[NOTE: after this post was originally published, the USPTO’s proposed claim and continuation rules were rescinded. For details, click here.]
On August 21, the USPTO published its rule changes relating to claims and continuation practice in patent applications. The rule changes relax several of the most stringent standards that were originally proposed. For example, instead of 10 claims, patent applications may have up to 25 claims (including 5 independent claims) as a matter of right. In addition, instead of only one continuation, patent applications are entitled to two (and in some cases three) continuation applications as a matter of right.
However, the rule changes contain several somewhat-hidden provisions that may prompt patent applicants to review pending applications and avoid a potential loss of valuable rights when the rules take effect on November 1, 2007.
For example, if more than two patent applications were filed within two months of each other, are commonly owned, and name at least one common inventor, then the owner must file a document identifying those applications as related, and the owner must explain why the applications are different for purposes of patentability. This information must be filed by February 1, 2008. [UPDATE: after I wrote this post, the USPTO issued a “clarification” stating that the two month requirement only applies to applications filed after November 1, 2007. Pre-November 1 filings are only subject to this requirement if they were filed on the same day. For more information, click here.]
In addition, pending applications that are divisional applications filed in response to a restriction requirement may need certain amendments before November 1, 2007 to avoid loss of their original priority date.
The Pepper Hamilton IP group has prepared a summary of the new rules, with suggested actions in light of the new rules. For a complete summary of the new USPTO claim and continuation rules, click here.
As a new patent attorney, (I have been an agent for a few years) I have a few questions about the new rules that I would like comments on from the patent bar. Feel free to post the following for responses.
1. In a family with multiple after final cases, would it be desirable to file RCE’s prior to Nov. 1?
2a. Can you withdraw a traversal?
2b. Is a withdrawal of traversal of a restriction requirement, where election has previously been made, effective to make restriction final, such that under the new rules multiple divisionals are then permitted in cases without a first office action on the merits yet?
Based on information that I’ve seen from the USPTO, divisionals are permitted once the non-elected claims are cancelled. However, if the non-elected claims are still pending (which would be the case if they were merely withdrawn and not cancelled), then a divisional will not get the benefit of its parent’s priority date.