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USPTO gives applicants a bit of a break during transition to new continuation and claim limit rules
October 11, 2007

In an announcement yesterday, the USPTO clarified some aspects of the new continuation and claim limit rules. Of particular note are the following:

  • For applications filed before November 1, 2007, applicants need not identify all applications and patents having a common inventor, common assignee, and a priority date within two months. Applicants will still have to identify applications and patents having the same priority date and having an inventor in common and common assignee.
  • For continuation-in-part applications that have not received a first office action on the merits, applicants will have until February 1, 2008 to comply with the requirement to identify which claims are directed toward subject matter entitled to the earlier priority date. For CIP applications that have received a first office action on the merits, the requirement to make this identification is waived.
  • The USPTO also clarified the definition of "examination" as it applies to 37 C.F.R. § 1.78(d)(1)(ii)(B). While the rule as it was written would have allowed "examination" to include international preliminary examination during Chapter II, the USPTO has now stated that international preliminary examination is not "examination" for purposes of this rule. This means that the applicant will be able to file divisional applications from a U.S. national phase application where the examiner makes a restriction requirement, even if those claims were examined by the PCT during Chapter II.

There are additional clarifications regarding divisional applications as applied to the "one more" continuation permitted in the full release.

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