Application of the New Continuation Rules to Divisional Applications

    By Kevin E. Noonan --

The recently-published revised rules of practice promulgated by the U.S. Patent and Trademark Office differ in significant ways from the proposed rules published for comment on January 3, 2006.  Some of these differences relate to the rules for filing divisional applications; these are a form of "continuing" application filed in response to a Patent Office determination that the claims of an application encompass more than one patentably-distinct invention (pursuant to the provisions of 35 U.S.C. § 121).

As originally proposed, the rules would have required all divisional applications to be filed during the pendency of the originally-filed application (the claims of which would be subject to the restriction requirement).  Additional divisional applications could be filed thereafter, but would not be entitled to the original filing date.  Instead, the proposed rules would have limited a priority claim for these "later-filed" divisionals to be the filing date of any pending divisional application.  Since a divisional application by definition contains claims that were originally filed in the earliest-filed application, and the specification is also identical, these proposed rules would have forced applicants to file all divisional applications prior to patent grant (or application abandonment) of the originally-filed application.  The earlier practice, of filing divisional applications sequentially, although not explicitly prohibited, would be disfavored based on publication of most U.S. patent applications plus the statutory bar provisions (publication) of 35 U.S.C. § 102(b).

This result would have exercised a great financial burden on universities and small entities by forcing them to incur all divisional filing fees substantially at the same time.  It also would have precluded applicants, especially biotechnology applicants, from evaluating the commercial development of their technology and making patenting decisions based on their commercial and investment realities.

Fortunately, the final rules have eliminated the proposed requirement that all divisional applications be filed during the pendency of the originally-filed application (as long as the copendency requirement of 35 U.S.C. § 120 is met).  Moreover, each divisional application is entitled to two continuation or continuation-in-part applications (to be discussed in future Patent Docs posts).  However, as with other "continuing" applications, divisional applications will be limited to only one request for continuing examination for each divisional "family" (which the rules indicate encompass all divisional applications stemming from an originally-filed application).  Although the definition of "family" in this regard seems confusing as written, the PowerPoint presentation materials supplied in connection with the Patent and Trademark Office webcast on the new rules (see "New Continuation and Claims Rules Published") appear to indicate that an RCE filing will be available for each divisional filed (provided, of course, that the divisional resulted from a Patent Office-imposed restriction requirement).  Also initially unclear, the new rules permit two continuation applications, but not two continuations-in-part, from each divisional application.  These provisions are as of right; additional continuation applications or requests for continuing examination are available for divisional applications, like all other applications, upon petition and a showing of good cause for the additional application/request.

The right to file a divisional application is limited to "claims to a non-elected invention that has not been examined if the application was subject to a requirement for restriction."  So-called "voluntary" divisional applications (where the claims have been examined and are not subject to a restriction requirement) are to be treated as a continuation application.  The divisional application provisions are also abrogated in instances where the Office rejoins restricted claims (for example, where the applicant elects to pursue composition of matter claims and withdraws method of making or use claims).  Rejoinder would vitiate the basis for filing a divisional in such circumstances; this rule suggests that divisional application filings in this instance may best be delayed until the possibility of rejoinder has been exercised or withheld.  Any "divisional" applications that have been filed before this determination would thus be "continuation" applications, subject to the other provisions of the final rules.  The Office also recommends that prosecution of generic claims be pursued to completion in the originally-filed application and that divisional applications relating to species be forestalled until the patentability status of the generic claims has been determined.

With regard to limitations on the number of claims that will be examined, applicants can prosecute divisional applications "in parallel" (i.e., at the same time) "without the claims in the divisional application being taken into account in determining whether the initial application or its continuation or continuation-in-part applications exceed the five independent claim or twenty-five total claim threshold for invoking the examination support document requirement."  These provisions do not apply to instances where claims subject to restriction are subsequently rejoined, suggesting that in these instances claims be crafted with these provisions in mind.

Revised Section 37 C.F.R. § 1.78(a)(2) defines a "divisional application'' as a continuing application that discloses and claims only an invention or inventions that were disclosed and claimed in a prior-filed application, but were subject to a requirement to comply with the requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. § 121 in the prior-filed application, and were not elected for examination and were not examined in any prior-filed application.

Patent Docs plans to provide additional commentary regarding the new continuation and claims rules and their impact on biotech/pharma patent prosecution in the coming days and weeks.  For additional information on this and other related topics, please see:

• "New Continuation and Claims Rules Published," August 22, 2007
• "More on M.P.E.P. § 710.06," August 20, 2007
• "Patent Office to Hold Webcast on New Claim and Continuation Rules on August 23, 2007," August 20, 2007
• "Patent Office Announces that New Continuation and Claims Rules Will Be Published . . . Tomorrow," August 20, 2007
• "Procuring Patent Protection from the Present USPTO," August 15, 2007
• "New Continuation and Claims Rules to Be Published in Late Summer," July 25, 2007
• "They Just Don't Get It - 'Patent Reform' at the USPTO," April 11, 2007
• "Patent Applicants Beware: The Rules Are Changing (Again)" Part 1 and Part 2, November 6, 2006

Comments

[David J. French]

David French writes:

".. a "divisional application'' ..... discloses and claims only an invention or inventions that were disclosed and claimed in a prior-filed application,..."

But see:

"35 U.S.C. 120 Benefit of earlier filing date in the United States.
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application."

Is there any doubt that, in order to create the right to file a divisional, it is sufficient to insert a claim to the distinctive invention after filing but before a final office action has issued?

Or must claims to a distinctive invention have been inserted before the examiner issues an election requirement?

This is a very important distinction.

[Kevin E. Noonan]

Dear David:

Especially in light of the new rules, I think it is important to have a PTO determination that the invention encompassed by the claims in your divisional are patentably-distinct, and that the only way to be certain of that is to have the Office make the determination by issuing a restriction requirement. Just as an Examiner cannot make you file a Terminal Disclaimer over a related case if two cases are related by one being a divisional of the other, I think it advisable to have the PTO's imprimatur on the "patentably distinct" question. Using your suggestion, I suspect the Office would term this a "voluntary divisional" and deprive you of the benefit of a divisional rather than a continuation filing.

So I would be sure to have all the claims there initially, and I would also file a suggestion for restriction requirement paper just in case.

Thanks for the comment.