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September 28, 2007
What, Me Worry? Continuation and Claim Rules Summary, Part Cuatro
Your head is probably still spinning from the USPTO’s Aug. 21, 2007 Final Continuation and Claims Rules, and there is no doubt that panic, discomfort, and long hours have set in for most, if not all, patent practitioners. Have no fear! There is no need to worry—this post identifies the critical dates 
and steps you can take to ensure a smooth transition into compliance with the new rules. Alright fellow intellectual property enthusiasts, take a deep breath, buckle your safety belts, and enjoy a delectable excursion through the realm of patent reform.
There are essentially two critical dates that all practitioners should be aware of: November 1, 2007 and February 1, 2008. Each date is detailed below.
November 1, 2007
November 1 marks the official compliance date of the new rules, which means that each application filed thereafter is subject to the “2+1 Rule” (two continuations plus one RCE). Below is a list of things to consider with regards to the November 1 deadline:
- Determine if an RCE has already been filed on a pending application that has been issued a final rejection. If the answer is yes, consider whether an additional RCE needs to be filed on the application. As long as the RCE is filed by November 1, it does not count against the “2+1” limitation.
- As far as continuation filing is concerned, there is no real rush to file all of your continuations before November 1. There is, however, one exception. If you have a family of co-pending applications that claim priority back to the same date and you intend on filing continuations on more than one of these applications, you must do so before November 1. After November 1, only one continuation application will be allowed for the whole family.
February 1, 2008
By February 1, 2008, every practitioner should comb over all of their patent portfolios to identify applications that are commonly owned, have at least one inventor in common, and have a filing date or priority date within two months of the filing date or priority date of the other application. As previously pointed out (click here), the new rules impose a rebuttable presumption that all applications with overlapping disclosures and a common priority date contain patentably indistinct claims. Thus, it is imperative to identify these overlapping, commonly owned applications to develop a method for rebutting the patentably indistinct presumption (either by stating a reason why the claims are patentably distinct or by filing a terminal disclaimer).
Aside from the two critical dates above, practitioners should evaluate all pending, unexamined applications that have yet to receive an office action from the USPTO by November 1. Why you ask? Well, these applications are subject to the “5/25 Rule.” As such, practitioners should look to each application to determine whether the claims need to be amended, cancelled, or whether a Suggested Restriction Requirement (SRR) needs to be filed to comply with the “5/25 Rule.”
We will keep you posted on any new developments regarding the new claims and continuations rules within the USPTO. As always, any questions or comments on any of our posts are appreciated.
Be sure to tune in next week as PHOSITA hosts the “1st Annual DCR Patent Poetry Throwdown!”
Posted by Michael Schade at 02:07 PM.
Permalink: What, Me Worry? Continuation and Claim Rules Summary, Part Cuatro
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Can you please reference the portion of the rules you are referring to in the statement quoted below? Thanks!
James
"As far as continuation filing is concerned, there is no real rush to file all of your continuations before November 1. There is, however, one exception. If you have a family of co-pending applications that claim priority back to the same date and you intend on filing continuations on more than one of these applications, you must do so before November 1. After November 1, only one continuation application will be allowed for the whole family."
Posted by: JDB at September 28, 2007 06:11 PM
James,
First, thank you very much for the comment and question. Now to answer your question.
New Rule 1.78(d)(1) governs continuation applications. The rules state that the changes to 27 C.F.R. 1.78(d)(1) (limit on continuations) are "applicable only to any application, including any continuing application filed under 35 U.S.C. 111(a) on or after November 1, 2007." Thus, the "2+1" rule is only applicable to applications filed after November 1, 2007. See 72 FR 46716.
The exception to the rule can be found at 72 FR 46717, which states:
"With respect to applications that claim the benefit under 35 U.S.C. 120, 121, or 365(c) only of nonprovisional applications or international applications filed before August 21, 2007: an application is not required to meet the requirements set forth in 37 CFR 1.78(d)(1) if: (1) The application claims the benefit under 35 U.S.C. 120, 121, or 365(c) only of nonprovisional applications filed before August 21, 2007 or applications entering the national stage after compliance with 35 U.S.C. 371 before August 21, 2007; and (2) there is no other application filed on or after August 21, 2007 that also claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such prior-filed nonprovisional applications or international applications."
The new rules go into effect on November 1, 2007. Consequently, the exception goes into effect November 1. The exception applies as long as the application claims priority to an application filed before August 21, 2007 AND there is no other application filed on or after August 21, 2007 that claims the same priority date as the prior-filed nonprovisional application. Mutliple co-pending application claiming a common priority date fall into this latter categorty Thus, between now and November 1, you may want to file continuation applications on any co-pending applications filed before August 21, 2007 that claim the same priority date.
But beware! 37 CFR 1.75 mandates that nonprovisional applications filed before November 1, 2007, in which a first office action has not been mailed by November 1, 2007, are subject to the 5/25 claims limitation. See 72 FR 46716.
Hope this helps.
Michael Schade
Posted by: Michael Schade at October 1, 2007 11:41 AM
"27 C.F.R. 1.78(d)(1)" in the 2nd paragraph should be changed to "37 C.F.R. 1.78(d)(1)." My apologies for the mistake.
Posted by: Michael Schade at October 1, 2007 01:31 PM
