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September 24, 2007

round 2 - continuation rules review - part one

Continuing last week’s theme (review of the Patent Reform Act of 2007 (pdf): part 1, part 2, part 3, part 4, part 5), we’ll be reviewing the provisions of the USPTO’s new continuation rules (pdf) this week.

This post will cover the changes to continuation and continuation-in-part (CIP) applications and requests for continued examination (RCE’s).  Coming posts will cover new claim limitations and examination support documents (ESD’s), new limitations on related applications, and some suggested strategies for effectively coping with the limitations and requirements of the new rules.

Limitations on Continuations, CIP’s, and RCE’s

These limitations are most easily understood in terms of how they apply to each application family.  An application family begins with a parent application, which is the first-filed nonprovisional application, and may include up to two child applications, which are any later-filed nonprovisional applications claiming the benefit of the filing date of the parent application.  In some rare circumstances, an application family may be entitled to up to three child applications.  See 72 FR 46838–39 (1.78(d)(1)(iv-v)).  Each application family is also limited to one request for continued examination (RCE).

Although an application family may claim the benefit of one or more provisional applications, such provisional applications are not counted as members of the application family, at least for purposes of these limitations.  However, each of the child applications may be either a continuation or continuation-in-part application.

But what if further continuations or RCE’s are needed?  Well, additional continuations, CIP’s, and RCE’s may be allowed where, by petition, the applicant shows “cause” as to why an additional filing should be permitted.  “Cause” is a relatively high standard, however, and may be shown where an “amendment, argument, or evidence could not have been submitted during the prosecution of the prior filed application” (emphasis added).

The good news is that a divisional application filed to comply with a non-traversed restriction requirement begins a new application family, that is, becomes a new parent application entitled to two of its own child applications and one RCE, of right.  Additionally, the new rules provide for the filing of a suggested restriction requirement, prior to a first office action or restriction requirement.

When do these rules go into effect?  The limitatons on continuations, CIP’s, and RCE’s apply to all applications filed on or after November 1, 2007.  However, that doesn’t mean that nothing should be done before that date.  Keep reading over the next week, as some of the other provisions apply to applications filed before 11/1/2007.

However, there is an exception to the continuation limitations that applies to applications only claiming the benefit of applications filed prior to August 21, 2007.  The applicability data in the rules states that such applications will be exempted from the continuation limitations if: the application claims benefit of only nonprovisional applications filed before 8/21/2007, and no other nonprovisional application is filed on or after 8/21/2007 that also claims the benefit of such other prior filed applications.

Interestingly, the continuation limitations only apply to applications filed after 11/1/2007, so this exception should not be necessary for applications filed between 8/21 and 11/1/2007.  However, other provisions in the new rules apply to applications filed before 11/1/2007, so compliance with the continuation limitations is not the only thing to be considered . . .

Posted by Eagle H. Robinson at 05:16 PM.
Permalink: round 2 - continuation rules review - part one
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