Soon-to-be-Published USPTO Rules Will Require Changes in Patent Strategy

Last week the USPTO announced that its much-anticipated patent rule changes will be published in the next few weeks, and that the rules will take effect on or after October 1, 2007.  Because of the rule changes, IP managers, patent applicants and due diligence reviewers should consider the rules’ effect on patent filing strategies in both new and already-pending patent applications.  

The first rule change will limit patent applicants’ ability to file continuing applications and requests for continued examination (RCE).  Currently, a single patent application can yield multiple continuing applications and RCEs.  Under the new rule, the USPTO will accept multiple continuing applications and RCEs only if the applicant shows why the amendments or arguments presented in the subsequent continuation/RCE could not have been submitted earlier.

The second rule change will require patent applicants to elect only 10 claims for examination.  Currently, there is no limit on the number of claims that can be examined so long as the claims cover a single invention and the applicant pays the required fees.  Under the new rule, if an applicant wants examination of more than 10 claims, the applicant will need to submit a detailed patentability report for each claim.

The proposed rules were published in January 2006, and complete details of the final rules are not yet known.   However, patent applicants can act now to help reduce the effect that the rules will have on their patent strategies.  For example, patent applicants may:

  • Review each pending patent application to determine whether the application contains any valuable subject matter that is not already claimed.  If additional claims may be valuable, consider filing a continuing application for those claims before the rules take effect.
  • Review all patent applications containing more than 10 claims.  Eliminate any claims that aren’t likely to add much to patentability.  Consider combining dependent claims to reduce the claim count and improve patentability of the remaining claims.  If more than 10 valuable claims remain after this exercise, consider filing continuing applications and move claims to the contining applications before the final rules take effect.
  • When drafting new applications, keep them focused, concise and meaningful so that the specification doesn’t cover multiple inventions.  If you find that a patent application describes more than one valuable invention, separate it into multiple applications before filing.
  • Consider updating prior art searches in pending applications so that claims having a low probability of success can be amended before the first office action.  This can help reduce the number of continuations or RCEs required down the road. 

Because the rules will take effect very soon, patent applicants should begin this review as soon as possible.  In addition, persons involved in patent portfolio due diligence should consider how the new rules may affect a target’s pending patent applications.

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