For a patent family, an applicant is allowed two continuations, including two CIPs, and only one RCE, without question. Further continuations or RCEs require permission, based upon a petition with justification. The rules "do not offer any guidance as to what will satisfy this standard," observes Brinckerhoff.

The limitations on continuations and RCEs also are likely to lead to more appeals. An Applicant may opt to appeal if it feels strongly about the chances of success and decides not to use an RCE or continuation to negotiate further with the Examiner. Additionally, an Applicant may be forced into an Appeal if no further continuations or RCEs are permitted. These additional appeals will impose added costs on the Applicant, increase the burden on the Patent Office Board of Appeals, and undermine any efficiency gains that may be associated with other aspects of the new rules.

An examiner placing a restriction requirement is practically the only way to enlarge a patent family, as divisionals do not count against the continuation or claim limits.

Each divisional application is treated as an original application in that two continuations and one RCE may be filed as a matter of right in a divisional family. However, no continuation-in-part application can be based on a divisional application.

An applicant may propose their own restriction requirements, which the patent office may accept or reject.

Only time will tell whether Examiners accept suggested restriction requirements on a predictable basis that would justify the cost and effort required to prepare such a submission. However, it is likely that Applicants in fields where multiple-way (even hundred-way) restriction requirements are not uncommon (such as the chemical and biochemical arts) will be willing to test the waters.

Each patent family is limited to five independent and 25 total claims without a "burdensome" Examination Support Document (ESD).

The ESD requirements are similar, but not identical, to the requirements for accelerated examination support documents.

An ESD must be based on a prior art search of a specified scope, must include a list of the references “most closely related” to the claimed subject matter, must identify all claim limitations disclosed in each reference, must include a detailed explanation of the patentability of each independent claim, and must include a showing of where each claim limitation is supported in the application and in any priority applications.

The ESD requirements are burdensome, and raise risks of both prosecution history estoppel and charges of inequitable conduct. While Applicants may be willing to accept such costs in return for accelerated examination, for most applications, Applicants may prefer to give up claims rather than conduct the search and analysis required here.

The interplay between the claim limits and restriction requirements raises several complicated issues.

Simply having multiple co-pending applications imposes additional work on applicants.

The new rules impose several requirements on co-pending applications that are commonly owned and have at least one common inventor:

(1) Any such applications filed within two months of each other must be identified in a separate paper filed in each application. (It appears that pending applications have until February 1, 2008 to satisfy this requirement.)

(2) Where such applications have the same filing date (or priority date) and contain substantial overlapping disclosures, a rebuttable presumption will arise that one of the applications contains at least one claim that is not patentably distinct from at least one claim in the other application. Applicants can rebut this presumption by explaining how all claims are patentably distinct, or can submit a Terminal Disclaimer and provide “good and sufficient reason” for the two (or more) applications. (It appears that pending applications have until February 1, 2008 to satisfy this requirement.) If the USPTO does not accept the Applicant’s explanation, the USPTO may require the patentably indistinct claims to be canceled from all but one of the applications.

The masterminds of this imbroglio have done their best to close loopholes.

The USPTO has structured the rules to thwart attempts to evade the 5/25 limits by filing multiple co-pending applications. Applicants seeking to avoid the continuation limits cannot simply file parallel applications, because the USPTO may require patentably indistinct claims to be filed in a single application. Applicants seeking to avoid the claim limits cannot simply file parallel applications, because the USPTO will count the claims of each application as if they were filed in both applications. Moreover, Applicants seeking to avoid the issues raised by co-pending applications cannot simply file applications in series because the continuation limits will prevent the filing of more than two continuation applications.

The new rules apply retroactively, including a limit of one RCE.

There is a one-time exception for applications that only claim priority to nonprovisional applications that were filed before August 21, 2007, where no other U.S. application filed on or after August 21, 2007 claims priority to the same prior application.

The one-time exception means that if an application already has two continuations filed in its family as of August 20, 2007, “one more” continuation can be filed, and need not be filed before November 1, 2007.

Growing a patent family used to be an organic process. Now, much more planning will be required to optimize claim coverage.

The rules are complicated with many interrelated provisions, and their full implications probably will not be grasped until long after November 1.

It will take time for Applicants to determine how to adequately protect their inventions within the combined constraints of the claim limits, co-pending application requirements, and continuation limits.

Appropriate strategies likely will evolve as the rules are put into practice and are interpreted and applied in specific cases.

From IP Law 360.