Patent Office Issues New and Amended Rules

Relating to Patent Applications

                  

By: Christopher Rourk

On Tuesday, August 21, 2007, the U.S. Patent and Trademark Office (PTO) published its final rules relating to “Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims and Examination of Claims in Patent Applications” (the “New Rules”). The New Rules affect both pending applications that have not received a first office action on the merits and new applications that are filed after November 1, 2007. A copy of the Federal Register notice that includes the New Rules and an extensive discussion of public comments on the rules can be obtained by clicking here. While the new rules will require a case-by-case analysis of actions that may be recommended for any pending applications, a brief synopsis of some the key provisions follows. 

Limitations on Number of Claims

The New Rules will limit an application to have no more than five independent claims or 25 total claims. While claims in excess of this number can be submitted, it will be necessary to provide an Examination Support Document (ESD) for such applications. The ESD must include (A) a statement that a search was conducted, (B) an information disclosure statement listing the most closely related references, (C) an identification of each claim limitation that is present in each reference, (D) a detailed explanation of how each of the independent claims is patentable over the cited references, and (E) a showing of where the limitations of each of the claim limitations are supported in the specification. Because applicants may wish to reduce the number of claims for such applications to avoid the requirement for preparation and filing of an ESD, the New Rules also allow applicants to amend such pending applications to reduce the number of claims and request a fee refund for any excess claim fees.

Requirement to Identify Related Applications

Applicants are also required to identify all applications that name at least one common inventor and that are commonly owned which were filed within two months of each application. The Examiner can require patent applications having “patentably indistinct” claims to be combined, so that the total number of claims in the combined application may not exceed five independent claims and 25 total claims. Applicants can try and rebut the presumption that the claims are patentably indistinct, but if the applicants are unsuccessful, cancellation of claims, or submission of an ESD will be required.

Limitations on Continuations and Requests for Continued Examination (RCE)

The New Rules allow for the filing of two continuation or continuation-in-part applications and one RCE as a matter of right. While additional continuations, continuations-in-part, or RCEs can be filed, a petition showing why the amendment, argument, or evidence could not have been submitted in earlier applications must be submitted and approved. Any applications that are pending as of August 21, 2007, that have two or more related continuations will be allowed one additional continuation as a matter of right.

For Further Information

As noted, the new rules will require a case-by-case analysis for each pending application, as well as new guidance and advice for the filing of any new applications. For additional information on the scope and content of these new rules, please contact any of the following attorneys:

AUSTIN

Raman Dewan
rdewan@jw.com
512.236.2013

Joseph Lally
jlally@jw.com
512.236.2019

DALLAS

Ling Chwang
lchwang@jw.com
214.953.5959

Robert Klinger
rklinger@jw.com
214.953.5978

Chris Rourk
crourk@jw.com
214.953.5990

HOUSTON

Mark Tidwell
mtidwell@jw.com
713.752.4578

SAN ANTONIO

Dan Chapman
dchapman@jw.com
210.978.7759

Mark Miller
mmiller@jw.com
210.978.7751

Bill Nash
bnash@jw.com
210.978.7764

Tom Sisson
tsisson@jw.com
210.978.7754

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