An Analysis of the New Rules: 37 C.F.R. §§ 1.78(d)(1) and 1.114: Streamlined Examination

    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. §§ 1.78(d)(1) and 1.114:

As discussed in our earlier reports on 37 C.F.R. §§ 1.78(d)(1) and 1.114, the new continuation and claims rules establish a "2 + 1" rule, which allows an applicant to file two continuation or continuation-in-part (CIP) applications and only one request for continued examination (RCE) per application family without any justification.  Because an applicant cannot agree to forgo a continuation application (or CIP) to obtain a second or third RCE or forgo an RCE in exchange for a third continuation or CIP under the new rules, the Patent Office will be implementing a new streamlined continuation application procedure.  This new procedure recognizes the time to examination differences between continuation applications and RCEs (i.e., continuation applications generally take longer to be examined than RCEs).

Under the new streamlined continuation application procedure, an applicant may request to have a continuation application filed on or after November 1, 2007 placed on an examiner's amended docket (otherwise known in PTO parlance as the examiner's Regular Amended docket).  In the absence of such a request, the continuation application will be placed on the examiner's new continuing application docket (otherwise known in PTO parlance as the examiner's New Special Docket).  Continuation applications placed on an examiner's Regular Amended docket will ordinarily be picked up for action quicker than continuation applications placed on the examiner's New Special docket.

To properly request that a continuation application be placed on an examiner's Regular Amended docket, the following conditions must be satisfied:

1.  The applicant must make a request that the continuation application be placed on an examiner's Regular Amended docket.

2.  The application must disclose and claim an invention or inventions that were disclosed and claimed in the prior-filed application.

3.  The applicant must agree to abide by any invention or species election made in the prior-filed application.

4.  The prior-filed application must be under a final Office action or under appeal at the time the continuation application is filed.

5.  A letter of express abandonment must be filed for the prior-filed application at the time the continuation application is filed.

In addition, in order for a continuation application to be placed on an examiner's Regular Amended docket, the continuation application must also be complete under § 1.51(b), or completed under § 1.53(f), and in condition for publication under § 1.211.  Thus, if an applicant delays in submitting the filing fee and oath or declaration (or a copy of the oath or declaration from the prior-filed application), the Patent Office will delay the docketing of a continuation application even if the applicant has requested streamlined docketing.

In its final rule notice, the Patent Office notes that the new streamlined continuation application procedure only applies to the placement of the continuation application on an examiner's Regular Amended docket, and that the continuation application will be otherwise treated as a new application.  In particular, the Office notes that for streamlined continuation applications:

1.  An applicant must pay the basic filing fee ($300), search ($500), and examination ($200) fees, and any required excess claims fees ($200 per independent claim and $50 for dependent claims), rather then the lower RCE ($790) fee.  [Cynical applicants may not be surprised to learn that the Patent Office has managed to turn the "2 + 1" rule - which makes no more sense than a "3 of anything" rule - into a revenue generating proposition.]

2.  The application will be assigned a new application number.

3.  The continuation application is subject to the patent term provisions of 35 U.S.C. 154(b) and § 1.702 et seq. as a new continuation application.

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.142: Suggested Restriction Requirements," September 6, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.114: RCE Practice," September 5, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.75(b): 5/25 Limit on Claims," September 4, 2007
• "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

Changes to Rules 78(d)(1) and 114:

• Changes to Rule 78(d)(1) can be found here.
• Changes to Rule 114 can be found here.