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The article below was written and published in anticipation of a change to the rules before the uspto concerning, inter alia, the filing of continuation and divisional patent applications, and the number of claims allowed in such applications. Following a multi-party complaint the implementation of these rules has been injuncted, i.e. suspended. Further news will follow when known...- - - - -New US Patent Office Rules For Claims,Continuations and DivisionalsGeorge W SchlichEffective 1st November 2007 there will be significant changes to the rules, and importantly the practice, of filing continuation and divisional US patent applications. “Continued Examination” ApplicationsFor “continued examination” applications (strictly speaking continuation applications and Requests for Continued Examination (RCE)) patent applicants will be limited to 2 continuations and 1 RCE – beyond that a petition to the US Patent Office explaining the justification must be filed. Petitions may be turned down so good reason will be 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 can have 2 continuations and 1 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 will be limited, to 5 independent and 25 in total – file more and an Examination Support Document (ESD) is needed. The ESD essentially justifies the need for more claims – the effect is expected to be that applications with more than this number of claims will be rare. The new limit also applies to applications which as of 1 November 2007 have not received a first examination report, referred to as a first Office Action on the merits (FAOM). Applications that don’t comply will be given a time limit for amendment in order to comply. There are various ways of calculating how, within a given patent family, the limit of claims is or is not reached – the details are beyond the scope of this article and practice in this area is just beginning.
In PracticeIt seems likely that practice in filing continuations and divisionals will change – there is less benefit in filing continuations and there will be fewer continuations directed at similar subject matter to a parent application. There seems an advantage under the rules in filing RCEs before 1 November 2007 – subject to the facts of each application – though the greater flexibility in a continuation application must also be taken into account.
CorrespondenceGeorge Schlich
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