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New continuation and claim limit rules: the good, the bad, and the ugly

August 23, 2007
Post by Blog Staff

After having some time to parse out the details of the new rules promulgated by the USPTO on Tuesday, a few things jump out. For the most part, they could have been worse, but from the perspective of patent applicants, the new rules will likely result in more expensive applications, narrower coverage, and potentially the inability to obtain patent protection to which an inventor might otherwise be entitled. For practitioners, there are more opportunities for inadvertent procedural missteps, and difficulties in advising clients on the best course of action.Click below for more thoughts on the rules.The goodThe limits on continuations aren't as bad as they were when the rules were first published for comment. The originally-published rules would have only allowed a single continuation, continuation-in-part, or request for continued examination. Under the final rules, applicants are allowed two continuations or CIPs and one RCE per application family as a matter of right. This is at least a modest improvement over the initial rules.There is also a silver lining to the claim limitation rules. As originally proposed, if more than 5 independent claims or 25 claims total were presented, the applicant would have to select 10 "representative" claims for examination. The USPTO saw the error of this, and removed the representative claim provision. Of course, this also brings with it a downside.The badThe 5/25 claim limitations will make drafting applications more time consuming and expensive for most inventions. This is because an applicant will either have to distill coverage of the full scope of the invention into 5 independent claims and 25 total (and thereby potentially lose the ability to claim all embodiments of the invention), or be subjected to the USPTO's current favorite applicant torture device: the dreaded "Examination Support Document" (ESD).Similar to the ESD required for the accelerated examination program, the ESD requires:

  • A preexamination search, including identification of class and subclass searched, as well as the search strategy for database searches. Note that the search must include U.S. patents and published applications, foreign patent documents, and non-patent literature (unless an applicant wants to commit inequitable conduct justifies with reasonable certainty that no more pertinent references are likely to be identified)
  • A list of references "deemed most closely related to the subject matter of each of the claims," (i.e., potentially commit inequitable conduct)
  • For each reference, an identification of all claim elements disclosed by that reference (i.e., potentially commit inequitable conduct or malpractice, and argue against the inventor's best interest)
  • A "detailed explanation" of how each claim is patentable over the cited references
  • A showing of where each claim is supported under § 112, including showing where support is found in any parent applications if priority is claimed to an earlier application.

The USPTO does throw a bone to small entities, allowing them to submit an ESD with everything but the identification of the claim elements disclosed by each reference, as long as they submit a certification that they are small entities.

Don't think you can get around the claim requirement by filing multiple applications on the same day with more claims. The new rules also require disclosure of any other application with a filing date within 2 months of an application that has at least one common inventor and common ownership (or a common duty to assign). If such applications exist, and the USPTO determines they have substantially overlapping disclosures (meaning there's § 112 written description support for at least one claim in the other application), they will presume that the claims are not "patentably distinct," and apply the 5/25 claim limits to the total of the claims in the two (or more) applications. This is rebuttable, but the USPTO's motivation is to force you to either cancel the additional claims or file an ESD, so the likelihood of ever successfully rebutting this presumption seems low.The continuation limitations are also bleak for applicants. If an applicant wants (or needs) to file a continuation or RCE and has used up all the "freebies" allowed by the rules, the only way to file one is to petition, stating why the "amendment, argument, or other evidence sought to be entered could not have been previously submitted." Of course, this comes with a trap: filing such a petition does not toll the time to respond to the (presumably) final office action, so depending on how quickly such petitions are decided, an applicant may well end up realistically having to choose to appeal the rejection before finding out whether the petition is granted, or at least end up having to pay for one or more extensions of time to file an appeal if the petition is denied.Also, this rule has the potential for unfair results at the USPTO. For example, in many cases, the examiner cites new prior art in a second rejection, but makes that rejection final because it was "necessitated by an amendment" filed in response to the first office action. In reality, the applicant would never submit an amendment or argument to distinguish this new piece of prior art, because it had never been cited previously in an office action. However, given that the prior art clearly existed, does that mean the applicant "could have" submitted the argument or amendment, even though the prior art reference was never cited previously? If the USPTO takes the position that this type of amendment or argument does not meet the requirements for a petition for an additional continuation or RCE, if there are allowable claims in the application that could proceed to issue if a continuation could be filed, applicants will be forced to choose between the time and expense of the appeal process and abandoning the remaining claims.

Update (4:50 PM): According to the USPTO's Frequently Asked Questions regarding the new rules, the situation described above would not, at least in most cases, be a sufficient showing to warrant an additional continuation:

E7. Is it sufficient to show that the examiner made new arguments or a new ground of rejection in a final Office action?
The mere fact that the examiner made new arguments or a new ground of rejection in a final Office action would not be considered a sufficient showing. The Office will decide each petition on a case-by-case basis focusing on whether the new ground of rejection in the final Office action could have been anticipated by the applicant.

The uglyThe ugliest bit of the new rules is the retroactivity of the claim limitation rules. If an application is pending but has not received a first office action as of November 1 (when the rules take effect), that application will be subject to the 5/25 claim limitation rules. As a result, applications filed years ago may now have to be either amended to eliminate claims, or an ESD will have to be filed. This of course means a search, detailed examination of the results, picking out the "most relevant" references (i.e., creating fodder for a future inequitable conduct allegation), explaining how each claim is patentable over the references, and explaining how the requirements of § 112 are met. For an applicant who filed an application years ago, it will be an unwelcome surprise to find out that they either need to cancel claims in their application before it is even examined or pay a bunch more money for the ESD.Of course, an applicant could just ignore the requirement, but then the USPTO will send out a notice that you didn't comply, and give you a non-extendable two months to either file the ESD or cancel some of your claims. Not only that, but if your application doesn't comply with the 5/25 requirement, you start losing any possible patent term adjustment four months after you file your application (or immediately after you file an amendment that takes you over the limit without an ESD).The ugliness of the continuation rules comes from the shunting of applications into


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