An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents

    By Donald Zuhn --

Last Tuesday, the U.S. Patent and Trademark Office published new rules concerning continuation and claims practice that will undoubtedly have a profound effect on the way patent attorneys and agents prosecute applications before the Patent Office.  In view of the 128-page Federal Register notice regarding the new rules, the Patent Office's nearly two hour webcast last Thursday (and accompanying 109-page presentation), and the Office's 45-page list of Frequently Asked Questions, Patent Docs believes it may be helpful to examine the rules piece-by-piece in an attempt to identify areas where patent attorneys and agents will need to modify their patent prosecution practice.

37 C.F.R. § 1.78(f):

The prior version of 37 C.F.R. § 1.78 contained subparts (a) to (c).  Among the new subparts added to Rule 78 is subpart (f), which is itself divided into three parts.  Subpart (f)(1) requires applicants prosecuting an application to identify other commonly owned applications or patents having (a) an inventor in common with the application being prosecuted, and (b) a claimed filing or priority date within two months of the claimed filing or priority date of the application being prosecuted.

With respect to the second requirement, applicants must be cognizant of the actual filing date of both the application being prosecuted and the commonly owned applications and patents as well as the filing date of each application to which the application being prosecuted and the commonly owned applications and patents claim a benefit or priority.  The Patent Office provides an example in the Federal Register notice in which an application having an actual filing date of December 1, 2006 claims the benefit of a nonprovisional application filed on June 1, 2004 and a foreign application filed on June 1, 2003.  For purposes of Rule 78(f), the claimed filing and priority dates for this application would be December 1, 2006, June 1, 2004, and June 1, 2003.

Applicants are required to make the identification under Rule 78(f)(1) by the later of (a) four months from the filing date or the date on which national stage commenced for the application being prosecuted or (b) two months from the mailing date of the initial filing receipt in the application that must be identified.  The requirements of Rule 78(f)(1) apply to all applications pending on or after November 1, 2007, and for pending applications filed before November 1, 2007, applicants must comply with the identification requirements of Rule 78(f)(1) by the later of the above deadlines or February 1, 2008.  The identification must be made in a separate paper (a form entitled "Listing of Commonly Owned Applications and Patents" will be made available by the USPTO in October), and cannot be simply added to the specification (like the cross-reference to related applications).

Subpart (f)(2) creates a rebuttable presumption that an application being prosecuted and other commonly owned application or patent contain at least one patentably indistinct claim when the application being prosecuted and the commonly owned application or patent have (a) an inventor in common, (b) substantial overlapping disclosure, and (c) the same claimed filing or priority date.  According to Rule 78(f)(2)(i)(D), "[s]ubstantial overlapping disclosure exists if the other pending or patented nonprovisional application has written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the nonprovisional application [i.e., the application being prosecuted]."

In situations where the rebuttable presumption created under Rule 78(f)(2) arises, applicants must either rebut the presumption or file a terminal disclaimer, as described in (f)(2)(ii), by the later of (a) four months from the filing date or the date on which national stage commenced for the application being prosecuted, (b) two months from the mailing date of the initial filing receipt in the application that must be identified, or (c) the date on which a claim that is not patentably distinct from a claim in the commonly owned application or patent is presented.  As with Rule 78(f)(1), the requirements of (f)(2) apply to all applications pending on or after November 1, 2007, and for pending applications filed before November 1, 2007, applicants must comply with the requirements of Rule 78(f)(2) by the later of the above deadlines or February 1, 2008.

As with many of the Patent Office's new rules, the Office attempts to improve the effectiveness and efficiency of patent examination by shifting more burdens onto the applicant.  For example, the portion of Rule 78(f)(2) which requires applicants to submit a terminal disclaimer also requires them to explain "why there are two or more pending nonprovisional applications . . . which contain patentably indistinct claims."  In its Federal Register notice, the Patent Office squarely places the "blame" on applicants for any future double patenting rejections, stating that:

when an applicant files multiple applications that are substantially the same, the applicant is responsible for assisting the Office in resolving potential double patenting situations, rather than taking no action until faced with a double patenting rejection.  Thus, if an Office action must include a double patenting rejection (either statutory or obviousness-type double patenting), it is because the applicant has not met his or her responsibility to resolve the double patenting situation.

Under subpart (f)(3), in the absence of an applicant providing good and sufficient reason for the existence of two or more pending nonprovisional applications satisfying the requirements of Rule 78(f)(2)(i), the Patent Office may require the elimination of patentably indistinct claims from all but one of the applications.

In response to Comment 109 of the Federal Register notice, the Patent Office acknowledges that the failure to identify commonly owned applications and patents by one of the deadlines set forth in Rule 78(f)(1) could be inadvertent.  In such situations, the Office advises that an applicant "should submit the identification to the Office as soon as practical."  However, the Office reminds practitioners that it "may also refer any registered practitioner who repeatedly fails to comply with the rule requirements to the Office of Enrollment and Discipline for appropriate action," and "strongly encourage[s]" that practitioners "revise their practices to ensure timely submissions of the required identification."

To comply with the new identification requirement and rebuttable presumption created by Rule 78(f)(1) and (2), a practitioner will need to know about the existence, content, and priority claims of all commonly owned applications or patents having an inventor in common with the application the practitioner is prosecuting.  Under new Rule 78(f), practitioners who prosecute applications for larger assignees that employ the services of multiple outside counsel will have to request that the assignee provide such information.  For example, if Outside Counsel A is prosecuting Application 1 having named Inventor X and Outside Counsel B is prosecuting commonly owned Application 2 having named Inventor X, Outside Counsel A will need to know about the existence, content, and priority claims of Application 2 and Outside Counsel B will need to know about the existence, content, and priority claims of Application 1 in order for both outside counsel to comply with the requirements of Rule 78(f).

For additional information on this and other related topics, please see:

• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part II," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part I," August 23, 2007
• "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

Text of new Rule 78(f):

(f) Applications and patents naming at least one inventor in common.

(1)(i) The applicant in a nonprovisional application that has not been allowed (§ 1.311) must identify by application number (i.e., series code and serial number) and patent number (if applicable) each other pending or patented nonprovisional application, in a separate paper, for which the following conditions are met:

(A) The nonprovisional application has a filing date that is the same as or within two months of the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
(B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application; and
(C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application.

(ii) The identification of such one or more other pending or patented nonprovisional applications if required by paragraph (f)(1)(i) of this section must be submitted within the later of:

(A) Four months from the actual filing date in a nonprovisional application filed under 35 U.S.C. 111(a);
(B) Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371; or
(C) Two months from the mailing date of the initial filing receipt in such other nonprovisional application for which identification is required by paragraph (f)(1)(i) of this section.

(2)(i) A rebuttable presumption shall exist that a nonprovisional application contains at least one claim that is not patentably distinct from at least one of the claims in another pending or patented nonprovisional application if the following conditions are met:

(A) The nonprovisional application has a filing date that is the same as the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
(B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application;
(C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application; and
(D) The nonprovisional application and the other pending or patented nonprovisional application contain substantial overlapping disclosure.  Substantial overlapping disclosure exists if the other pending or patented nonprovisional application has written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the nonprovisional application.

(ii) If the conditions specified in paragraph (f)(2)(i) of this section exist, the applicant in the nonprovisional application must, unless the nonprovisional application has been allowed (§ 1.311), take one of the following actions within the time period specified in paragraph (f)(2)(iii) of this section:

(A) Rebut this presumption by explaining how the application contains only claims that are patentably distinct from the claims in each of such other pending nonprovisional applications or patents; or
(B) Submit a terminal disclaimer in accordance with § 1.321(c). In addition, where one or more other pending nonprovisional applications have been identified, the applicant must explain why there are two or more pending nonprovisional applications naming at least one inventor in common and owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims.

(iii) If the conditions specified in paragraph (f)(2)(i) of this section exist, the applicant in the nonprovisional application must, unless the nonprovisional application has been allowed (§ 1.311), take one of the actions specified in paragraph (f)(2)(ii) of this section within the later of:

(A) Four months from the actual filing date of a nonprovisional application filed under 35 U.S.C. 111(a);
(B) Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371;
(C) The date on which a claim that is not patentably distinct from at least one of the claims in the one or more other pending or patented nonprovisional applications is presented; or
(D) Two months from the mailing date of the initial filing receipt in the one or more other pending or patented nonprovisional applications.

(3) In the absence of good and sufficient reason for there being two or more pending nonprovisional applications owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims, the Office may require elimination of the patentably indistinct claims from all but one of the applications.

Comments

[Rick]

With regard to 1.78 Subpart (f)(1) requiring applicants prosecuting "an application to identify other commonly owned applications or patents having (a) an inventor in common with the application being prosecuted, and (b) a claimed filing or priority date within two months of the claimed filing or priority date of the application being prosecuted". Would this include converted and expired provisional applications and abandoned applications?