The "Word" on the New Continuation Rules (from the USPTO Webcast) - Part II

    By Kevin E. Noonan --

In an earlier post, Patent Docs provided a synopsis of that portion of the U.S. Patent and Trademark Office's August 23, 2007 webcast regarding the portion of the recently-published revised rules of practice regarding continuation applications.  This article concerns the other major change in patent prosecution caused by the rules, involving restrictions on total claim numbers permitted without imposing a requirement that an applicant file an Examination Support Document.

In the past, the Office has limited its attempts to restrict the number of claims in an application using purely economic coercion, by increasing the cost of filing independent claims in excess of three and total claims in excess of twenty (and providing a surcharge for multiply-dependent claims).  Indeed, a few years ago these efforts led to a proposal that was so burdensome (where applications having fewer than 100 claims could incur fees in excess of ten thousand dollars) that the fee schedule was never implemented.  Like the new rules regarding continuation applications, there is nothing in the statute (35 U.S.C. § 112, ¶ 2) that provides for any limitations in the total number of claims that an applicant can file (and in fairness, the new rules provide no such absolute limits in contravention of the statute).

The incentive this time is a requirement that an applicant wishing to file more than five independent claims or more than 25 total claims (the Office uses the term "5/25") will be required to file an Examination Support Document (ESD; 37 C.F.R. § 1.265).  An ESD must contain:

• A preexamination search statement;
• Listing of references deemed most closely related to the subject matter of each claim;
• Identification of claim limitations disclosed by each reference;
• Detailed explanation of patentability; and
• Showing of support under 35 U.S.C. § 112, ¶ 1.

The preexamination search statement must contain:

• A statement that a preexamination search in compliance with 37 C.F.R. § 1.265(b) was conducted.
• An identification of:
  • The field of search by U.S. class and subclass, the date of the search; and
  • For database searches, the search logic or chemical structure or sequence used as a query, the name of the file(s) searched and the database service, and the date of the search (in the manner set forth in M.P.E.P. § 719.05).

Like current practice in submitting Information Disclosure Statements, the ESD is required to provide U.S. patents and patent application publications; foreign patent documents; and non-patent (e.g., scientific) literature.  Unlike current IDS practice, the references must be discussed with particularity, especially with regard to the relevance of each reference to the claimed invention.  "The ESD must include a detailed explanation that particularly points out how each of the independent claims is patentable over the references cited in the listing of references," as well as explaining why the claims are novel and non-obvious with regard to the references, as well as evidence of support in the specification in compliance with 35 U.S.C. § 112, ¶ 1.

For purposes of calculating the total number of claims directed towards an invention disclosed in the specification, the Office does not take into account withdrawn claims, or patented claims, but will consider all the claims of any co-pending application containing even one claim that is not patentably distinct from a claim in a different application.  And as we previously reported, an applicant is under an affirmative obligation to disclose any related U.S. applications filed within two months of any application being considered prior to examination.  The existence of such a related application raises a rebuttable presumption that there are no patentably distinct inventions between two commonly-owned applications under circumstances where the applications share the same filing date or priority date and there is overlap between the two disclosures.  If the presumption is not rebutted, the Office will count all of the claims of both applications (patentably distinct or not) in computing that the 5/25 status has been violated and an ESD is required.  The 5/25 rule also applies to reissue applications, but not if the patentee does not seek to change the claims either by direct amendment or amendment to the specification that changes the scope of a claim term.

The Office hastens to point our that, when combined with the continuation rules, there is the potential for filing a total of 15 independent and 75 total claims in any original application and two permitted continuations or continuations-in-part; this assumes that each application is granted with substantially all the claims present at filing.  The Office will also not "count" any claims withdrawn from consideration, for example, for filing in a divisional application, and provides suggestions for filing a Suggested Restriction Requirement (SRR) prior to the first Office Action (accompanied by an election of claims to be examined complying with the 5/25 rule) to allow the applicant to obtain a restriction requirement prior to any actions on the merits.  An applicant cannot file an SRR after a restriction requirement has been issued by the Office, but in either event, the claims must be amended to comply with the 5/25 rule.  The Office will not refund excess claim fees paid on the application as filed in which the new provisions require cancellation of excess claims.  The Office is also increasing the stringency with which they will review the status of a claim as being "independent" or "dependent"; for example, a claim reciting a method using a composition from another claim, even though explicitly reciting "the composition of claim X" will be counted as an independent claim.  Also, multiply dependent claims, and claims dependent on them, will each be counted for each claim recited in the pendency terms of the claim.

If the Office neither accepts the applicants' SRR or issues a restriction requirement on its own, then the applicant will have to either file an ESD or cancel claims to comply with the 5/25 rules.  Despite promises made during town hall meetings in the spring of 2006, the Office has not proposed any revisions to the scope of the duty of candor (37 C.F.R. § 1.56) to accommodate the requirements of the examination support document.  Since this document requires an applicant to make a series of affirmative representations that are likely to have a direct bearing on whether an examiner is convinced claims are patentable, the resulting potential for a practitioner being accused of inequitable conduct is immense and should act to change applicant behavior in order to avoid the necessity of filing an ESD.

If an ESD is required by the Office, it must be filed prior to the first Office Action, or the applicant will be required to cancel or amend claims to bring the claims into compliance with the 5/25 limitation in order to avoid the need to file an ESD.  If the applicant has not complied with either provision, the Office will send a notification having a non-extendable, two-month deadline for applications filed (or that entered the national stage) on or after November 1, 2007, requiring that the applicant amend the claims.

Like the continuation rules, these rules will be effective for any application filed on or after November 1, 2007, or that is a national stage application filed on or before November 1, 2007 (without regard to the International Filing Date).  For pending applications, the rules will apply unless there has been a first action on the merits prior to November 1, 2007; this rule was adopted no doubt to prevent applicants from filing additional applications prior to November 1, 2007, as many applicants did when the rules changes relating to adoption of the GATT provisions (the change in U.S. patent term from 17 years from issue to 20 years from earliest filing date) in 1995 or those changes caused by the American Inventors Protection Act (AIPA) in 2000 (providing for U.S. patent applications to be published, and more importantly, for the prosecution file histories to be publicly available after publication) were implemented.

Patent Docs plans to provide additional information and commentary on the new continuation and claims rules in future articles.  We also anticipate posts relating to the consequences of the new rules (and ways to avoid them where possible) given sufficient time to review the rules and contemplate their implications.  For additional information on this and other related topics, please see:

• "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

Comments

[Jason]

As a new patent attorney, (I have been an agent for a few years) I have a few
questions about the new rules that I would like comments on from the patent bar.

1. In a family with multiple after final cases, would it be desirable to
file RCE\'s prior to Nov. 1?

2a. Can you withdraw a traversal?
2b. Is a withdrawal of traversal of a
restriction requirement where election has previously been made effective to
make restriction final, such that under the new rules multiple divisionals are
then permitted in cases without a first office action on the merits yet?