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August 20, 2007

To Be Continued

"I wanted to share the good news with you that the final rules on claims and continuations are expected to be published in the Federal Register tomorrow (Tuesday, August 21, 2007). These rules are part of USPTO's overarching goal to improve patent quality and the effectiveness of the patent examination process." - John Doll

The text of the USPTO internal email sent this morning to examiners -

Greetings to All !!!

I wanted to share the good news with you that the final rules on claims and continuations are expected to be published in the Federal Register tomorrow (Tuesday, August 21, 2007). These rules are part of USPTO's overarching goal to improve patent quality and the effectiveness of the patent examination process. We expect the rules on claims and continuations to have a greater impact on the quality of the patent examination process than any other change in recent history. Information on the new rules will be available tomorrow at: <http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/>clmcontfinalrule.html

Clearly, patent quality is a shared responsibility of applicants and the USPTO. The most significant difference in the new rules is that they encourage applicants to use greater precision in defining the scope of their inventions by setting thresholds for a reasonable number of claims and continuations.

Placing boundaries on a previously unbounded process will enable examiners to better focus on evaluating the actual inventive concept. It also will reduce examiners' rework and provide them with better information earlier. Examiner's expectancy will not be adjusted as part of the implementation of the new rules package.

Highlights of Final Rules on Claims and Continuations:

1. Each initial application is limited to 2 continuing applications and 1 RCE. Additional continuing applications/RCEs may be filed upon petition. This was changed from the proposed rule in which each application was limited to one continuing application.

2. Divisional applications may be filed only in response to a restriction requirement having been made by the Office. Divisional applications may be filed during the pendency of the initial application or any of its continuing applications. In the proposed rule, divisional applications were limited to being filed only during the pendency of the initial application. Each divisional application is also limited to 2 continuing applications and 1 RCE. Additional continuing applications/RCEs of a divisional application may also be filed upon petition.

3. The claims in each application may not exceed 5 independent claims or 25 total claims absent the applicant assisting the examination process through the filing of an Examination Support Document (ESD). This is a change from the proposed rule where an application could be filed with any number of claims but the applicant must elect 10 representative claims for examination absent the filing of an ESD.

4. The applicant must submit the serial numbers of all other applications filed within two months having the same assignee and at least one inventor in common. For those applications that additionally have a common effective filing date and substantially overlapping disclosures, the rule creates a rebuttable presumption of obviousness-type double patenting between them. This will enhance the examination process by saving examiner resources since the examiner will not have to research information that the applicant is in the best position to easily provide prior to examination.

As you may remember, the proposed rules were first published in the Federal Register on January 3, 2006, which began a public comment period of 120 days. Sincere thanks to those of you who provided valuable suggestions on the proposed rules during this time period. Many of those suggestions have been incorporated into the final rules.

OMB concluded its review of the continuations and claims rules on July 9, 2007. The final rules will become effective November 1, 2007. There will be no change to the examiner practice prior to the date the rules become effective.

We will be providing in-depth implementation training for all SPEs and examiners as we get closer to the date when the rules become effective. In addition, we have posted a list of FAQs that will be accessible tomorrow from the link above. We are currently working with POPA on implementation issues and will be able to respond more fully to your questions once those discussions have concluded. Should you receive any questions on the rules from applicants, please refer them to patentpractice@uspto.gov <mailto:patentpractice@uspto.gov> or 571-272-7704.

Thanks again for all your hard work and support !!!

John Doll
Commissioner for Patents

Posted by Patent Hawk at August 20, 2007 11:34 AM | Prosecution

Comments

I note in item 4, "The applicant must submit the serial numbers of all other applications filed within two months having the same assignee and at least one inventor in common."

This means that if you have an inventor who invents completely different things without any "overlapping disclosure", you have to cite the USSN. How is this going to "save time" for the examiner?

I have known many very prolific inventors in my time that have done work in completely different fields. This is yet another burden/expense that adds no value to the examination since the examiner presumably will need to plow through the laundry list to find those applications with "overlapping disclosure".

Posted by: Joyce at August 20, 2007 12:04 PM

Joyce makes a good point.

These rules are ill conceived, particularly when viewed from a larger perspective of holistic "compact prosecution," and what the patent is supposed to be doing, not how best it might convenience itself given its current examiner incentive system.

Further, the rules are going to backfire big-time, spawning a whole new way of filing patent applications; the subject of my next entry.

Posted by: Patent Hawk at August 20, 2007 12:52 PM

With respect to item #4 "The applicant must submit the serial numbers of all other applications filed within two months having the same assignee and at least one inventor in common." This has at least three problems with it. My favorite is that it operates as a Bill of Attainder. You may be a coinventor on a patent with a prolific inventor and just becasue you worked with this individual your property rights are prejudiced by virtue of ignoring the Congressional mandates of 35 USC section 102 and imposing prejudice upon the same pursuant to 35 USC setion 101 and all without a court hearing.

Posted by: KCB at August 20, 2007 2:04 PM