These new rules will take effect on 1 November 2007 and will be retroactively applied to pending US patent applications. Basically, the rules will restrict the number of “bites at the cherry” available to patent applicants – that is, they will effectively reduce the number of times a set of claims relating to a particular invention can be put before a US examiner. This constitutes the most significant change to USPTO prosecution practice in recent years and is likely to have a major impact on the patent strategy of players across all technologies.
Currently, US patent applications may be subject to an unlimited number of “continuation requests” filed together with evidence and arguments in support of their claims. In this context, the term “continuation requests” refers to continuing applications, continuation-in-part (CIP) applications and voluntary divisional applications*. In other words, there is currently no limit to the number of times an applicant can place a patent application before the USPTO examiner nor, indeed, is there any restriction as to the number of claims in each application. As a result, there are currently more than 800,000 US patent applications waiting to be examined – leaving competitors unsure as to the breadth of protection (if any) that may eventually be granted to the applicants … and the USPTO with a migraine.
Under the new rules, the USPTO will restrict the Applicant to filing two continuing applications and one request for continued examination (RCE) as a matter of right. A divisional application may be pursued only when a restriction requirement is issued by the USPTO. (A “restriction requirement” is issued when the US examiner objects to the claims on the basis that they relate to more than one invention.) When a restriction requirement is not issued, a divisional application voluntarily filed by the Applicant will be treated as a continuing application. Any additional requests for continuing applications or RCEs will only be granted in exceptional circumstances and will need to be supported by a detailed petition justifying the request.
If, by 1 November 2007 the limit of two continuing patent applications has been reached, the Applicant will be allowed to file one additional continuing application. The USPTO will issue a notice on pending patent applications prior to this date, giving Applicants time to provide the necessary information or to amend applications as required.
Under the revisions, applications will also be limited to a maximum of 25 claims, 5 of which may be independent claims. This limit applies to each primary application, continuation, CIP and RCE. For applications where the new claim limit is exceeded and where there is clearly more than one invention, the Applicant can submit a suggested restriction requirement (SRR) electing a single invention, limited to a maximum of 25 claims.
In the event an application requires more than 25 claims or more than 5 independent claims, the Applicant will be required to provide justification in the form of an examination support document (ESD). According to the new rules, the ESD must include the following:
- a pre-examination search statement;
- an information disclosure statement citing relevant prior art for each claim;
- identification of claim limitations disclosed in the relevant prior art;
- an explanation as to how each of the independent claims is patentable over the
relevant prior art, and
- identification of support for the claims in the specification.
The ESD must be filed prior to the issue of the first substantive examination report. It appears that the USPTO has made the task of preparing an ESD particularly onerous, thus providing a considerable incentive to Applicants to limit the number of claims.
The new claim limitations apply to applications for which a first Official Action (an examiner’s report) is mailed on or after 1 November 2007. These new claim number limitations will impact on PCT applications filed with multiply dependent claims.
However, the USPTO will allow Applicants two months in which to either prepare an ESD in support of the excess claims or, alternatively, to amend the claims to comply with the new claim number limitations. In the case of multiple applications having the same assignee and patentably indistinct claims (common claims), Applicants will be required to join the patentably indistinct claims into a single application. Otherwise the USPTO will effectively treat the multiple applications as one in determining whether the claim limit has been exceeded.
Where pending applications/patents are commonly owned, contain at least one common inventor, have substantial overlapping disclosures and claim a filing or priority date within two months of each other, the USPTO will presume that the applications contain patentably indistinct claims and the Applicant will be required to either provide an explanation as to how the applications contain patentably distinct claims, or to submit appropriate terminal disclaimers (notification in which the Applicant agrees to a reduced patent term).
In light of these significant changes to US patent practice, it is now more critical than ever that patent Applicants clearly identify and discuss with their attorney the commercially relevant embodiments of their inventions to ensure the correct strategic approach is applied in dealings with the USPTO.
Should you require assistance in navigating a course through the USPTO new rules or any further information regarding the changes to US practice, please do not hesitate to contact us.
* It should be noted that divisional applications are often lodged in response to an examiner’s objection that the claims of a patent application relate to more than one invention (“restriction requirement”). These types of divisional applications are not affected by the new rules. The new provisions relate to voluntary divisional applications only – that is, as the name suggests, patent applications voluntarily lodged by the applicant, often as part of a strategic manoeuvre.
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