On October 10, 2007, the USPTO published a notice clarifying the provisions of 37 CFR 1.78 relating to continuing applications and patentably indistinct claims. The notice relaxes some requirements for implementing the new patent rules on continuing applications and claims.
Applicants having applications filed prior to November 1, 2007 are no longer required to identify any other applications not having the same filing date as the subject application, even if the other applications have a filing date within two months of the subject application. For continuation-in-part applications, the requirement that the applicant must identify the claim or claims in the continuation-in-part application for which the subject matter is disclosed has been delayed or waived. Under the current rules, applicants who filed who filed more than two continuation or continuation-in-part applications of an initial application before August 21, 2007, may "one more" continuing application on or after November 1, 2007, without a petition and showing, if there is no other application filed on or after August 21, 2007, that claims the benefit of the prior-filed applications. Under the notice, continuing applications will no longer be taken into account for purposes of determining whether there is another application filed on or after August 21, 2007 that also claims the benefit of the prior-filed applications. Finally, the term "examined" as used in 37 CFR 1.78(d)(1)(ii)(B) has been clarified as not including the international phase examination under PCT Article 31.
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