Strategies for Life Under the New USPTO Rules onContinuation and Claims Practice

Elizabeth Haanes, Ph.D., Esq.Mike Messinger, Esq. Michele A. Cimbala Ph.D., Esq.September 18, 2007

Strategies for Life Under the NewStrategies for Life Under the NewUSPTO RulesUSPTO Rules

• Rational Responses– Sell All Your Belongings– Stop Innovating and – Live in a Cave

Notice of Final Rulemaking

• “Changes to Practice for Continued Examination Filings, Patent Applications Containing PatentablyIndistinct Claims, and Examination of Claims in Patent Applications” – 72 Fed. Reg. 46716 (August 21, 2007)

• Effective: November 1, 2007 (but much is retroactive)

Key Provisions

• The number of examined claims will be limited (Rule 75)

• The number of continuation or CIP applications in a family will be limited, and voluntary divisional applications will not be allowed (Rule 78(d))

• Only one RCE per application family (Rule 114)

• Applicants will be required to identify certain copending, commonly-owned applications which share a common inventor (Rule 78(f))

The Good News...

• Excess claim fees paid for unexamined, canceled claims will be refunded upon request

• Applicants may now propose a “suggested restriction requirement” (SRR) to the Examiner

• Streamlined Continuations – may request continuations to be placed on Examiner’s Amended Docket

The Bad News...

• Only 5 independent and 25 total claims will be examined in any application without an “examination support document” (ESD)

• Commonly owned applications with common subject matter, a common inventor, or both, must be identified

• Typically only two continuation or CIP applications and one RCE per family “as of right”

• No voluntary divisional applications

The REALLY Bad News

• Examination Support Documents

• Copending applications determined to have “patentably indistinct” claims will be combined to meet the 5/25 claim rule

SKGF is Here to Help You!

What We are Doing Already

• First Client Advisory Letter (Aug. 30)• Second Client Advisory Letter (in draft)• Triaged File Review• Staffing• Automation

– Support for New Search Queries and Reports

• Docketing– New Rules and Dates

• Internal and External Training• Frequent Involvement with USPTO

Rule 75 - Claims

• The maximum number of examined claims per “non-allowed” application as a matter of right:– 5 independent claims– 25 total claims

• An “Examination Support Document” (ESD) under 37 C.F.R. 1.265 must be submitted if you are not in compliance with Rule 75

• Withdrawn claims do not count against the 5/25 limit unless they are reinstated or rejoined

Rule 75 - Claims

• The number of claims in applications that are co-owned and that contain at least one “patentably indistinct” claim will be added together for the purposes of counting the total number of claims.

• Once an application is allowed, a continuing application (CON or CIP) can be filed with another set of claims that complies with the 5/25 rule (“serial continuations”)

• Reissue applications must comply with the 5/25 limit.

Rule 75 - Claims

• If two or more pending, co-owned applications contain patentablyindistinct claims, the USPTO will require the combined claims in those applications to meet the 5/25 limit

Rule 75

• If the application is not in compliance with Rule 75 and it appears this was inadvertent, Applicant will be sent a notice with a 2 month period (not extendable) to:– supply an ESD;– Cancel claims; or– Submit a suggested restriction

accompanied by an election without traverse to an invention drawn to a group that is in compliance.

Rule 75 is “Retroactive”

• applies to any application that has not yet received a first office action on the merits (“FAOM”) by November 1, 2007

Ways Around 5/25

• Prosecute CONs Serially – File after Parent Allowed

• SRR• ESD

Suggested RestrictionRequirements (SRR)

• New practice under rule 142 --Applicant can submit a suggested restriction requirement (SRR) BUT– It must be filed prior to the first action

on merits or first action that contains a restriction or lack of unity

– An SRR must be accompanied by an election without traverse of an invention that complies with the 5/25 claim number requirement

SRRs

• The Examiner can:– accept the SRR and commence

examination on the elected group of claims;

– reject the SRR and issue a different restriction requirement (Applicant must elect a group of claims and conform limit claims to 5/25); or

– or reject the SRR and issue NO restriction requirement (Applicant must then limit claims to 5/25)

Rule 265: Examination Support Document Requirements• A statement that a preexamination search has

been conducted• A listing of references deemed most closely

related to the subject matter of each claim• For each reference an identification of all of the

limitations of each of the claims that are disclosed by the reference

• A detailed explanation of how each of the independent claims is patentable over the cited references

• A showing of where each limitation of each of the claims finds enablement and written description support in the specification and any priority applications

ESD Recommendation

• Avoid them where possible• Expensive and ripe for estoppel• May have to file Supplemental

ESD(s)• See new ESD Guidelines issued

Sept. 6

More Strategy Recommendations –Claims Practice

• Currently pending cases:– After FINAL and RCE - Consider RCE by

Nov. 1– After First Action on Merits – no claims

limit yet – watch out if next action is expected to be a final

– If restriction requirement pending, reply ASAP to try to receive first action on the merits prior to Nov. 1, 2007

– No FAOM issued prior to Nov. 1, 2007:• Consider SRR and election

Strategy Recommendations

• Future cases – new filings– Keep in mind 5/25 limit for appl. and 15/75 limit for appl. family– Draft claims with an eye toward restriction and divisional filings– PTO wants generic claims fully prosecuted first

• Thin or Fat Initial Applications?– File Multiple Thin Initial Applications on same or different dates

• Catch – ID requirement, Possible Merger, Terminal Disclaimer + Show why applications cannot be in one application

– File Single Fat Application with many claims• Catch – SRR/Divisionals at Examiner’s discretion, SRR may have to

argue one-way distinctness

• No easy solution where substantial amount of overlapping material needs to be claimed

• We will pull all this together in an example later

How will the 5/25 Rule EffectUSPTO Restriction Practice?

• Examiners may be motivated to limit the restrictions to reduce claims examined in any one application family; BUT

• Given the USPTO count system and time restrictions on Examiners, incentive remains for Examiners to issue restriction requirements to create more work on familiar applications

• Time will tell...

Identification of CopendingApplications under Rule 78(f)(1)

• Plan to be Aggravated• Burdensome, No Way Around It• How to Cope

• SKGF May Need Your Help

Identification of CopendingApplications under Rule 78(f)(1)

• Applicant must identify – all non-provisional applications/patents (that

have not been allowed) that have benefit or filing dates within 2 months of each other

– that name at least one common inventor and– that are owned/subject to assignment to the

same entity• must provide within 4 months of filing or

entering U.S. national phase• required even if the applications do not

have similar subject matter

Identification of CopendingApplications under Rule 78(f)(1)

• Rule is retroactive!• Applicants MUST comply with new rule

78(f)(1) in ALL pending applications by: FEBRUARY 1, 2008.

• Intervening filing dates of Cons/Divs/CIPs should be considered as well

Treatment of Copending Applications under Rule 78(f)(2)

• If identification under 78(f)(1) required AND- multiple applications have the same filing or

benefit date;- and contain “substantial overlapping

disclosure- Then a rebuttable presumption exists

that the applications each contain at least one claim that is not patentablydistinct from at least one claim in the other application

Treatment of Copending Applications under Rule 78(f)(2)

• Applicants must rebut the presumption that the claims are patentably indistinct; OR

• Submit a terminal disclaimer AND explain why the claims cannot be in a single application

Compliance with Rule 78(f)(2) is bythe later of

• 4 months from the filing or national stage entry date

• the date on which a claim that is not patentably distinct is presented

• two months from the date of mailing of the initial filing receipt in any of the applications

Rule 78(f)(2) is Retroactive!

• Compliance with rule 78(f)(2) for all pending applications is required by February 1, 2008

Ways Around the ID requirement

• There are none– Inventorship determination is a matter of law– Staggering filing dates may raise other

issues– Big burden for complex older patent families

• What happens if we don’t comply...– Don’t go there intentionally

• Best route – Apply experienced legal talent to benefit

claim analysis– Automate like crazy with oversight– Look at your benefit claim data NOW

SKGF Action

• Prior to Feb. 1, 2008, SKGF will work with clients to identify all pending applications which require cross-identification under rule 78(f)

• We will need client input as to whether additional applications (prosecuted in-house or by other firms) need to be identified

Domestic Benefit Claims Rule 78(d)

(d)(1) All domestic benefit claims MUST satisfy at least one of (d)(1)(i) through (d)(1)(vi)

NB! The PTO is not responsible for its own errors:

(d)(1): A mistake on the part of the PTO in entering or in not deleting an improper claim does not constitute a waiver of Rule 78(d)(1).

Domestic Benefit Claims

The Basics:

• Only two continuation applications “as of right”

• Each divisional may have its own two con applns.

• No voluntary divisionals

• No CIP’s filed off of divisionals

Domestic Benefit Claims Organization of Rule 78(d)

(d)(1)(i) - continuation appln(ii) - divisional appln(iii) - continuation of divisional appln(iv) - 1st nonprov is a Chap. I PCT;

no fee paid and no Chap. II demand

(v) - 1st nonprov applnwas abandoned with a NTFMP

(vi) - appln has a “petition and showing”

“Continuing” Applications

• A “Continuing Application” is a nonprovisional or PCT application designating the US that claims benefit of a prior filed nonprovisional or PCT application designating the US– Includes: continuation, divisional,

continuation-in-part or PCT applications– Does NOT include:

• A first filed nonprovisional application• A provisional application• An application that only has a benefit claim to a

provisional application or a priority claim to a foreign application

Continuation Applications

Definition:

• A continuing application that discloses and claims only subject matter that was disclosed in a prior-filed non-provisional application

Continuation-in-Part (CIP) Applications

• A continuing application that discloses subject matter that was not disclosed in a prior-filed non-provisional application

• Applicants must identify claims in a CIP that have 35 U.S.C. 112(1) support in the earlier-filed non-provisional application

• Any claim not so identified will be presumed to be entitled only to the filing date of the CIP

CIP Recommendations

• Avoid them. If claims are supported by the earlier-filed non-provisional application, use a continuation rather than a CIP

• If the claims would not be supported by the earlier-filed non-provisional application, consider filing a new application without claiming priority benefit

Recommendation: Postpone“Continuing” Applications

• Now: consider converting first-filed U.S. nonprovisional filings to provisionals

• Future: file initial filings in the United States as provisional applications

“Showing” Standard for AdditionalContinuing Applications• Must include an amendment,

argument, or evidence • Must show that the information

sought to be entered could not have been submitted during the prosecution of the prior-filed application

• Must be submitted within 4 months from the filing date, or national stage entry date, of the continuing application.

Divisional Applications

• A divisional application is a continuing application that discloses and claims only inventions subject to a lack of unity or restriction in a prior-filed application, and that were– Not elected in the prior application;

and– Not examined in any prior application.

• A “voluntary divisional” is a continuation

Divisionals

• Can I rely upon a restriction requirement to immediately file a divisional?– Yes, if you elect without traverse, and

cancel all non-elected claims– No, if you traverse the restriction,

because there is a chance it will be withdrawn

– No, if you retain non-elected claims, because they might be rejoined

“Not Examined in Any Prior-filedApplication”

• Does “Examined” encompass PCT Chapter II “preliminary examination” ?

• YES (?) NO(?) <PTO must clarify>• Thus, during later US prosecution a

lack of unity rejection or restriction requirement is made, it may not be possible to file a proper “divisional” application on claims which were already subject to PCT Chapter II preliminary examination

What if Restricted Claims Have Been Examined?

• Elect those claims which have already been examined

• Traverse the restriction requirement and petition finality

• File the already-examined but restricted claims in a “continuation” with a petition and showing

RCEs

• Only 1 RCE as of right in any application family

• Additional RCEs will require a petition, fee, and a sufficient “showing” that the amendment, argument, or evidence sought to be submitted couldn’t have been submitted prior to close of prosecution in the application

• For subsequent RCEs, an IDS, by itself, is an insufficient “showing”

• Is it not sufficient that the Examiner raised new grounds of rejection in a final office action.

RCE and “After Final” Recommendations

• NOW: if you currently have a final rejection and have already filed one RCE in the family, file a second RCE prior to November 1, 2007

• Going forward: petition improper final office actions

• Use interview practice to negotiate allowable claims

• If further continuations are not an option, amend claims to put in best form for appeal

Example, Continuations Filed Before 8/21/07

8/21/07 11/1/072nd Con Con

ConCon

• Benefit claim will be ok but if not yet examined, will still have to comply with the 5/25 rule.

• Applications must comply with the identification requirements of Rule 78(f)

Filing Con before 11/1/07

8/21/07 11/1/07

2nd Con ConConCon

These are 3rd – 5th Continuations; No “one more exception” (OME) will be available after 11/15/25 will apply and also identification Rule 78(f)(1) and (2)The PTO can force you to combine all the continuations.

So is it wise to file continuationsbefore November 1?

Filing Cons after 8/21/07 and before 11/1/07 won’t help and may hurt.

New Mindset for FocusedExamination

• Impact on New Filings and Patent Portfolio Creation

• Maximize Value of an Application Family (Initial Appl./2 CONs)– Target claims even better upfront– Consider more “story” in specification or evidence on

non-obviousness– Consider more patentability searching (Seagate)– Know Prosecution Strategy, Desired Claim Coverage

and Endgame Upfront• More Pitfalls - Patent Prosecution Expertise and

Time for Analysis Even More Important

Example – Wireless Web Phone Functionality Invention

First Example of Life Under theNew Rules

Example of Life Under the New Rules

First Example of Life Under theNew Rules

Example of Life Under the New Rules

Example – Compound Claims

Example – Compound Claims

New Mindset for Focused Examinaton

• The New Skill Set– Suggesting restrictions

• Arguing one-way distinctness– Petitioning Improper Final Office Action– Interviewing

• before and after Office Actions if possible– More Appeals to BPAI– Concise Claiming– Tracking Claim Count– Identifying Commonly-Owned Applications

with a Common Inventor even across multiple prosecution firms

To Do List – SKGF and Clients

• Our Actions Items - SKGF and Clients– Now to Nov. 1, 2007

• Get Grandfathered– Respond to Restriction Requirements– File RCEs after Final

– Now to Feb. 1, 2008 • Review and Collect Data for ID Req’t

– Special Cases to Call Your Attorney• New Continuations to Cover Unclaimed Subject

Matter• Pending Cases with Very High Claim Counts• Complex Benefit Claims

THANK YOU!Elizabeth Haanes, Ph.D., Esq.bhaanes@SKGF.comMike Messinger, Esq.mikem@SKGF.comMichele A. Cimbala, Ph.D., Esq.mcimbala@SKGF.com

This content of this presentation by Sterne, Kessler, Goldstein & Fox P.L.L.C. is for purposes of discussion and should not be considered legal advice.© 2007 Sterne, Kessler, Goldstein & Fox P.L.L.C.

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