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Proposed US Patent and Trademark Office Rules For Claims,Continuations and Divisionals (an Update)Update by Simon J MitchellIn a press release dated 8 October 2009, the US-PTO announced that they are rescinding their unpopular proposed regulations governing the maximum number of claims, continuations and requests for continued examination (reported below). This follows around two years of litigation started by GlaxoSmithKline and Dr. Tafas. David Kappos, the Director of the US-PTO, said, "the US-PTO should incentivize innovation", adding that in taking the action to rescind the controversial proposed patent regulations package, the US-PTO is hoping "to engage the applicant community more effectively on improvements that will help make the US-PTO more efficient, responsive, and transparent to the public." Time will tell what improvements the US-PTO has in mind.
Proposed US Patent and Trademark Office Rules For Claims,Continuations and DivisionalsGeorge W SchlichRevised by Simon J MitchellThe US-PTO had proposed significant changes to the rules, and importantly the practice, of filing continuation and divisional US patent applications to be effective 1 November 2007. Although these proposals have been abandoned, this summary of proposals illustrates what could have been. “Continued Examination” ApplicationsFor “continued examination” applications (strictly speaking continuation applications and Requests for Continued Examination (RCE)) patent applicants would have been limited to two continuations and one RCE – beyond that a petition to the US Patent Office explaining the justification would have been required to be filed. Petitions may have been turned down so good reason would have been needed.
Divisional ApplicationsDivisional applications can be filed in response to a restriction requirement and the claims of the divisional application are required to be directed to unexamined, non-elected inventions. The divisional application is then a separate application and could have been entitled to two continuations and one RCE, as above. There are transitional provisions: for applications having at least two continuations on 21 August 2007 the rules allow for “one more” continuation application. For applications having at least one RCE prior to 1 November 2007, any subsequent RCE will need a petition.
Number of ClaimsThe number of claims would have been limited to five independent and 25 in total – file more and an Examination Support Document (ESD) would have been needed. The ESD essentially would have justified the need for more claims – the effect was expected to be that applications with more than this number of claims would have been rare. The proposed limit also would have applied to applications which as of 1 November 2007 had not received a first examination report, referred to as a first Office Action on the merits (FAOM). Applications that did not comply would have been given a time limit for amendment in order to comply.
In PracticeIt seemed likely that practice in filing continuations and divisionals would have changed – there would have been less benefit in filing continuations and there would have been fewer continuations directed at similar subject matter to a parent application. There seemed to be an advantage under the proposed rules in filing RCEs before 1 November 2007 – subject to the facts of each application – though the greater flexibility in a continuation application would have also been taken into account.
CorrespondenceGeorge W Schlich
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