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« Application of the New Continuation Rules to Divisional Applications | Main | The "Word" on the New Continuation Rules (from the USPTO Webcast) - Part II »

August 23, 2007


At this point, it seems likely that:

1) I will not file applications with more than 25 claims

2)I willfile many, smaller applications, being sure that the subject matter in one application is not disclosed in other, related applications, e.g., the A-ring is aryl in one application, the A-ring is heteroaryl in another, etc. (I do a lot of pharmaceutical work, not sure how the EE, ME, CS people will handle this)

3) appeals will become more common

4) patent prosecution related expenses will go up

5) claims of inequitable conduct will go up - if anyone actually characterizes a reference

6) confusion will reign for a long time

7) shoddy office actions will no longer be tolerated

8) the pre-appeal process will be utilized more often

9) paralegals will spend a lot more time making sure IDS's are filed as soon as possible


10) more lawsuits challenging the rules are coming.

Dear Interested:

I agree. As to your point #7, we are preparing a primer on patent examining procedure (more concise than the MPEP) to identify the types of actions that are objectively "shoddy."

Thanks for the comment.

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