The two main rules changes are:
- A patent is limited to 5 independent claims and/or 25 total claims by right. If you exceed this limit you must file an "Examination Support Document" justifying the excess claims. If you have co-pending applications with even one "patentably indistinguishable claim", then all the claims in all the applications count toward the 5/25 limit. The goal of this rule is to eliminate the virtually unparsable claim sets in some patents.
You must submit a list of all commonly owned applications or patents that have:
–An inventor in common with the application; and
–A claimed filing or priority date within two months of the claimed filing or priority date of the application.
Presumably the examiner will look for applications with a patentably indistinguishable claim. - An inventor is limited to only 2 continuing applications (i.e., a divisional, a continuation, or a continuation in part) and 1 request for continued examination. The goal here is to preclude effectively infinite pendency (See Lemelson)
Whether you agree with the PTO's goals, whether you think these rules will achieve those goals, the one thing you should probably disagree with is the application of these new rules to patent applications that have been caught in the PTO's molasses-in-January examination speed.
If you have an application on file that has more than the 5/25 claims and has not received its FAOM, you might want to take action now. Have your attorney check with the examiner. After the 11/1/07 deadline you will have to withdraw claims, file an ESD, or try to get it divided into several separate applications (in which case you can have 15/75 total claims).
Good Luck
1 comment:
Bruce - Your commentary is clear, and may help many people see what's going to happen. However, the continuation limitations are going to be no more than three total continuations of any PTO-imposed divisional, of which only one can be a RCE. (The others can be "plain" continuations, or CIPs (continuation in part). If the applicatin is pending, and has had previous continuations (including CIPs and CEs), you apparently can file a continuation before Nov. 1 and get the ability to file two more continuations in the case, including one RCE. EACH divisional gets 3 continuations, if the PTO imposes it, because the divisional is legally a separate and independent invention.
The limitation on RCEs is interesting, because it isn't cost-effective for the PTO (or the applicant) - simply buying two more tries with the examiner is the most cost-efective way to continue a case - but will serve to push pending cases into the future for disposal, and thereby free up examiner time to consider new cases. Presumably the PTO thinks that at least pushing cases into the future will reduce some of the current pressure of the growing backlog. It also may be true that a significant number of cases are abandoned at the first office action, making accelerated examination an effective way to reduce the backlog. (If so, it might eventually help reduce the total backlog.)
But - this works (for the PTO) only because when a case is re-filed as a CON, rather than an RCE, it goes to the bottom of a different stack, and it won't be back with comments in the current 6 to 8 month period, but after a longer period - maybe years. Is this good or bad? Depends on your strategy, but the inventor will spend at least a little more on his patent counsel, simply because counsel will have to re-boot on his case, and will possibly have to make significant modifications in the claims because of the new rules.
- Francis Kirkpatrick
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