the prior-filed application, thereby possibly rendering the application invalid.
  • The proposed rules are applicable to any application filed on or after the effective date of the final rules. Thus, after the new rules are implemented, an applicant only gets one (not "one more") continued examination filing for all pending applications. Put another way, under the proposed rules, pending applications having a prior continued examination are not eligible for a future continued examination filing after the rules are implemented.

A summary of the proposed rules for limiting the number of claims that will receive an initial examination

The PTO also proposed rules to restrict the initial examination of an application to a limited number of representative claims. Under the proposed rules, those claims not considered as representative claims will be held in abeyance until the application is otherwise in condition for allowance. Although many commentators have stated that the proposed rules will result in claims being allowed without examination, the proposed rules state that all claims will be examined. The major points of the proposed rules are as follows:

  • By default, the PTO will conduct an initial examination of a maximum of ten representative claims. The representative claims include all dependent claims expressly designated by the applicant and all independent claims.
  • In the event that an application contains or is amended to contain more than ten representative claims, the applicant is required to submit an examination support document to "share the burden" with the PTO.
  • In the event that an application includes more than ten representative claims and the applicant has inadvertently failed to submit an examination support document, the applicant will be given a non-extendable one month deadline in which they must either (A) file an examination support document, (B) cancel an appropriate number of claims and/or rescind the designation of various dependent claims, or (C) suggest a restriction and make an election.
  • The examination support document requires (A) a statement that a search was conducted, (B) an information disclosure statement listing the most closely related references, (C) a comparison between the limitations of the representative claims and the cited references, (D) a detailed explanation of how each of the representative claims is patentable over the cited references, and (E) a showing of where the limitations of the representative claims are supported in the specification.
  • The proposed rules are applicable to any application filed on or after the effective date of the final rule. In addition, the proposed rules are applicable to any application pending as of the effective date of the proposed rules, if a first action on the merits has not been mailed before the effective date of the final rule.

Strategic considerations

Plan that the new rules will be enacted and will effectively limit new continuation filings. Many commentators have asserted that the PTO lacks statutory authority to limit the number of continued examination filings. As such, the new rules may be challenged in court. While this leaves open the possibility that the new rules may be stayed during such a challenge, applicants should plan their prosecution strategies assuming that the new rules will be published and will be effective one month after the publication.

The proposed rules do not include guidelines as to the evidence required to show that an amendment or argument could not have been previously submitted. In raising this as deficiency in the proposed rules, many commentators have speculated that the PTO will not routinely grant petitions to allow additional continued examination filings. As such, applicants should plan their prosecution strategies assuming that such petitions may not be routinely granted.

Consider filing new continuing applications in pending omnibus applications before the new rules become effective. Because the proposed rules are retroactive in that they limit applicants to one and not "one more" continuation examination filing, if an applicant is considering filing a continuation and/or CIP based on a pending application, they should develop a strategy to file such applications prior to the effective date of the new rules.

Consider alternatives to filing RCEs. As stated above, the proposed rules effectively make continuation and CIP applications alternatives to filing an RCE. Because of the retroactive nature of the proposed rules, the filing of an RCE prior to or after the enactment of the new rules eliminates the right to file a continuation or CIP application after the new rules take effect. As such, applicants should consider alternatives to filing an RCE in currently pending cases. One alternative is for applicants to appeal final rejections that they believe are not warranted. In doing so, the applicant could request a pre-appeal conference to improve the chances of a timely and cost effective resolution. Another alternative is for applicants to conduct Examiner interviews earlier in the prosecution process, such as after a first action, in an effort to avoid a final rejection.

Consider alternatives to filing continuation applications. Continuation applications are often used to add claims based on information discovered after the filing of the parent application. For example, under current practice an applicant can file a continuation application including claims that take into account newly-discovered prior art or competitor activities. An applicant may be able to include claims broader than those initially included in the parent application. Under the new rules, the use of continuation applications to accomplish these goals is limited. As such, applicants should consider alternative approaches, such as filing a reissue or requesting a reexamination of the parent application after issuance. A reissue can include broadening claims if it is filed within two years of the grant of the original patent and satisfies the other requirements to file a reissue. Moreover, an applicant can file multiple reissue applications to initiate a division of newly-added claims that are independent and distinct from those originally presented. In this manner, an applicant may be able to file a voluntary divisional after the parent application has issued.

Consider filing divisional applications before the new rules become effective. Applicants should review all applications, including issued cases, in which a restriction requirement has been issued to determine which of the disclosed inventions can be pursued via a divisional application and make preparations to file the desired divisional applications before the effective date of the new rules. Furthermore, because of the retroactive nature of the proposed rules, applicants should consider filing divisional applications before paying the issue fee on any parent application that includes restricted inventions.

Avoid exceeding ten independent claims, if possible. As outlined above, the requirements for the examination support document are costly and will likely create an undesirable prosecution history. As such, applicants should avoid drafting applications that include more than ten independent claims, if possible.

Conclusion

The above strategies may not be applicable or appropriate under all situations. Moreover, the above discussion is not an exhaustive review of all strategies that may be employed in light of the proposed rules. As such, we recommend that applicants fully consider the potential benefits and shortcomings of all available strategies before proceeding. The attorneys listed below are available to discuss the latest information and strategies related to the proposed rules.

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.