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« USPTO News: Patent Office to Adjust Fees | Main | New PTO Continuation Rules: Unfair to Biotech? »

August 28, 2007


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. If you would like, pleae post these for responses.

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?

Dear Jason:

Question No. 1 requires the cases to have been filed "in parallel" so that they are all pending at the same time. Since after Nov. 1 you will only get 1 RCE for the entire bunch, yes you should file RCE's now.

A problem you may encounter, though, will be that the claims in ALL these cases may be counted together under the 5/25 rule (unless the cases are all divisionals filed pursuant to a restriction requirement response). I would try to get some Examiner buy-in on at least some of the claims, so that you have a chance of getting some of the claims allowed before November 1 - allowed claims are not counted in the 5/25 calculation.

Questions 2a & 2b) I think the finality of the rejection will ultimately be up to the Examiner, since even before Nov. 1 she will have discretion in determining whether to examine the non-elected claims, rejoin them, etc. You can call her up and see whether she intends to make the restriction final, and then know how may divisionals you can hope to receive.

A big part of adapting the the rules will depend on partnering with the Examiners to handle these sorts of issues. Good luck, and thanks for the comment.

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