On August 21, 2007, the United States Patent and Trademark Offices (USPTO) published final rules concerning claim examination and continuation practice, which may affect U.S. patent prosecution practice, depending on the circumstances of one's portfolio. While the rules become effective on November 1, 2007, certain patent prosecution actions taken prior to this date May affect the options available after November 1, 2007.
Under the new rules, applicants may file only one Request for Continued Examination (RCE) and two continuation or continuation-in-part applications in a single application family; a petition justifying the filing will be necessary if the number of the above applications exceeds the limits. If an application family already contains two continuation applications as of August 21, 2007, one more continuation application may be filed. However, if an application family contains one or more RCEs prior to November 1, 2007, further RCEs filed after that date will require a petition. Divisional applications that claim only unexamined, non-elected inventions may be filed if a prior application was subject to a restriction requirement.
The number of claims that will be examined without an Examination Support Document will likewise be limited to five independent claims and twenty-five total claims. This limit will apply to any patent application that has not received a First Office Action on the Merits (FAOM) before November 1, 2007. Applications not in compliance with the new limits May be subject to a reduction in patent term adjustment
If an application claims more than one invention, and the applicant files a Suggested Requirement for Restriction (SRR) prior to an FAOM or restriction requirement, the claim limit may be exceeded. However, the amount of elected claims in the SRR must still be below the 5/25 threshold.
Multiple applications may count against the 5/25 claim limit in certain circumstances; for example, the claims of commonly owned copending applications having a patentably indistinct claim will be counted towards the limit. For applications filed on or after November 1, 2007, the new rules will require applicants to identify commonly owned applications or patents with at least one inventor in common and with filing or claimed priority dates within two months of each other. For applications filed prior to November 1, 2007, the identification will have to be made by February 1, 2008.
The new rules affect various other prosecution practices and strategies, including, but not limited to preparation of new applications, reexamination, deferring examination, reissue and the use of prosecution practices that promote efficiency. Any future action in a patent family should consider the effects of the new rules.
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