Feature Comment: Strategic Responses to The Newly-Issued USPTO Continuation And Claim Limitation Rules

By James G. McEwen[1]

Background

Under prior rules, an applicant was entitled to file as many continuation applications as needed to ensure that the invention was properly claimed and to prevent inadvertently narrow limitations from precluding literal infringement.  The only limitation on the number of continuations was generally set by matters of equity or where an applicant was not attempting to advance prosecution by amending the claims.  The applicant could also attempt to ensure such coverage using a single application which included as many claims as needed.  The limitation on the number of claims in a single application was set by the Examiner, who could issue a restriction if the number of claims being examined was deemed too burdensome for a single application.  In an effort to reduce the number of outstanding applications, application pendency, and the claims for each application, the United States Patent and Trademark Office has instituted a new rule package. Effective as of November 1, 2007, the new rule package is designed to change existing patent prosecution strategies, which relied upon unlimited continuations and claims to obtain appropriate coverage for an invention.  In order to create this change in behavior, the United States Patent and Trademark Office is effectively limiting the number of continuations and claims.  As will be set forth below, this new rule package will have a dramatic effect on prosecution of both pending and new applications, and will significantly impact prosecution strategy.

Changes to Claim Rules

5/25 Rule for Single Applications

In order to reduce the number of claims in a single application, the United States Patent and Trademark Office revised 37 CFR 1.75 to implement a new effective limitation.  The purpose of this rule is to force applicants to choose only the best claims as opposed to filing a multitude of claims in a single application.  Under 37 CFR 1.75(b)(1), applications can contain no more than five (5) independent claims and twenty five (25) total claims.  This rule is referred to as the 5/25 rule.  As will be detailed below, while there are exceptions to the 5/25 rule, these exceptions are extremely limited.

As will also be re-emphasized below, this rule will be effective for all new applications filed on or after November 1, 2007, and will be retroactively effective for pending applications which have not received a first Office Action on the merits as of November 1, 2007.  (72 Fed. Reg. 46716 (August 21, 2007)).  Moreover, while not affecting reexamination applications, the new rule also affects reissue applications, including reissue applications that are currently pending and have not received a first Office Action on the merits as of November 1, 2007.  Therefore, the scope of this new rule will impact both claims in applications to be filed as well as applications which have already been filed.

5/25 Rule Affects Copending Commonly-Owned Applications

Of special importance in this rule is a new feature: patentably indistinct claims in other commonly-owned applications will be counted against this 5/25 rule as if all are in a single application. Specifically, 37 CFR 1.75(b)(4) applies to copending applications that contain patentably indistinct claims.  If 37 CFR 1.75(b)(4) applies, the combined number of claims in al applications will be counted and the USPTO will treat, for purposes of the 5/25 rule, the combined number as if a single application had that combined number of claims. For example, if a first application has twenty (20) total claims and three (3) independent claims, and a second application has ten (10) total claims and two (2) independent claims that are patentably indistinct.  Under 37 CFR 1.75(b)(4), both the first and second applications have violated the 5/25 rule under 37 CFR 1.75(b)(1) since the combined number of indistinct claims is thirty (30) total claims.  Thus, applicants cannot avoid the 5/25 rule by, instead of including the claims in a single application, filing more applications (whether continuations or not), with each application individually compliant with 37 CFR 1.75(b)(1).   

In so far as what is considered patentably distinct, MPEP 802.01 instructs that claims are patentably distinct where “the inventions as claimed are not connected in at least one of design, operation, or effect (e.g., can be made by, or used in, a materially different process) and wherein at least one invention is PATENTABLE (novel and nonobvious) OVER THE OTHER (though they may each be unpatentable over the prior art).”  As such, distinctiveness versus indistinctiveness is based upon a comparison of the claims in the applications, and a determination that any difference in the claims would have been obvious to one of ordinary skill in the art.  This test is likely to be followed, with one major exception.

In contrast to the distinctiveness analysis for purposes of obviousness type double patenting, for purposes of 37 CFR 1.75(b)(4), the filing dates of the applications are not considered.  As such, while under the conventional test where a later filed species claim may be distinct over an earlier filed genus claim, whereas a later filed genus claim may be indistinct over an earlier filed species claim, under 37 CFR 1.75(b)(4), the species claim and genus claim are indistinct no matter which was filed first, so long as both are in different pending applications.  As such, for purposes of 37 CFR 1.75(b)(4), there does not appear to be a one way versus two way distinctiveness test as occurs in the conventional indistinctiveness analysis for purposes of obviousness type double patenting.  

Lastly, in addition to generally following the conventional indistinctiveness analysis, the definition of copending for the purposes of 37 CFR 1.75(b)(4) is restricted to applications under examination.  Specifically, as interpreted by the United States Patent and Trademark Office, copending means any application that has not yet been allowed.  (72 Fed. Reg. 46735 (August 21, 2007)).  As such, 37 CFR 1.75(b)(4) provides a disincentive to prosecute multiple related applications at the same time, but would allow prosecution serially (i.e., filing a continuation application after the allowance of the parent application). 

Exception to 5/25 Rule

In general, the applicant is required to comply with 37 CFR 1.75(b) on filing of the application.  As such, unless one of the below exceptions applies, the applicants will be forced to cancel claims to ensure that the number of pending and considered claims meets the 5/25 rule.  For all applications filed on or after November 1, 2007, a Notice will be sent out giving the applicants a choice between claim cancellation and filing an Examination Support Document (ESD).  Applicants can only elect one of the choices where the failure to make the election prior to the Notice was inadvertent.  37 CFR 1.75(b)(3).  In contrast, for applications pending prior to November 1, 2007, a different Notice will be sent out which allows the applicant a choice between filing the ESD, a Suggested Restriction Requirement (SRR), or to cancel claims to meet the 5/25 rule and there is no similar inadvertence requirement.  (72 Fed. Reg. 46728 (August 21, 2007)).

1.       Filing Examination Support Document (ESD)

Under the 5/25 rule, the applicant can exceed the 5/25 limit by filing an ESD compliant with 37 CFR 1.265.  The ESD is very similar to an accelerated examination document, and requires a pre-examination search, a listing of the most relevant references, an analysis as to which claim elements are described in which reference, an explanation of the patentability of the independent claims over the most relevant references, and an identification of where the claims are supported under 35 U.S.C. §112.  If any update is made during prosecution, either through the submission of an Information Disclosure Statement or by amendment to the claims, the ESD must be updated to reflect this change.  Lastly, the Examiner can reject the ESD as insufficient if, in the sole opinion of the Examiner, the search was insufficient.

Further, unless the ESD is filed prior to the first Office Action, the claims cannot be amended to include more than the five (5) independent claims and the twenty-five (25) total claims. 

While the cost of the ESD is not yet known, the cost would likely be similar to the filing of a reexamination request.  According to the AIPLA Economic Survey (2007), a typical cost of a reexamination request is $9,500.  In addition, estimates for a search alone used to compile an ESD are between $10,000 and $12,000.  Thus, the combined search based upon these numbers would be between $19,500 and $21,500.

However, this estimate is likely low since, while both a reexamination request and an ESD require an element by element claim comparison, the ESD has additional requirements in regards to search strategies and support in the specification.  Moreover, from acceptance rates based upon anecdotal experience with the Accelerated Examination program, it appears that up to 80% of the original ESDs will be considered deficient in some manner, thus requiring a supplemental ESD to correct the error or a cancellation of claims.  Thus, for a single application, the timing and cost of the ESD specified in 37 CFR 1.265 will ensure applicants do not typically exceed the 5/25 rule.

2.       Filing Suggested Restriction Requirement (SRR)

Under 37 CFR 1.142(C), the applicant can include an SRR in order to suggest how the claims can be separated into separate inventions.  When the SRR is filed, the applicant must elect one of the claim sets, and assign restricted claim sets as being withdrawn.  Since the 5/25 rule only applies to claims under examination, the non-elected claims of the SRR are not counted towards the 5/25 limit.  Thus, by filing an SRR to break the claims into sets of claims that are compliant with the 5/25 rule, applicants can present multiple claim sets in one application. 

If the Examiner adopts the SRR, the withdrawn claims can be used in a divisional application, which is generally beneficial for reasons set forth below in relation to the limits on continuation applications.  Since the divisional application has patentably distinct claims, by definition, the 5/25 rule will not apply to the restricted claims.  Thus, the SRR can be used to allow an applicant to, without filing an ESD, have more than five (5) independent claims and twenty five (25) total claims in a single copending patent application family.

However, the Examiner is not required to adopt the applicant’s SRR, and can substitute an independent restriction requirement.  Therefore, if the Examiner does not accept the SRR or if the substituted restriction requirement does not reduce the claims to within the 5/25 rule, the Examiner will issue a notice requiring compliance with 37 CFR 1.75(b)(1).  At this point, the applicant will need to either cancel the claims to meet the 5/25 rule, or file the ESD.

3.       Demonstrating Distinctiveness Between Copending Application Claims

Where the applicant receives a Notice that claims are patentably indistinct, the applicant has the ability to traverse this requirement.  As noted above, the test for distinctiveness is essentially an obviousness inquiry, where a comparison is made of the claims, and distinctiveness is shown where the differences would not have been obvious to one of ordinary skill in the art.  This requirement is similar to the applicant’s ability to traverse an obviousness-type double patenting rejection with one important distinction: the traversal is by Petition as opposed to Appeal.  This is because the United States Patent and Trademark Office views the 5/25 rule as purely procedural.  (72 Fed. Reg. 46785-86 (August 21, 2007)).  Therefore, when faced with such a finding under 37 CFR 1.75(b), the applicant can Petition under 37 CFR 1.181 this finding of indistinctiveness to force a restriction between the applications in the same manner that an applicant can Petition under 37 CFR 1.181 to prevent restriction under current practice.

4.       Cancelling Claims  

Where an applicant receives a Notice that claims violate the 5/25 rule or that patentably indistinct claims in multiple applications violate the 5/25 rule, the applicant can cancel the claims.  It is noted that the USPTO appears to be encouraging cancellation since the rules regarding requesting refunds under 37 CFR 1.117 specifically allow for refunds of extra claims fees for claims cancelled prior to examination.  Additionally, where the 5/25 rule is violated due to patentably indistinct claims existing in multiple applications, the USPTO appears to be encouraging cancellation between multiple applications since the Examiner can require cancellation of patentably indistinct claims from all but one application under 37 CFR 1.78(f)(3). 

However, it should be cautioned that the claim refunds only apply for fees paid after December 8, 2004.

5.       Applications Having First Office Action as of November 1, 2007

Under the applicability rules, the 5/25 rule does not apply to pending applications which have received a first Office Action on the merits by November 1, 2007.  (72 Fed. Reg. 46716 (August 21, 2007)).  However, the 5/25 can apply to other copending applications instead of the pending application having the first Office Action.  For instance, if there is an Office Action in a first application, but no Office Action in a second application having patentably indistinct claims, the 5/25 rule will not apply to the first application, but will apply to the second application.  As such, the applicant might be forced to either file an ESD in the second application, or cancel the patentably indistinct claims in the second application that exceed the 5/25 limit and add the cancelled claims in the first application.  

Changes to Continuation Rules

Two Continuation Application Rule

Under 37 CFR 1.78(d), no more than two non-provisional applications can claim the benefit under 35 U.S.C. §120 of a common parent application.  A third application can be made on approval by a Petition under 37 CFR 1.78(d)(1)(vi) as will be discussed below.  Voluntary divisionals are considered continuation applications such that, unless there is a restriction requirement, merely labeling a new application as a divisional does not avoid the restrictions under 37 CFR 1.78(d).  This rule is effectively retroactive since the rules do not make a distinction between when the benefit is claimed.  Thus, regardless of when a parent application was first filed or priority was first claimed, the applicant cannot file another continuation application after November 1, 2007 if two other applications already claimed priority to the parent application. 

Further, this limitation on continuations also applies to continuation-in-part applications.  As defined under 37 CFR 1.78(a)(4), a continuation-in-part (CIP) is a new application that includes additional subject matter not included in a parent application.  The applicant is required under 37 CFR 1.78(d)(3) to identify any claim which is supported by the original specification (as opposed to claims only supported by the newly added matter).  As such, if no claims can obtain a benefit under 35 U.S.C. §120 from the parent application, the United States Patent and Trademark Office will allow the benefit claim, but strongly recommends that the CIP application instead be filed as a new application since the applicant is not receiving a true benefit of the parent application relative to the prior art, and is instead merely losing term under 35 U.S.C. §154, and is using up one of the two continuations allowed under 37 CFR 1.78(d).  Frequently Asked Questions: Questions and Answers Claims and Continuations Final Rule, B9 (September 5, 2007) (http://www.uspto.gov/web/ offices/pac/dapp/opla/presentation/ccfrfaq.pdf).

Where such a priority is claimed and no exception exists, the office will not recognize the priority claim and require removal of any such benefit claim.  37 CFR 1.78(d)(1).

One Request for Continued Examination (RCE) Rule

Similarly, 37 CFR 1.114 has been revised to only allow a single RCE per family of applications.  An additional RCE may be allowed on showing of a Petition under 37 CFR 1.114(g), as will be discussed below.  This restriction on the number of RCEs not only applies to a single application, but limits the number for an entire family of related applications. As set forth in 37 CFR 1.114(f)(1), a new RCE can only be filed after November 1, 2007 where no other RCE has been filed in the same application or any application for which the application claims benefit under 35 U.S.C. §§120, 121 or 365(c). Therefore, unless an exception applies, applicants can only obtain a single RCE under 37 CFR 1.114 for an entire family of applications.

While only a single RCE can be filed, the applicants can use one of their two continuations under 37 CFR 1.78 as, in effect, an RCE using a Request for StreamlinedDocketingProcedure expedited procedure.  In this way, a continuation application can be filed, but the new application will not be treated as a new application and instead will be treated as an RCE to expedite consideration of the new application.  This procedure is reminiscent of the prior Continued Prosecution Application (CPA) procedures which the RCE replaced.

Divisional Application Exception

Since the United States Patent and Trademark Office only wants to limit the number of claims and continuations relative to a single invention, there is no limit on the number of divisional applications for patentably distinct inventions.   Therefore, each new divisional application is treated, in effect, as a new application entitled to two continuation applications under 37 CFR 1.78 and one RCE under 1.114.  The divisional application can be filed at any time during the pendency of the initial application, or any continuation application under 35 U.S.C. §120.  Thus, applicants are encouraged to, if multiple patents are to be obtained, restrict the claims in order to help the Examiner focus the examination in each application on patentably distinct inventions.

One Extra Continuation Exception

In order to prevent a filing stampede, the implementing rules allow an exception to the two continuation application rule: another continuation application can be filed so long as no further continuation application was filed after August 21, 2007.  As such, patent families that already have two continuation applications can file one more continuation application after November 1, 2007 without a Petition under 37 CFR 1.78(d)(1)(vi) assuming that no other continuation application was filed between August 21 and November 1.  (72 Fed. Reg. 46717 (August 21, 2007)).  Therefore, using this provision, unless a continuation application has already been filed after August 21 for a family containing more than two continuation applications or where whole new sets of continuations are to be filed, there is no benefit in filing only one additional continuation application before November 1, 2007. 

Petition Exception

In order to obtain a third continuation or a second RCE, the applicant must file a Petition under 37 CFR 1.78(d)(1)(vi) for the third continuation, or a Petition under 37 CFR 1.114(g) in order to obtain the second RCE.  In each Petition, the applicants must pay the $400 petition fee under 37 CFR 1.17(f), as well as provide “a showing that the amendment, argument, or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application.”  The United States Patent and Trademark Office has indicated that these Petitions will not be readily granted since the continuation and RCE should not be a substitute for an appeal or a Petition to withdraw a final Office Action.  If granted, the continuation application will be entitled to maintain its priority claim, or the RCE will be entitled to continue examination. 

Since these Petitions will not toll an outstanding requirement, filing such a Petition for the RCE would generally not be advisable since it is unclear whether the Petition will be acted upon prior to the six month statutory due date.   Thus, a pending application could go abandoned if the Petition is denied after the six month period has ended.  

By-Pass Application Exception

Recognizing that some applicants will file a continuation off of a PCT application instead of entering the National Phase, the rules create an exception to the two continuation rule by giving such bypass application an extra continuation.  37 CFR 1.78(d)(1)(iv).  However, the exception only applies where the PCT application itself does not enter the national stage.  Therefore, the applicant is in the same position, for the purposes of 37 CFR 1.78(d), as if the application had entered the national stage directly as opposed to using the bypass route.

Continuations from Applications Abandoned for Failure to Respond to a Notice of Missing Parts

Recognizing that some applicants will file a continuation off of an application which is being abandoned for failure to respond to a Notice of Missing Parts instead of complying with the Notice of Missing Parts, the rules create another exception to the two continuation rule by giving such a continuation application an extra continuation.  37 CFR 1.78(d)(1)(v).  However, the exception only applies where the abandoned application was abandoned for failure to respond to a Notice under 37 CFR 1.53(f).  Therefore, the applicant is in the same position, for the purposes of 37 CFR 1.78(d), as if the application had complied with the Notice as opposed to filing a continuation application.

Notification of Copending Applications

Identification of Related Applications Having a Similar Date  

One of the overlooked aspects of the new rules most affecting law firms and corporations is the notification requirement under 37 CFR 1.78(f)(1).  Under 37 CFR 1.78(f)(1), for each application that is pending, the applicant needs to provide a listing of each application meeting the following criteria:

1.   is commonly-owned with the filed application;

2.   has at least one inventor in common with the filed application; and

3.   has at least one filing or priority date within two months of the filed application or a priority date of the filed application.

This identification must be filed within the later of four months from the filing date for the filed application or two months from the mailing of the filing receipt.  Moreover, this identification is in addition to any necessary identification of related applications for purposes of a normal Information Disclosure Statement under 37 CFR 1.56. (72 Fed. Reg.  46779 (August 21, 2007)). 

While criterion 1 and criterion 2 are somewhat straightforward, criterion 3 presents a challenge since it requires correlating the filing date of the application, and any domestic or foreign priority dates for the filed application, with any other filing dates or priority dates for any other application worked on for each inventor.  For example, if an application to be filed has a foreign priority date and a domestic priority date, the database needs to be able to detect, for each inventor of the application to be filed, any other continuations, divisionals, original applications, and foreign applications having corresponding U.S. applications for which the inventor is a named inventor and whether these priority dates overlap the foreign priority and domestic priority date of the application to be filed. 

Since most law firms do not handle all applications for a single owner, this duty will fall directly on the patent owner/applicant.  However, in commenting on this rule, the United States Patent and Trademark Office has threatened to refer registered practitioners who do not comply with this rule for disciplinary proceedings.  (72 Fed. Reg. 46779 (August 21, 2007)).  Therefore, a certain amount of this duty will also be required for practitioners for at least those cases docketed to that law firm.

Moreover, since this rule will apply to any application that has not been allowed as of November 1, 2007, the identification under 37 CFR 1.78(f)(1) will need to be applied for most pending applications.  The United States Patent and Trademark Office will require this identification to be filed, for all existing applications, on or before February 1, 2008. 

Identification of Related Application Having a Same Date  

Like 37 CFR 1.78(f)(1), 37 CFR 1.78(f)(2) applies to commonly-owned applications having a common inventor. Unlike 37 CFR 1.78(f)(1), 37 CFR 1.78(f)(2) applies only to those applications which have a common date with the filed application and where there is “substantially overlapping disclosure” between the other applications and the filed application.  The shared date means that there is a common filing or priority date in both the filed application and the other applications.  Further, for there to be “substantially overlapping disclosure,” there is no need for claims to actually exist in both applications that are patentably indistinct so long as a claim in the filed application could be supported by the disclosure in the other application having a shared date.  By way of example, if a first application is filed having a first foreign priority date, a first domestic filing date, and a first divisional filing date, and a second application to be filed has a second foreign filing date that is the same as the first divisional filing date, a 37 CFR 1.78(f)(2) Identification may be required.  This Identification is separate from the 37 CFR 1.78(f)(1) Identification as well as from the normal Information Disclosure Statement required under 37 CFR 1.56.

In this situation, there is a presumption that the claims are patentably indistinct since it is assumed that the filed application is based upon the same basic invention.  In order to rebut this presumption, the applicant, prior to an Office Action, must submit a Statement explaining how the claims are patentably distinct.  If the applicant does not want to rebut the presumption, the applicant must, prior to an Office Action, submit a terminal disclaimer and provide an explanation as to why the patentably indistinct applications should exist in multiple applications.  However, not just any explanation will do since this reason must satisfy 37 CFR 1.78(f)(3).

This Identification and rebuttal must be filed within the later of four months from the filing date for the filed application or two months from the mailing of the filing receipt. 

Like the problems identified with regard to 37 CFR 1.78(f)(1), the Identification and rebuttal requirement presents a challenge since it requires correlating the filing date of the application, and any domestic or foreign priority dates for the filed application, with any other filing dates or priority dates for any other application worked on for each inventor.  Since most law firms do not handle all applications for a single owner, this duty will fall directly on the patent owner/applicant.  However, in commenting on this rule, the United States Patent and Trademark Office has threatened to refer registered practitioners who do not comply with this rule for disciplinary proceedings.  (72 Fed. Reg. 46779 (August 21, 2007)).  Therefore, a certain amount of this duty will also be required for practitioners for at least those cases docketed to that law firm.

 Lastly, since this rule will apply to any application that has not been allowed as of November 1, 2007, the 37 CFR 1.78(f)(2) Identification will need to be applied for most pending applications.  The United States Patent and Trademark Office will require this Identification to be filed, for all existing applications, on or before February 1, 2008.

Elimination of Patentably Indistinct Claims in Copending Applications

Under 37 CFR 1.78(f)(3), where no “good and sufficient reason” exists to allow the patentably indistinct applications to exist, the office can require “elimination of the patentably indistinct claims from all but one of the applications.”  This requirement appears to work in tandem with the 5/25 rule of 37 CFR 1.75(b)(4), which counts patentably indistinct claims in copending (i.e., non-allowed) applications against the 5/25 limitations, and further encourages only one pending application to have one patentably indistinct application at a time.  However, in contrast to the 5/25 rule of 37 CFR 1.75(b)(4), the cancellation allowed under 37 CFR 1.78(f)(3) is not dependent on the combined number of claims exceeding the 5/25 limitation.

Interaction of the Claims and Continuation Rules

As is evident from the above, the interplay of the changes in the claims rules under 37 CFR 1.75 and the continuation rules under 37 CFR 1.78 effectively blocks an applicant’s ability to have multiple copending applications with patentably indistinct claims while also preventing a rush to file continuations.  Specifically, since 37 CFR 1.78(f)(3) can require cancellation of patentably indistinct claims in related applications, there is little advantage to filing a large number of copending applications before November 1, 2007 since it remains within the discretion of the Examiner to cancel these claims, and since the applicants must rebut, in advance, a finding of indistinctiveness for these applications under 37 CFR 1.78(f)(2).  

Effective Dates

The effective date for the new rules is nominally November 1, 2007.  However, these rules are effectively retroactive since they will affect all pending applications.  The major exception will be that the 5/25 rule does not apply to existing applications currently under examination (i.e., have not received an Office Action on the merits).  Otherwise, all the remaining limitations outlined above will affect the both new and pending applications alike.

Possible Strategies to Meet Challenge

Prior to November 1, 2007

Since the new rules go into effect on November 1, below are some interim strategies that take advantage of the current rules as well as the transitional rules set forth in the new rules package. 

Pending Applications Prior to November 1

1.       Pending applications exceeding the 5/25 rule

If an application is already filed with claims that exceed the 5/25 rule, instead of immediately filing an ESD or cancelling claims, file an SRR in order to determine if the Examiner will restrict the claims to an elected claim set consistent with the 5/25 rule.  By including the SRR, it may be possible to provoke a divisional application which would allow greater flexibility in ensuring adequate patent coverage for the non-elected claims without having to file the ESD.

2.       Cancel claims prior to examination and request refund

If the application has claims in excess of the 5/25 rule but has not received an Office Action on the merits, the applicant can still cancel claims prior to being required to file an ESD or being forced to cancel indistinct claims under 37 CFR 1.78(f)(3).  Such can either be due to a Notice sent from the United States Patent and Trademark Office requiring the ESD or SRR, or can be done in advance of such notice.  If done prior to examination, a refund can be obtained under 37 CFR 1.117.  These cancelled claims can be reserved for filing in a continuation application at the conclusion of the prosecution for the instant application.

However, it should be cautioned that the claim refunds only apply for fees paid after December 8, 2004.

3.       Move claims in pending applications to applications under active examination

Since the 5/25 rule of 37 CFR 1.75 does not apply to applications having received a first Office Action by November 1, 2007, these applications are in the best position to receive new claims.  Thus, if multiple applications are copending and have patentably indistinct claims, the patentably indistinct claims can be cancelled from those applications that are merely pending (with the refund requested under 37 CFR 1.117), and reintroduced in those applications which are under active examination. 

In addition, even where the original application that is merely pending has arguably patentably distinct claims, by moving the claims to the application that is actively under examination, the introduction of new claims can be used to provoke a restriction to the new claims under 37 CFR 1.145.  This can be suggested as the claims are being added using an SRR pursuant to 37 CFR 1.142(c).  In this way, it may be possible to re-characterize the original application as a divisional application, and therefore obtain an additional two continuations and an RCE for the original application (and avoid having to rebut the presumption under 37 CFR 1.78(f)(2)).

4.       Move claims in pending applications to applications under active examination in response to obviousness type double patenting rejections

Under 37 CFR 1.78(f)(3), there needs to be good and sufficient reasons to allow patentably indistinct claims to exist in multiple applications, and the Examiner can require elimination of these indistinct claims.  As such, the mere filing of a terminal disclaimer is insufficient to prevent such cancellation.  Therefore, unless filing such a terminal disclaimer would result in immediate allowance of the application before November 1, 2007, if an obviousness type double patenting rejection is issued between multiple copending applications, overcome the rejection by moving the copending claims to the application being currently examined and cancelling the claims from the copending application.  This is especially suggested where the copending claims in the related applications have not yet been examined, and would therefore be subject to the 5/25 rule.

5.       Applications under final office action prior to November 1, 2007 and having already filed an RCE

If there is already an RCE filed in a family of applications, and the application is currently under a final Office Action, it would be advisable to file an RCE prior to November 1 since it will be the applicant’s last chance to file such an RCE without the Petition under 37 CFR 1.114(g).  This might also be a mechanism by which new claims from copending applications can be introduced to prevent cancellation under 37 CFR 1.78(f)(3) and/or to help force a restriction under 37 CFR 1.145.

6.       Multiple Applications of a Family under separate final office actions prior to November 1, 2007 

Regardless of whether an RCE has already been filed in a family of applications, if all or multiple members of the family of applications are currently under final Office Actions, it would be advisable to file an RCE in each case prior to November 1.  Otherwise, after November 1, the applicant will only be able to file one RCE in the family and will not be able to another RCEs for each application under final Office Action without the Petition under 37 CFR 1.114(g).  This might also be a mechanism by which new claims from copending applications can be introduced to prevent cancellation under 37 CFR 1.78(f)(3) and/or to help force a restriction under 37 CFR 1.145.

New Applications Prior To November 1

1.       File new applications before November 1, 2007

While not practical for applications which are not substantially ready for filing, applicants should ensure that applications which are substantially completed are filed before November 1, 2007.  The benefits are multiple.  First, since the requirement to file an SRR or ESD with the application is not applicable for applications filed before November 1, 2007, by filing the application early, applicants have a chance to wait until the issuance of a Notice requiring cancellation of claims, filing the SRR, or filing the ESD.  Second, unlike applicants receiving a similar Notice for applications filed on or after November 1, applicants can reply to the Notice using the SRR where the application was filed prior to November 1.  Third, since the deadline for compliance with the 37 CFR 1.78(f) reporting requirement is delayed to February 1, 2008 for applications filed prior to November 1, this delay will further allow additional time for the applicant to upgrade existing docketing systems to ensure compliance with this procedure.  Fourth, by allowing for the delay between the filing of the application and the Notice, it is more likely that other copending applications having arguably patentably indistinct claims will become allowable, thus reducing the number of issued under 37 CFR 1.75 and 37 CFR 1.78.  In this manner, by filing substantially completed applications prior to November 1, applicants will have additional time to implement a strategy for compliance with both the 5/25 rule and the reporting requirements under 37 CFR 1.78, will have increased flexibility in how to respond, and may actually lessen the impact of these rules.

2.       File new continuation applications where family includes more than two continuation applications before November 1, 2007

As noted above, applicants can file as many continuation applications as they deemed necessary before November 1, 2007.  As also noted above, 37 CFR 1.75 and 37 CFR 1.78 contain provisions which may result in cancellation of claims in these copending applications, and thus warn against filing such applications to prevent later complications.  At the same time, if applicants have already filed more than two continuation applications and wish to file multiple continuation applications to ensure that applications remain pending, applicants could take advantage of their present ability to file multiple continuations prior to November 1, noting that the applicants will still need to address the substantial hurdles posed by 37 CFR 1.75 and 37 CFR 1.78 when these issues are later raised by the Examiner.  

General Strategies Before and After November 1, 2007

In order to account for these changes, the following are potential strategies for both pending and new applications.  These strategies are applicable both to existing applications and new applications filed after November 1, 2007.

Pending Applications

1.       Conserve RCEs and Continuations Through Petition and Appeal

One of the justifications for the new rule package is that applicants have been relying on RCEs and continuations to avoid appeals and Petitions.  In essence, instead of fighting an improper final Office Action using a Petition or an improper rejection using an Appeal, applicants found it more cost effective to simply file an RCE or continuation to drag on prosecution.  However, since the number of RCEs and continuations is limited, the United States Patent and Trademark Office is forcing applicants to file petitions and appeals.  Since the new rules make filing multiple RCEs and more than three continuations cost prohibitive, applicants need to be careful in determining when to use their one RCE and their two continuations.  Thus, in pending applications where there is a final Office Action, the applicants should be more aggressive in Petitioning the finality of the Office Action or non-entry of amendments after final.  

Moreover, applicants should ensure that, prior to filing the RCE, careful consideration is given to filing an appeal.  It is important to ensure that, if any defects are found on appeal, an RCE or continuation is available to correct the deficiency.  Otherwise, where all of the RCEs and continuations have been used, an expensive Petition under 37 CFR 1.78(d)(1)(vi) for the third continuation or a Petition under 37 CFR 1.114(g) for a second RCE is needed, and it is uncertain to the extent that the Petition will be granted.

2.       Conduct Examiner Interviews Prior to Final Office Action

Since many rejections are the result of Examiner confusion over the prior art or are merely a matter of disputes of terminology, it is often helpful to conduct an Examiner interview in order to reduce confusion during prosecution.  In the past, such interviews might have been conducted after the issuance of a final Office Action or only after an RCE had been filed.  However, since applicants no longer have the right to multiple RCEs, applicants should consider conducting such interviews on the first Office Action.  In this way, the issues can be narrowed and simplified, thereby reducing the need for using the only RCE allowed by right merely to conduct an interview (or implement the results of the interview).  Further, such interviews can be useful in reducing issues on appeal, thereby reducing costs associated with such appeals.

3.       Cancel Claims Prior to Examination and Request Refund

If the application is pending but has not been examined (i.e., received an Office Action on the merits), the applicant can still cancel claims prior to being required to file an ESD or being forced to cancel indistinct claims under 37 CFR 1.78(f)(3).  Such cancellation might result from an accidental filing of claims in excess of the 5/25 rule, due to the claims being found patentably indistinct with claims in a related application, where a restriction requirement is successfully traversed, or where the Examiner does not accept an applicant’s SRR.  If done prior to examination, a refund can be obtained under 37 CFR 1.117.  These cancelled claims can be reserved for filing in a continuation application at the conclusion of the prosecution for the instant application.

However, it should be cautioned that the claim refunds only apply for fees paid after December 8, 2004.

4.       Cancel Claims Subject to Restriction Requirement

Under existing practice, it is permissible to maintain non-elected claims in an application after a restriction or election requirement is imposed.  Where the non-elected claims depend from an elected claim, if the elected claim becomes allowable, the non-elected claims are rejoined and examined.  If the non-elected claims do not depend from an elected claim, the Examiner can require cancellation after allowance of the elected claims.  However, under the new rules, where such non-elected claims are maintained in the application and the elected claim becomes allowable, the rejoinder can result in the application claims exceeding the 5/25 rule.  Since the ESD cannot be filed after a first Office Action, if the rejoinder of the non-elected claims would result in the claims exceeding the 5/25 rule, it is more likely that the applicant would be forced to cancel the non-elected claims.  Moreover, as the rejoinder is technically a withdrawal of the original restriction requirement, the applicant would not be able to file a divisional application for the claims needing to be cancelled, and must instead use any remaining continuation application.  Thus, where the application is subject to a restriction requirement, the withdrawn claims should be immediately cancelled, both to ensure that a divisional application can be filed to the non-elected claims and to ensure that the applicants do not accidentally maintain claims that can violate the 5/25 rule should any generic claim become allowable.

5.       Move Claims in Pending Applications to Applications Under Active Examination in Response to Obviousness Type Double Patenting Rejections

Under current practice, terminal disclaimers are typically filed in applications under active examination where a provisional obviousness type double patenting rejection is issued.  However, under 37 CFR 1.78(f)(3), there needs to be good and sufficient reasons to allow patentably indistinct claims to exist in multiple applications, and the Examiner can require elimination of these indistinct claims.  As such, the mere filing of a terminal disclaimer is insufficient to prevent such cancellation. Therefore, if an obviousness type double patenting rejection is issued between multiple copending applications, overcome the rejection by moving the copending claims to the application being currently examined and cancelling the claims from the copending application.  In this way, the applicants can avoid both filing the terminal disclaimer and issues related to 37 CFR 1.78(f)(2) statements or 37 CFR 1.78(f)(3) claim eliminations.

6.       Add Claims to Applications Under Active Examination to Provoke Restriction

Under 37 CFR 1.145, the Examiner can restrict newly presented claims where an Office Action has already been issued.  This rule is consistent with existing practice based upon 37 CFR 1.145 which, while rarely used, does allow a similar process. Further, by including an SRR with the newly presented claims, it may be possible to provoke a divisional application which would allow greater flexibility in ensuring adequate patent coverage.

7.       Conduct Examiner Interview To Agree That Claims Are Patentably Distinct

When a new continuation application is to be filed or where multiple copending applications already exist, and it is unclear if the claims would be considered patentably distinct, it might be possible to obtain an agreement from the Examiner that the new claims, if added in a pending application before the Examiner, would be restricted as patentably distinct.  Grounds for distinctiveness could be 37 CFR 1.145, which would apply if the new claims were added during prosecution.  Whatever the basis, applicants could contact the Examiner and see if the Examiner would agree, in an interview, to a restriction for a pending application.  Such a procedure would be similar to the existing telephone restriction procedure, by which Examiners contact applicants to determine if the applicants will elect a species without traverse orally as opposed to requiring a formal phone call.  Once such an agreement is reached on the record, 37 CFR 1.78(f)(3) would not be usable to eliminate claims, and the 5/25 rule of 37 CFR 1.75(b)(4) would not apply since a restriction has been preemptively issued.  Moreover, such a copending application might, arguably, then be re-categorized as a divisional application as opposed to a continuation application since the claims in the copending application have been arguably restricted from the parent application through the interview.  Such an approach might be preferable to a formal SRR, and might be performed during a regular Examiner Interview which is being conducted for other purposes.

8.       Ensure aDocketingSystem Tracks All Applications Filed and Is Searchable By At Least Inventor

In order to comply with the reporting requirements of 37 CFR 1.78(f), there needs to be a single docketing system which tracks, for each assignee and inventor, the application number and the filing date.  For small clients, a single law firm likely has all of this information and can ensure compliance with 37 CFR 1.78(f).  However, for other clients, no single law firm has such information.  As such, prior to November 1, such clients will need to upgrade their docketing system to ensure that the system tracks, for each inventor, which applications were filed, when the applications were filed.   

New Applications

1.       File SRR in New Applications Exceeding the 5/25 Rule Where an ESD is Not to be Filed

If an application is to be filed with claims that exceed the 5/25 rule, instead of immediately filing an ESD or cancelling claims, file an SRR in order to determine if the Examiner will restrict the claims to an elected claim set consistent with the 5/25 rule.  By including the SRR, it may be possible to provoke a divisional application which would allow greater flexibility in ensuring adequate patent coverage for the non-elected claims without having to file the ESD.

2.       File a Petition for Accelerated Examination in New Applications Important Enough to Consider Filing the ESD

As noted above, given the costs and risks of filing the ESD, it is anticipated that few applicants will file the ESD in all cases.  However, in those cases where the ESD is to be filed, since a claim set exists that exceeds the 5/25 rule, it is noted that the ESD does not result in special consideration of the application, and the normal three to five year pendency is anticipated for these cases.  Further, it is likely that the Examiner will restrict these applications, despite the ESD, using existing restriction practice, thereby further delaying issuance of any divisional applications filed to protect the restricted claims.  Therefore, for cases in which the applicant is considering using the ESD, applicants should consider instead filing a Petition to Make Special Under Accelerated Examination to obtain an accelerated examination while filing the remaining claims in a continuation application using the same ESD. 

Under a Petition to Make Special Under Accelerated Examination, the “USPTO will advance an application out of turn for examination … with the goal of completing examination within twelve months of the filing date of the application.”  The Petition requirements are consistent with the ESD, but the application may only include three (3)or fewer independent claims, and no more than twenty (20) claims total.  Moreover, the application must be directed to a single invention, and the applicant must agree to conduct an interview with the Examiner to resolve outstanding issues.   The benefits of using this process are twofold: first, while an application filed with an ESD will remain pending as a normal examination and may still be restricted under current examination standards, by using the Petition, at least one portion of the claim set will have completed examination in one year.  For the remaining claims, these claims can be filed in a separate application or continuation application as set forth below.

Lastly, assuming that the accelerated examination has concluded with an allowance, there would be no need to file the ESD itself in either the new continuation application or in a related non-provisional application.  Instead, the applicants could merely submit the search using the normal Information Disclosure Statement process.  In this manner, the continuation application and the second non-provisional application would be less likely to not be “infected” with statements against interest that might have occurred in the accelerated application due to the Petition.

a.       File Additional Claims in a Continuation Application

While it may be tempting to file a continuation application or a separate nonprovisional application to obtain an early filing date, these approaches may be difficult due to the provisions of 37 CFR 1.78(f)(2) and 37 CFR 1.78(f)(3), which are designed to prevent copending applications.  Thus, by filing a continuation or nonprovisional application during the pendency of the application under accelerated examination, the claims may be cancelled, a Statement under 37 CFR 1.78(f)(2) may be required to rebut a presumption of indistinctiveness, and/or one of the two continuations allowed under 37 CFR 1.78(d) will be used. 

As an alternative, the remaining claims could be filed serially after allowance of the parent application which is undergoing accelerated examiner so that 37 CFR 1.78(f)(2) does not apply.  Since examination should be concluded in one year, this approach will allow the introduction of the new claims without substantive delay (assuming an allowance occurs within the one year deadline).  However, this approach will still use one of the two continuations allowed under 37 CFR 1.78(d).

b.      File Additional Claims in a Foreign Application or Non-Provisional Application

Under this strategy, it is noted that the rules under 37 CFR 1.78(f) and 37 CFR 1.75 only apply to copending applications.  Further, the rules under 37 CFR 1.78(d) only apply where there is a continuation claim based upon 35 U.S.C. §§120, 121, or 365(c).  As such, it is preferable to file related applications serially without claiming priority benefit of each other. 

In theory, applications under accelerated examination will receive an allowance within one year of filing.  At the same time, under 35 U.S.C. §119, corresponding foreign applications and provisional applications need not be filed as U.S. non-provisional applications for one year after their initial filing, which is roughly the time that the accelerated examination should conclude prosecution.  Assuming that there is an allowance within one year, a new non-provisional application could be filed within the one year deadline under 35 U.S.C. §119 claiming priority from a foreign priority application or provisional application without being filed during the pendency of the accelerated application.  In this manner, the 5/25 limitations and the reporting requirements of 37 CFR 1.78(f) and 37 CFR 1.75 would be inapplicable.  Moreover, since the continuation limitations under 37 CFR 1.78(d) do not apply, applicants could use this additional application as a mechanism to obtain two further continuation applications and another RCE.  In this way, assuming no continuation applications are filed in the accelerated examination application, the entire family would include four (4) total applications without having to file an ESD in each of the four (4) applications.  In this manner, the priority deadline can be maintained, the accelerated examination is concluded, an additional application has been gained for the family, and all of the remaining claims can be filed without using the new non-provisional application.

It should be noted that not all accelerated examinations result in allowance within one year of filing.  According to a recent study by Stephen B. Maebius of Foley & Lardner, out of 300 accelerated examination petitions that have been considered, 241 have been denied. Based upon these statistics, it is likely that 81% of these Petitions will be rejected, thus requiring a supplemental filing.  In these cases or where the accelerated examination has not otherwise resulted in an allowance by the one year deadline under 35 U.S.C. §119, applicants might consider filing a PCT application to thereby gain a full thirty months before entering national phase. The full thirty months should result in some resolution of the accelerated examination, even if the initial Petition is rejected.

3.       File Continuations Serially

Instead of filing multiple pending applications, the continuation applications should be filed serially (i.e., one after the other).  The advantage in this scenario is that the 37 CFR 1.78(f) and 37 CFR 1.75(b) problems do not occur.  The disadvantage in this scenario is that the delay in issuance of the desired claims.

4.       File an ESD in last continuation application

Instead of filing the ESD in the original application, file an ESD in a last possible continuation allowed under 37 CFR 1.78.  Since the last possible continuation application will likely be filed more than 6 years after the original parent application (assuming 3 years for the parent application, and 3 years for the first continuation application), the applicants will have had sufficient time to determine what additional claims are needed to cover newly discovered potential licensees and/or infringers. In this way, the last continuation acts as a catchall for all possible claims and claim types.  An additional benefit to this strategy is that Examiners are more likely to issue a restriction when faced with large numbers of claims such that, even if the ESD is accepted, the Examiner may grant additional divisional applications, thereby granting further chances to supplement the initial coverage.

5.        File an SRR even where no problem exists for the 5/25 rule

In order to ensure that the maximum flexibility is allowed for prosecution of important cases, it would be advisable to file an SRR in order to attempt to split the application into multiple applications.  In this way, the applicant is afforded the maximum number of chances to obtain protection while minimizing the effect of both the rules under 37 CFR 1.75, 1.78, and 1.114.  This flexibility is since, due to the restriction, the applicant will have at least twice as many chances to obtain patentable subject matter, using the four continuation applications and 2 RCEs allowed should the application be restricted.   Additionally, even where only one patent is desired, having this number of potential applications and RCEs to present new claims and evidence greatly increases the likelihood of allowance of at least one of the applications without having to file an appeal.  As such, filing an SRR could mitigate the greatly reduced number of continuations and RCEs otherwise allowed by 37 CFR 1.78 if the application is not restricted.

6.       Use Reissue Applications After Last Continuation Application

Since reissue applications are considered a new application, a reissue application can be filed and will be entitled to two new continuation applications under 37 CFR 1.78 as well as the single RCE under         37 CFR 1.114 without a Petition.  However, it should be noted that the reissue application will be subject to the 5/25 rule, and thus the applicant may have to cancel claims, file an SRR, or file an ESD if the total number of claims (even claims already patented) exceeds the 5/25 rule.  Despite this limitation, the use of the reissue process may provide a mechanism for introducing up to two new applications into an existing family of applications.

7.       Break Applications for systems into Component Pieces

Assuming the invention is for a system having multiple novel components, instead of (or in addition to) filing a single application for the entire system of components, file an application for each component and remove the descriptions of the non-claimed components.  In this way, there is only support under 35 U.S.C. §112 for the one claimed component, but no support under 35 U.S.C. §112 for other components or for the system as a whole.  Such a strategy would help avoid (or limit) the mandatory disclosure requirements under 37 CFR 1.78(f)(2), providing better evidence of distinctiveness of the claims, and preventing the elimination of claims under 37 CFR 1.78(f)(3) since no single application has sufficient disclosure to support all of the claims in the family.  

It is noted that in a recent Federal Circuit decision, In re Metoprolol Succinate Patent Litigation, 83 U.S.P.Q.2d 1545 (Fed. Cir. 2007), a system claim was found patentably indistinct from a component claim.  The rationale was that the system claim was a species of the broader component claim, which is a genus.  For purposes of obviousness type double patenting, since the system claim issued first, the later issued component claim was patentably indistinct since an earlier species claim is patentably indistinct from a later genus claim.  In the context of obviousness type double patenting, the timing of the filing is important.  However, in the context of 37 CFR 1.78(f)(3), timing is not explicitly a factor in the new rule. 

a.       File system claims after applications for component pieces using incorporation by reference in component applications

In order to avoid this situation, a single provisional for the entire system could be filed which describes the components.  Each component application would claim priority to the single provisional, but only contain support for each component specific application.  At least one of the component applications should incorporate the provisional application by reference such that, after allowance of the component specific applications, the specification could be amended to include the entire subject matter of the provisional application and claims introduced to the system. 

b.      File system claims in single PCT application 

As a further alternative and instead of any of using the incorporation by reference in the component applications, file a PCT application for the system claims using the provisional application, and enter the national stage at the thirty month mark.  Assuming that the component applications are filed close to the same time as the provisional application and are examined or allowed within thirty months, the issues due to 37 CFR 1.78(f) and/or the affect of the 5/25 rule under 37 CFR 1.75(b)(4) could be eliminated or greatly reduced.  In any event, this would delay the need for the 37 CFR 1.78(f) disclosures until the thirty month mark.

8.       File Applications with Same Inventor on Different Days

37 CFR 1.78(f)(2) presumes claims in different applications are patentably indistinct when the applications are filed on the same day naming the same inventor.  As such, prior to filing a new application or a continuation application, a quick check should be made to determine if one of the named inventors has another application or continuation application being filed on the same day.  In this way, application filings should be coordinated to ensure that applications with a same inventor do not have the same filing date, thus requiring a review or statement under 37 CFR 1.78(f)(2).

Conclusion

The changes to the continuations and claims issued on August 21, 2007 represent one of the largest changes to patent prosecution practice to occur in the past ten years.  These changes present specific challenges to the way in which patents have been prosecuted in the past.  The interlocking features of the rules make it especially challenging to formulate an effective strategy without substantial study of the policies and the language of the rules.  However, once such a review is done, it is apparent that applicants can still protect their inventions through aggressive combinations of restrictions, petitions, appeals, and possible accelerated examinations.  Thus, while the changes are substantial, applicants still have the ability to strategically protect their patentable inventions by adapting to the rule changes and taking advantage of the above noted potential workarounds.


[1] Portions of this article will be appearing in a forthcoming article in the IPL Newsletter, which is a publication of the American Bar Association Section of Intellectual Property Law.  James G. McEwen is a name partner with Stein McEwen, LLP (www.smiplaw.com).  The author would like to thank Michael D. Stein and Hung H. Bui for their input in preparing this article. The opinions in this article do not represent the official positions of Stein, McEwen, LLP.

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