Introduction
The US Patent and Trademark Office (USPTO) planned to introduce significant changes to US patent law on 1 November 2007.  However, as part of an ongoing court case, on 31 October 2007 a preliminary injunction was issued which prevented the changes from taking effect.  Until the court case is completed there continues to be uncertainty over what rule changes (if any) will ever take effect and when they will do so.

This page gives a  brief overview of the rule changes as originally proposed and explains what impact they may have on prosecution practice before the USPTO should they ever take effect. 

Background

There are currently significant delays in patent application prosecution before the USPTO.  The rule changes aim to ease the workload on USPTO Examiners in the hope of expediting the prosecution procedure and reducing the backlog that exists.

In particular, the USPTO seek to stop applicants from pursuing certain prosecution strategies that can delay almost indefinitely a final decision on the fate of a particular invention.

Summary
The new rules provide:

• a restriction on the number of claims an application may contain,

• a restriction on the number of continuation applications, continuation-in-part applications and requests for continued examination that may be filed as of right, and

• a requirement to identify commonly owned applications which name the same inventor and are filed within a given period of one another.

Number of claims
This rule change requires applicants to provide additional information to the USPTO if their patent application contains either more than 5 independent claims or more than 25 claims in total.

The additional information is called an Examination Support Document (ESD).  Its requirements are onerous.  To prepare an ESD, an applicant must perform their own patentability search.  The ESD itself must list the most relevant documents found in that search and, for every claim in the application, explain:

• which claimed features are present in each document

• how the claim is patentable with respect to each document

• how the claimed features can be derived from the written description of the invention

Given the expense in preparing an ESD and the potential limitations that statements made therein could cause in future litigation, it appears desirable to limit the number of claims in US patent applications so that an ESD is not required.  This can be done in a number of ways.

For how this rule change affects applications containing more than one invention, see the section headed “Reducing claim number” below.

Continuing prosecution
The rule changes define a “continuing application” as any of

- a continuation application,

- a continuation-in-part (“CIP”) application, and

- a divisional application.

These three types of US patent application each claim the benefit of the filing date of an earlier US application (or international (PCT) application designating the US) because they share common subject matter.  Continuation and divisional applications contain the same subject matter as the earlier application, whereas continuation-in-part applications include additional material.  An “application family” is an initial US application and all continuation and CIP applications derived from it.

Previously there was no restriction on the number of continuing applications within an application family.  It was therefore possible to keep subject matter pending before the US Patent Office almost indefinitely.

Continuation & CIP applications
The new rules stipulate that an applicant may file only two continuation or CIP applications as of right in an application family.  For a third and each subsequent continuation application, the applicant must explain why the newly presented claims could not have been presented in an earlier application.

A single continuation or CIP filed from an unexamined PCT application that does not enter the US national phase or from an initial application abandoned before examination does not count towards the continuation and CIP application number restriction.

Divisional applications
There is no limit on the number of divisional applications that may be filed in an application family.  However, divisional applications may only be validly filed in response to a formal restriction requirement from the USPTO which identifies separate inventions present in an initial “parent” application.

When validly filed, a divisional application effectively becomes the initial application of a new application family.  This means that an applicant may file two continuation or CIP applications as of right from a divisional application without affecting the number of continuation or CIP applications available from the parent application.

If an application is knowingly filed with more than one invention, it may be advisable to file a Suggested Restriction Requirement (SRR) with the application to prompt a restriction requirement to enable divisional applications to be filed.

Request for Continued Examination “RCE”
Where prosecution of a US patent application is closed, e.g. following a final rejection or notice of allowance, an applicant can reopen prosecution with the Examiner by filing an RCE.

Previously, there was no limit on the number of RCEs that could be filed in an application family.  The new rules permit only one RCE as of right in an application family.  Any second or subsequent RCE must be accompanied by reasons why the accompanying arguments or amendments could not have been filed earlier

Cross-identifying commonly owned applications
The final rule change requires applicants to cross-identify US patents or patent applications owned by them in certain circumstances.  The details of this rule depended on the rule changes taking effect on 1 November 2007; it is possible that transitional provisions may be altered if the rule comes into force later.

According to the proposed rules on cases already pending on 1 November 2007, cross-identification is required if an applicant owns a US patent application which has a filing date that is identical to the filing date of another US patent or patent application owned by them which names the same inventor.  For cases filed after 1 November 2007, commonly owned applications naming at least one common inventor and having filing dates within two months of one another must be cross-identified.  In this context, ‘filing date’ has a broad meaning, e.g. covering all of priority date, international filing date, and actual filing date. Care is necessary in determining which applications need to be cross-identified.

This rule change also introduces a presumption that where cross-identified US patent applications contain substantially overlapping subject matter they relate to patentably indistinct inventions.  In this case the applicant must show that two separate applications are justified.

What action is necessary now?

Cross-identifying current applications
If the new rules come into effect, applicants will probably only have a few months to cross-identify pending applications which fulfil the requirements listed above.  We recommend performing a careful review of patent portfolios at an early stage to identify cases which may need to be notified.

For applications filed after the rule changes occur, the time limit for submitting a cross-identification occurs soon after filing a second or subsequent application which triggers the cross-identification requirement.  Accordingly we recommend assessing whether an application will trigger a cross-identification requirement before it is filed, to ensure prompt action can be taken as soon as the filing receipt is issued.

Reducing claim number


Pending applications
According to the proposed rule changes on applications filed before 1 November 2007 where substantive examination has not begun and in which the claim number restriction is exceeded, the applicant will receive a notice of non-compliance setting a two month period in which to take one of three options:

- amend to reduce the number of claims,

- provide an ESD, or

- submit a Suggested Restriction Requirement (SRR).

It is likely that the 1 November 2007 will be altered to the date on which this rule change eventually takes effect.

Given the anticipated expense and possible negative future impact of an ESD, it is expected that applicants will take the first or third option.

The third option is highly advisable for applications which exceed the claim number restriction because they relate to more than one invention.  An SRR is an explanation from the applicant of how the claims can be divided between the different inventions and a request for the Examiner to issue a “restriction requirement” to enable the applicant to file one or more divisional applications to cover the separate inventions present in an original application. 

The USPTO may pre-empt an SRR by sending a restriction requirement with the notice of non-compliance.  In response the applicant may elect one of the inventions identified and pursue others in divisional applications.  The claim number restriction described above applies to each divisional application independently, so an applicant may have up to 5 independent claims or 25 claims in total in each divisional application without having to submit an ESD.

Unlike European practice, divisional applications cannot be filed voluntarily.  A restriction requirement must be issued by the USPTO to enable a divisional application to be filed.  With the new rules divisional applications are also desirable because they do not count towards the limitation on continuation applications in an application family.

 Future applications
For applications filed after 1 November 2007 (or whatever new date is chosen if the rule changes take effect later) on which the USPTO notices that the claim number restriction is exceeded, the applicant will receive a notice of non-compliance which provides only two options:

- amend to reduce the number of claims, or

- provide an ESD.

SRRs may still be made on US patent applications filed after 1 November 2007, but they must be filed before the US Patent Office issues the notice of non-compliance.  Thus, while it is possible to continue with the practice of combining more than one invention in a single application (which can save significant cost at the PCT stage) it will be advisable to file an SRR very early in US prosecution (e.g. simultaneously with filing).

File continuation or CIP applications?
Whilst this rule change is retroactive, there is an exception for all currently pending cases.  The exception permits applicants to file “one more” continuation application on any currently pending case regardless of the number of continuation applications or CIP applications made before 21 August 2007 (when these rule changes were published).  This “one more” continuation or CIP may be filed at any time.  This may affect continuation or CIP applications that are filed now even though it is not clear if the rule change will ever take effect.

File RCEs now?
There is no ‘one more’ exception for RCEs.  The rule change may therefore have a negative impact in cases where one or more RCEs have already been filed and where another RCE may be wanted.  To benefit from another RCE in such cases, it must be filed before this rule change takes effect.

This information is simplified and must not be taken as a definitive statement of the law or practice.

This information is simplified and must not be taken as a definitive statement of the law or practice.