Countdown to the New PTO Patent Rules - Part 1 of 2
Although there are 45 days remaining before the new U.S. Patent & Trademark Office (PTO) patent rules take effect November 1, 2007, the number of visitors to this blog looking for information about the rules suggests that patent applicants and their representatives are actively looking for the best ways to comply with the rules today. That’s not a bad idea, considering how the new rules will substantially limit how patent applications are prosecuted at the PTO, and may require applicants to modify their patent filing strategies for both prospective as well as pending patent applications. According to Peter Weissman, a Partner at Blank Rome LLP, applicants should begin considering strategies for complying with the new rules. In particular, Peter says, given the limited number of continuations, continuation-in-part (CIP), and Request for Continued Examination (RCE) applications allowed under the new rules, applicants should:
- Consider relying more on interviews with Examiners, particularly personal interviews, which tend to substantially advance prosecution and reduce the need for filing continuations and RCEs;
- Carefully review all claims, including dependent claims, after a first action on the merits (FAOM) to ensure that the case is in condition for an appeal; all “formal” matters should be resolved at that stage as well;
- Give appeals and petitions greater consideration, because a successful appeal or petition may avoid the necessity of filing a continuation or RCE. An appeal may be especially prudent, for instance, to fight for broad rejected claims rather than taking narrower allowed claims and continuing prosecution of the broader claims in a continuation or RCE. Petition to remove the finality of Office Actions where possible. File a petition with the first requested RCE to further substantiate the need for any further RCEs;
- Consider filing “divisional” applications as soon as the PTO issues a restriction requirement, in the event the PTO later reconsiders the restriction;
- Consider filing provisional applications, because provisionals are not counted as a continuation, CIP or RCE, and they also give additional time to conduct a search and to perfect the claims;
- Consider deferring examination under Rule 1.103(d);
- Be cognizant of the duty of disclosure, which requires that all material information be submitted to the PTO. Once an RCE and two continuation applications have been filed, the applicant will not be permitted to file another RCE or continuation application to submit information which could have been submitted earlier. Accordingly, it is even more important now that applicants notify their patent attorney of prior art as soon as they become aware of it;
- Consider describing patentably “distinct” subject matter in separate applications rather than combining common subject matter in a single application, as this could support an argument that the claims are truly patentably distinct;
- Consider describing various embodiments of the invention in a manner that supports those embodiments as patentably “distinct” and deserving of separate applications;
- Consider waiting more than two months between filing applications containing at least one similar inventor to avoid the presumption that claims are patentably indistinct;
- Consider filing continuations and CIPs in a serial fashion, as parallel continuations and CIPs will be subject to the requirement to combine patentably indistinct claims.
Comments:
- Check back tomorrow for part 2 of this post
- Final Rule: "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications" 72 FR 46716 (Aug. 21, 2007)
- Thanks to Peter Weissman for granting permission to use his article"Patent Prosecution Considerations under the New U.S. Patent & Trademark Office Rules," which may be found here
You suggest filing patentably distinct inventions in separate applications. However, if you do this, then you must also file papers to argue the distinctness. Wouldn't it be better to file multiple claim sets and an SRR?