New Patent Application Rules Affect Transition to New System
Summary: The U.S. Patent Office issues guidance and revisions to its "claims and continuations" practice rules.
- Revised rule permits filing "one more" continuing application on or after Nov. 1, 2007, without a petition or showing, in certain circumstances.
- For certain CIP applications, depending upon filing date and issuance or not of a first office action on the merits (FAOM), the requirement of 37 C.F.R. 1.78(d)(3) than applicant identify the claim or claims in the CIP for which the subject matter is disclosed in the manner provided by 35 U.S.C. § 112, first paragraph, in the prior-filed application is either waived or postponed until Feb. 1, 2008 (a three-month compliance deadline extension).
- Disclosing the identify of other pending or patented applications is not required for certain applications filed before Nov. 1, 2007, depending on the filing dates and priority filing dates for the other applications. Disclosure is not required for applications filed on or after Nov. 1, 2007, in limited enumerated circumstances.
The complete requirements are found in the guidance document "Clarification of the Transitional Provisional Relating to Continuing Applications and Applications Containing Patentably Indistrinct Claims," which is available here.
