USPTO News: New Continuation and Claims Rules Published

    By Donald Zuhn --

Yesterday, the U.S. Patent and Trademark Office published its long-awaited rules changes for continuation application and claims practice.  The 129-page notice, entitled "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications; Final Rule," can be obtained here.  In addition, the USPTO has created a webpage dedicated to the new continuation and claims rules, where the Office provides documents highlighting the rules changes, listing the differences between the final and proposed rule, and containing a section-by-section summary of the rules changes.  In addition, the USPTO webpage contains a PowerPoint presentation and FAQ concerning the rules changes.

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:

• "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