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United States Patent and Trademark Office Publishes New Rules on Patent Applications

On August 21, 2007, the United States Patent and Trademark Office (USPTO) published new rules regarding patent applications in hopes of reducing a large and growing backlog of unexamined applications. The USPTO believes these new rules—which go into effect on November 1, 2007, and apply to all pending applications—will allow “a better and more thorough and reliable examination of patent applications.” While the full impact on the USPTO’s backlog will not be known for quite some time, the new rules may affect pending applications in your patent portfolio and will most likely have an impact on new applications.

What follows is a summary of the new rules, as well as some ways to limit their impact on a patent portfolio.

1. Limits on Related Application Filings (Patent Family)

Under the current rules, an applicant may file an unlimited number of subsequent applications linked to one or more previously filed applications in a chain, often referred to as a “patent family.” This approach provides a number of advantages. For example, subsequent applications may obtain the benefit of the earlier filing dates of the previously filed applications in the patent family, which could pre-date competitive products or intervening patents owned by other parties.

Beginning November 1, however, an applicant may only file two subsequent applications in a single patent family. The new rules restrict the filings of continuation1 and continuation-in-part2 (CIP) applications, but not divisional3 applications. In addition, the new rules treat each divisional application as the start of a new patent family, permitting the filing of two subsequent applications for each divisional application.

Under the new rules, an application filed before August 21, 2007, that already links to one or more previously filed applications will only be allowed to link to one more additional application. This rule applies regardless of the number of applications in the patent family. While comments to the new rules suggest that applications filed on or before August 21, 2007, should be grandfathered with the current rules, the USPTO believes that allowing an applicant to file one subsequent application will not take away or impair any vested rights acquired under the current rules.

2. Limits on the Examination Process

Under the current examination process, an applicant that receives a final rejection from the USPTO is permitted to file a request for continued examination (RCE), which permits the applicant to continue the examination process in hopes of obtaining an allowance and the issuance of a patent. (Alternatively, the applicant may appeal the final rejection to the Patent Board of Appeals, a much more costly approach.) There is no limit to the number of RCE filings allowed under the current rules. Under the new rules, however, an applicant is limited to a single RCE per patent family. If the applicant files an RCE in an application, the applicant would not be permitted to file any additional RCEs in that application or any linked applications. Since the RCE limit is imposed on a per-patent-family basis, the new rules will also permit the applicant to file a single RCE in each divisional patent family. With respect to all pending applications, if an RCE was already filed in an application, an applicant must petition the USPTO for the right to file a subsequent RCE in any application in the same patent family (item 3, below).

3. Requests to File Beyond the Imposed Limitations

Under the new rules, an applicant may petition the USPTO for the right to file additional applications or an additional RCE in a patent family. However, the USPTO has not released any guidelines indicating the standards it will use to evaluate these petitions. Because the USPTO passed the new rules specifically to prevent numerous continuations and RCE filings, it may be very difficult to successfully petition for an exception.

4. Limits Imposed on the Number of Patent Claims

Under current practice, the USPTO has never limited the number of claims an applicant could submit in a patent application or patent family. Under the new rules, however, each application will be limited to five independent claims and a total of 25 claims, referred to as the “5/25 Claim Rule.”

The new rules will permit the inclusion of additional claims if the applicant submits an examination support document (ESD). Preparing an ESD is a laborious and expensive process that includes, among other things, an extensive patent search covering all of the submitted claims. The results of the patent search must be analyzed and discussed in the ESD by particularly pointing out how all of the claims are patentable over the results. Given the time and expense associated with an ESD, most applicants will likely abide by the 5/25 Claim Rule.

All pending applications that have not been examined by November 1, 2007, must comply with the 5/25 Claim Rule or include an ESD by February 1, 2008.

5. Related Inventorship

Finally, under current practice, there is no requirement to disclose to the USPTO the existence of co-pending applications that list a common inventor and are not in the same patent family. The new rules, however, require applicants to identify, by February 1, 2008, in a disclosure letter to the USPTO, applications or patents that have a common inventor and a filing or priority date within two months of each other. The disclosure letter must also rebut the presumption that the applications are related and should be counted together for the Related Filings Rule (item 1, above) and the 5/25 Claim Rule (item 4, above).

This rule was enacted to prevent applicants from attempting to circumvent the rules by filing multiple applications, with substantially identical disclosures, on the same day.

Moving Forward: Reviewing Your Pending Applications

As the November 1, 2007, effective approaches, it is important to review pending applications to determine how the new rules will apply to you. For example, if your pending application includes more claims than allowed under the 5/25 Claim Rule, you may be required to file an ESD or reduce the number of claims. If the claims are reduced, the USPTO will refund any extra fees previously paid. If you have multiple applications pending, you are also required to disclose to the USPTO any common inventorship issues and distinguish these applications so as not to invoke the 5/25 Claim Rule or the Related Filings Rule.

Also, because you may have filed an application with a broad disclosure, your pending application may include more than one invention or patently distinct embodiments for carrying out the invention. Under the previous rules, applicants were entitled to file an unlimited number of subsequent applications to claim and protect these other inventions or embodiments. However, the new rules may allow you to file only one subsequent application. Therefore, it is important to review the claims in your pending application and preemptively request the USPTO to restrict the claims to divisional applications. The restriction will reserve and protect your rights to file applications on these other inventions or embodiments. It is important to note that under the U.S. patent laws, if an invention is disclosed but not claimed in an application, the unclaimed invention will be dedicated to the public once a patent issues.

How to Approach Future Applications

Whenever possible, your future applications should be specifically directed to claim a single invention. Large disclosures should be carefully split into multiple applications that minimize the crossing or sharing of disclosures. This approach will permit you to file multiple applications at the same time and avoid the 5/25 Claim Rule and the Related Filings Rule imposed under the Related Inventorship Rule.

If the disclosure still requires a single broad application, it should be filed with claims directed to all of the inventions. An ESD and a request for a divisional application should be filed, if necessary, to protect all of your inventions under the single disclosure.

If you have questions regarding how these new rules will impact your patent portfolio, please contact a member of the firm’s Intellectual Property practice group or your attorney.

 1A continuation application is directed to the same subject matter as a previously-filed application and is therefore entitled to the filing date of the previousl -filed application.

2A continuation-in-part (CIP) application includes new subject matter and may be an improvement over a previously filed application. In determining the filing date of the CIP, any subject matter taken from the previously filed application is entitled to the filing date of the previously filed application, while the new subject matter is entitled to the filing date of the CIP application.

3A divisional application is similar to a continuation application in that it includes the same subject matter as a previously filed application and is entitled to the filing date of the previously filed application, but the divisional application is directed to a distinct aspect of the invention not covered in the previously filed application.

© 2022 Much Shelist, P.C.National Law Review, Volume , Number 151

About this Author

Adam K. Sacharoff, Intellectual Property Lawyer, Technology Attorney, Much Shelist Law firm

Adam K. Sacharoff, Chair of the firm's Intellectual Property & Technology practice, counsels clients on patents, trademarks, and copyright matters, as well as a broad range of technology matters including sweepstakes, on-line privacy matters, and licensing.

Adam provides clients with a full range of patent-related legal services, including U.S. and international patent prosecution, patent opinions, pre-litigation counseling, ex parte and inter partes patent reexamination, due diligence of intellectual property assets, and patent licensing. He has filed and prosecuted hundreds of...