An Analysis of the New Rules: 37 C.F.R. § 1.75(b): 5/25 Limit on Claims

    By Donald Zuhn --

On August 21, 2007, 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 on August 23, 2007 (and the webcast's 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. § 1.75(b):

The prior version of 37 C.F.R. § 1.75(b) simply reads as follows:

(b)  More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied.

The new version of 37 C.F.R. § 1.75(b), which provides a revised practice for the examination of claims in an application, expands on the simple requirements of the prior version of this subsection by some 522 words and five new subparts.  The provision that has received the most attention is § 1.75(b)(1), which limits the number of claims in any one application - in the absence of an examination support document (ESD) - to no more than five independent claims and no more than twenty-five total claims.

The introductory text of Rule 75(b) sets forth some standard rules regarding dependent claims.  In particular, this portion of the rule allows an applicant to present one or more claims in dependent form, wherein the dependent claim is required to incorporate by reference all the limitations of the claim to which it refers and to specify a further limitation of the subject matter of the previous claim.

Rule 75(b)(1) states that an applicant must file an examination support document (ESD) complying with § 1.265 before the issuance of a first Office action on the merits when an application contains (or is amended to contain) more than five independent claims or more than twenty-five total claims (5/25 rule).

Rule 75(b)(2) states that the following claims will be treated as independent claims when determining whether an application complies with the 5/25 rule (as well as for fee calculation purposes): (a) a claim that refers to another claim but does not incorporate by reference all the limitations of that claim, and (b) a claim that refers to a claim of a different statutory class of invention.

Rule 75(b)(3) states that an applicant will be notified when an application contravenes the 5/25 rule of § 1.75(b)(1) and an ESD has not been filed.  When the non-compliance with the 5/25 rule appears to be inadvertent, a two-month, nonextendable deadline will be set for filing an ESD or reducing the number of claims (for applications filed on or after November 1, 2007; applications filed before November 1, 2007 will get a two-month deadline extendable to six months).  However, when an applicant fails to submit an ESD before the issuance of a first Office action on the merits, the applicant will only be permitted to reduce the number of claims to comply with the 5/25 rule.

Rule 75(b)(4) states that when two commonly owned applications contain a patentably indistinct claim, all of the claims in each application - and not just the patentably indistinct claim - will be treated as being present in the other application for purposes of determining whether the applications comply with the 5/25 rule.  Rule 75(b)(4) applies to any copending nonprovisional applications containing patentably indistinct claims - including applications having a continuity relationship - but not in issued patents containing patentably indistinct claims.

In its final rule notice, the Patent Office notes that Rule 75(b)(4) is intended "to preclude an applicant from submitting multiple applications to the same subject matter (with claims that are patentably indistinct), each with five or fewer independent claims or twenty-five or fewer total claims, for the purpose of avoiding the requirement to submit an examination support document."  More importantly, the final rule notice also states that:

An applicant may present up to five independent claims and twenty-five total claims in an initial application and each continuing application, provided that continuing applications that contain patentably indistinct claims are not prosecuted in parallel with the initial application or each other.  Thus, an applicant may present up to fifteen independent claims and seventy-five total claims to a single invention via an initial application and two continuing applications that are filed and prosecuted serially.

Needless to say, the requirements of Rule 75(b)(4) beg the question of how an applicant might practically prosecute two continuations in parallel as depicted, for example, on the left half of slide 20 of the Patent Office's PowerPoint presentation on the Claims and Continuations Final Rule.

Because 35 U.S.C. § 120 requires that a prior application be pending when a continuing application is filed, and Rule 75(b)(4) also applies to copending nonprovisional applications having a continuity relationship, the Patent Office has determined that an application will be treated as no longer pending for the purposes of § 1.75(b)(4) if (1) a notice of allowance is issued (unless the application is withdrawn from issue), (2) the Office recognizes the application is abandoned, (3) a notice of appeal to Federal Circuit is filed (unless the appeal is terminated), or (4) a civil action under 35 U.S.C. §§ 145 or 146 is commenced (unless the civil action is terminated).

Because divisional applications by definition do not contain patentably indistinct claims, such applications fall outside of Rule 75(b)(4).  Continuations of such divisionals, however, are not safe from the requirements of this rule.

Rule 75(b)(5) states that claims withdrawn from consideration as being drawn to a non-elected invention (unless subsequently reinstated or rejoined) will not be taken into account in determining whether an application complies with the 5/25 rule.  Such claims will also not be considered with respect to the requirements of Rule 75(b)(4).  However, if such claims are later reinstated or rejoined, the claims will be considered with respect to the requirements of both § 1.75(b)(1) and (4).  The claims must be withdrawn as the result of an Office-initiated requirement under § 1.142, 1.146, or 1.499 (regardless of whether the election is with or without traverse), or as the result of the acceptance of a suggested restriction requirement under § 1.142(c).

The requirements of Rule 75(b) apply to all applications filed or entering national stage on or after November 1, 2007 and all applications for which an Office action on the merits has not been issued before November 1, 2007.  If the requirements of Rule 75(b) were not enough, noncompliance with this rule will also have Patent Term Adjustment ramifications.

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1): Claims for Benefit of Prior-Filed Applications," September 3, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents," August 27, 2007

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

• "Inventor Sues PTO to Prevent New Continuation Rules from Taking Effect," August 30, 2007
• "Patent Office Provides Recorded Web-Based Discussion of New Rules," August 30, 2007
• "New PTO Continuation Rules: Unfair to Biotech?" August 29, 2007
• "Proposed Agenda for September 12, 2007 Biotechnology/ Chemical/Pharmaceutical Art Group Meeting," August 24, 2007
• "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 75(b):

(b) More than one claim may be presented provided they differ substantially from each other and are not unduly multiplied. One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. A dependent claim must contain a reference to a claim previously set forth in the same application, incorporate by reference all the limitations of the previous claim to which such dependent claim refers, and specify a further limitation of the subject matter of the previous claim.

(1) An applicant must file an examination support document in compliance with § 1.265 that covers each claim (whether in independent or dependent form) before the issuance of a first Office action on the merits of the application if the application contains or is amended to contain more than five independent claims or more than twenty-five total claims. An application may not contain or be amended to contain more than five independent claims or more than twenty-five total claims if an examination support document in compliance with § 1.265 has not been filed before the issuance of a first Office action on the merits of the application.
(2) A claim that refers to another claim but does not incorporate by reference all of the limitations of the claim to which such claim refers will be treated as an independent claim for fee calculation purposes under § 1.16 (or § 1.492) and for purposes of paragraph (b) of this section. A claim that refers to a claim of a different statutory class of invention will also be treated as an independent claim for fee calculation purposes under § 1.16 (or § 1.492) and for purposes of paragraph (b) of this section.
(3) The applicant will be notified if the application contains or is amended to contain more than five independent claims or more than twenty-five total claims but the applicant has not complied with the requirements set forth in paragraph (b)(1) or (b)(4) of this section. If the non-compliance appears to have been inadvertent, the notice will set a two-month time period that is not extendable under § 1.136(a) within which, to avoid abandonment of the application, the applicant must comply with the requirements set forth in paragraph (b) of this section.
(4) If a nonprovisional application contains at least one claim that is patentably indistinct from at least one claim in one or more other pending nonprovisional applications, and if such one or more other nonprovisional applications and the first nonprovisional application are owned by the same person, or are subject to an obligation of assignment to the same person, the Office will treat the claims (whether in independent or dependent form) in the first nonprovisional application and in each of such other pending nonprovisional applications as present in each of the nonprovisional applications for purposes of paragraph (b) of this section.
(5) Claims withdrawn from consideration under §§ 1.141 through 1.146 or § 1.499 as drawn to a nonelected invention or inventions will not, unless they are reinstated or rejoined, be taken into account in determining whether an application exceeds the five independent claim and twenty-five total claim threshold set forth in paragraphs (b)(1), (b)(3), and (b)(4) of this section.

Comments

[Tom]

Rule 75(b) prevents one from taking allowed dependent claims.

For example, to avoid filing and ESD and to be considerate of the over burdened PTO, an applicant files an original application with only 3 independent claims and 17 dependent claims which depend directly from respective ones of the independent claims.

After a few turns of the crank all of the dependent claims are allowable, but the 3 independent claims are finally rejected.

To avoid appeal, the applicant is willing to accept the 17 allowable claims and files an amendment to place all 17 claim in independent form.

But no! Rule 75(b) forbids more than 5 independent claims, since no ESD was filed before the first office action!

How is this fair? How is this an improvement? How does this lead to "clarity"? How does the inventor get the protection to which even the Examiner believes he is entitled?

[NelsonC]

Can anyone clarify 1.75(b for the following situation? The application was filed before 11/1/07, the number of claims exceeds the 5/25 limit, a first office action on the merits HAS been issued, and no ESD has been filed (could be a very common situation). Will the Office send out a 1.75(b)(3) notice? If so, will the fact that the FAOM has been issued count as an "inadvertent" reason for not filing an ESD? If no notice, does the applicant have any affirmative duty?

[Donald Zuhn]

NelsonC:

According to 72 Fed. Reg. 46,716, if a first Office action on the merits has been issued, Rule 75 does not apply. Therefore, there is no need to file an ESD.

Don