THE USPTO HAS PUT FORTH NEW RULES FOR CLAIM COUNTS AND CONTINUATIONS
PLEASE MAKE NOTE AS SOME CHANGES HAVE RETROACTIVE EFFECTS
New Claim Limits
UNLESS the applicant: (a) conducts a prior art search following the USPTO template (MPEP 719.05); (b) list references deemed most closely related to the subject matter of each claim; (c) explain the patentability of each claim; (d) show where the claim is taught in the body of the application itself and if, other than a type of small entity, (e) provide a mapping of the references to the claims by identifying claim limitations disclosed by each reference (termed an Examination Support Document, ESD); then ANY non-provisional patent application filed after October 2007 AND THOSE PRESENTLY PENDING that have not yet been examined for patentability must be limited to no more than five independent claims and a total of twenty-five claims (i.e., the 5/25 limits) whether by cancellation (and if filed after December 7, 2004, a request for reimbursement of fees filed within two months of the cancellation) or by restriction (paring out originally filed claims directed more than one invention). For applications filed after October 2007, those exceeding the 5/25 limits must have an ESD or suggested restrictions filed to leave the remaining claims within the 5/25 limits and do so within four months of the application filing date to avoid adversely affecting the patent term adjustment calculations. As for a presently pending application, rather than waiting for a pre-examination communication from the examiner in cases exceeding five independent and a total of twenty-five claims, proactive cancellation, election, or preparing and filing of an ESD should avoid adverse patent term adjustments. (37 CFR 1.704)
New Continuation Limits
A presently pending non-provisional patent application that, on August 21, 2007, was a grand-daughter (a continuation or continuation-in-part of a continuation or continuation-in-part) of an original application may be allowed a daughter application without a petition and showing that the amendment, argument, or evidence (which may include new claims in a continuation, but not an IDS) sought to be entered could not have been submitted during prosecution of the prior-filed application or prior to the close of prosecution in the application. All future grand-daughters of newly filed applications will require a petition and the required showing in order to have a daughter. Failure to surmount the showing leaves the daughter orphaned and subject to her family members, if published or issued, being prior art.
Effective November 1, 2007, no second Request for Continued Examination may be entered in the family line without a petition and the requisite showing. A second RCE may be filed without petition and showing prior to November 1, 2007.
APPLICABLE IMMEDIATELY- PERTAINING TO MULTIPLE FILINGS HAVING COMMON SUBJECT MATTER
New Reporting Requirements: The sweep of the 5/25 limitation affects applicants having two more presently pending applications claiming the benefit of the priority date (i.e., the filing date) of a prior filed provisional or non-provisional patent application. The applicant must timely (e.g., by February 1, 2008) enter into the file of each application an identification of the other application. If one identified application contains a disclosure that supports at least one claim of another identified application, there is automatically a rebuttable presumption that the applications, when taken together, contain patentably indistinct claims (i.e., claiming obvious variations MPEP 804) and a rebuttal (i.e., a rebuttal effectively similar to that of an automatic one-way obviousness-type nonstatutory double patenting rejection) or a terminal disclaimer must be timely filed OTHERWISE the claims of the identified applications containing the presumed patentably indistinct claims will be totaled and applied to the 5/25 limit.
New CIP Obligation: If the continuation is a continuation-in-part (CIP) claiming subject matter supported in the parent application, such claims must be identified in the case. Another point to note about continuations-in-part is that divisional applications (which themselves are re-defined in the new rules) are limited to two continuations and these may not be continuations-in-part.
Practice Tip Remains Applicable: Applicant may attempt to avoid first action final rejection (i.e., receive a non-final rejection or allowance) after a final rejection by responding to the final action under 37 CFR 1.116 with a request for entry of an amendment, argument, and/or or new evidence
IN THE PROCESS OF DIGESTING THESE NEW RULES, ONE MAY DISTILL NUMEROUS CONCERNS
FOR EXAMPLE:
5/25 and the Examination Support Document (ESD): Client-Server-related inventions immediately come to mind where a system claim, a client-side claim, a server-side claim, a method claim and a software conveyance article claim exhaust the five independent claims that may be initially contemplated. What if means-plus-functions claims were desired for the server-side and client-side? The enabling disclosures of a pair of contemporaneously filed applications in this example may very well require the overlap that triggers the presumptive combining claims across applications. One might file with seven independent claims (as a way of adding the proposed means-plus function client-side and server-side claims) and suggest a restriction according to the new rules knowing that it will be the examiner that determines the actual restriction, if any. For such inventions, five independent claims may just not be enough at the initial filing, and so one may contemplate the Examination Support Document.
With all due respect to the USPTO, the ESD appears to suffer several of the same troubling characteristics possessed by the new accelerated examination procedure for original applications originating out of the US. One is continually aware that statements made by the applicant adverse to applicant’s position, i.e., admissions, are acutely given probative weight. (MPEP 2145, 2129, 2144.03) Statements required and made in an ESD (such as those directed to the reasonable certainty that no references more pertinent than those already identified are likely to the found in a source not relied upon in the search) may provide bases for charges of inequitable conduct (presumably by an allegedly infringing defendant).
Further, because the ESD is part of the application file history and asserted for purposes of patentability, the language used by the applicant in characterizing of the claims, given their broadest reasonable construction, relative to the references may be picked up again if a patent based on the application or its family members is asserted. That is, the characterizing language of the ESD could be expected to be used by the alleged infringer as an admission by the applicant that the claim scope must read as narrowly (or as broadly for invalidity purposes) as the applicant did in the ESD, i.e., more narrowly (or not as broadly) perhaps than the claim scope might have been constructed by a federal judge in a Markman procedure in a similar case where the file history did not contain an ESD.
One RCE: An RCE is not uncommon in a case when the first Office action on the merits is regrettably cursory. In such instances, the examiner digs into the case with more rigor after the applicant’s response to the non-final action and perhaps responds with a second non-final action, but may respond with a final action (or what some wags call the first real action on the merits). Arguments and amendments may be submitted in response to the final action (at least to preclude the first Office action of a subsequent RCE being a final action), but will not get entered without an RCE. In those happy cases where the RCE results in an NOA one must note that it is possible that in the meanwhile, the application, as a pre-grant publication (or re-publication), might be provided (perhaps at least two months after publication) to a prospective infringer who might return printed material (perhaps dug up in an invalidity search for and opinion of counsel) to the applicant as purported prior art directed to the claims being prospectively asserted. The reception by the applicant of this new art is most concerting when received after the NOA is mailed (and theoretically, this can timed by the prospective infringer because the file wrapper is viewable by the public - a record that includes the continuations and RCEs previously filed).
Prior to the new single RCE rules of November 1, 2007, the applicant could petition to withdraw the NOA, file an RCE with the new art with the hope of receiving a second NOA. With the single RCE rule, the entry of an IDS alone is an insubstantial showing (see USPTO “Claims and Continuations Final Rule” charts on this) to file a second RCE or a third continuation, leaving the applicant with the prospect of a re-examination post-issuance. It should be noted that although the new rules (37 CFR 1.178(d)) allow the applicant to request a continuation application be placed on the examiner’s Regular Amended Docket under the optional streamlined continuation application procedure, the prior-filed application in this exemplary instance is neither under final nor appeal (so withdrawing the NOA to return it to final is necessary). The RCE appears to be the most expedition means of getting an IDS in after withdrawing the NOA, and so the applicant may rather appeal after a final action rather than risk giving up the single RCE that may be used later as a countermeasure to a third-party post-allowance prior art mailing and rather than giving up one of the two continuations in the event there are improved embodiments in the family or a previously unclaimed embodiment is identified (or perhaps used like an RCE, if need be).
Risks of Inadequate Showings/ Denied Petitions:
For second RCE filed after November 1, 2007, a denied petition does not stay any period for reply that may be running. Such a risk may warrant the use of a continuation, if any remain, or the filing of an appeal.
For a third continuation, a denied petition causes the application to be treated as having a defective (and therefore no) priority and so its published family line becomes "killer" prior art, leaving no subject matter of the orphaned application patentable.
