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« Forest Labs., Inc. v. Ivax Pharm., Inc. (Fed. Cir. 2007) | Main | NAPP Opposes New Continuation and Claims Rules »

September 06, 2007


In light of all the uncertainty surrounding whether you would obtain a stated SRR (which brings up all kinds of interesting questions as to what you think about the limitations of your claims) or whether an EDS would even be accepted, I dont understand why you wouldnt just file multiple applications (on the same day of course), if you beleive there is any chance you might have to go through all the above.



Under the new rules, it would probably not be wise to submit multiple applications having the same specification, or at least very similar specifications, on the same day since the effects of Rule 78(f)(2) would kick in (we covered this rule in our report on August 27th). Briefly, that provision of the new rules creates a rebuttable presumption that two applications contain patentably indistinct claims. The effect of such presumption is that each application is considered to (1) be part of the same application family (and thus, fall under the 2 + 1 rule), and (2) contain a number of claims equal to its own claims plus the claims of the other application (and thus, fall under the 5/25 rule). If the applications were divisionals, however, each application would be entitled to its own two continuations and RCE, and to its own 25 claims. Thus, an applicant should usually try to secure a restriction requirement in order to receive the Patent Office's "blessing" that two claim sets are patentably distinct.

Thank you for reading Patent Docs, and for submitting your comment.

Don Zuhn

As a foreign practitioner in the biotech field, I have always thought the current restriction policy of the USPTO Examiners to be unduly harsh to the applicants. As you know, biotech applications very often contain several independent claims (e.g. 1. a DNA molecule, 2. a construct comprising 1, 3. a vector comprising 2, 4. a host cell comprising 3, 5. a protein encoded by the DNA of 1, 6. a method for transforming a host cell, 7. a method for giving a cell a specific characteristic, and so on). Under the current Rules an Examiner would recognise several separate inventions in such a set of claims and protesting against the restriction requirement very often appeared a waste of time.
I now fear that this new Rule change will reverse the position of the Examiners and that they will refuse to issue Restriction requirements (or may be are instructed by PTO management to refuse these). Then the 5/25 rule will apply and the applicant will then loose important claims. Filing two separate applications to start with also does not seem an option, as illustrated in the previous comment.

I wonder if the US patent attorneys also fear this scenario, and if so, whether anyone has a solution how to be able to maintain all the various independent claims?

"The effect of such presumption is that each application is considered to (1) be part of the same application family"

Can anyone cite support for the above statement? Although I have heard the above statement from several practitioners, when I read the definition of a patent family, it doesn't refer to Rule 78(f)(2). Neither does rule 78(f)(2) refer to "patent family" The consequence listed under rule 78(f)(2) is that the Office Action may cancel patently indistinct claims. I expect to receive an office actions removing claims that from the application.

While you might think the basic effect is the same, e.g. you lose some claims, there is a difference. If they the two applications are still seperate patent families, which I think they are, you can add back new claims up to the 5/25 limit in each application. Of course, if those new claims are not patentably distinct over the other application, the office may just cancel them again.


The new rules notice defines an "application family" as "the initial application and its continuation or continuation-in-part applications." Therefore, it is true that multiple applications filed on the same day, which are not continuations (or CIPs) of some earlier filed application, are not members of the same application family as defined under the new rules. However, the Patent Office has designed the new rules such that they prevent this very type of "work around" to the 2+1 rule - at least for applications containing patentably indistinct claims. I should have more properly stated that Rules 78(f)(2) and 75(b)(4) work together to make the strategy proposed by John a waste of filing fees for applications having patentably indistinct claims. For multiple applications containing patentably distinct claims (i.e., applications that would be proper divisionals if filed after a SRR is accepted or an RR is issued), John's strategy might be acceptable, but it is not clear to me whether the Patent Office will treat an argument made in an SRR differently than it would treat the same argument made in a statement under 78(f)(2).

Thank you for reading Patent Docs and for giving me to a chance to clarify my previous response.


I suggest removing the USPTO logo from your blog page, since it caused my confusion that this bog was sponsored by USPTO.


We use graphics to help our readers quickly identify the subject matter of a given post, and a number of readers have commented favorably about our use of graphic elements. In addition, we are not the only blog that uses USPTO-related graphic elements (one need only perform a Google images search for "USPTO seal" to see that such is the case). While we intend to continue incorporating graphics into our posts, we thank you for your suggestion.


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