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September 28, 2007


Thank you. Obviously in view of the ludicrous 9/26 FAQs we'll be adding more questions to the NIPRA quiz. Watching USPTO management is almost like watching the Three Stooges try not to trip on each other while at the same time being clueless as to what direction they should go.

"The Office will not count the withdrawn claims in determining whether an application exceeds the 5/25 claim threshold. Therefore, if the elected invention in the continuation application is drawn to 5/25 or fewer claims, applicant is not required to file an ESD before the FAOM."

It would also be foolhardy to rely on an SRR to keep the application from breaking the 5/25 threshold. In such an instance, to get two counts, all an examiner would need to do is not "accept" your "suggested" restriction requirement for any or no reason. Then, when faced with the prospect of preparing an ESD in 2-months, what could you do?

Dear Anonymous:

We here at PatentDocs wonder: who is NIPRA? If you want to retain your sense of mystery, you can e-mail me at [email protected].

Thanks for the comment.


No mystery here. I'll e-mail you. (I had a question anyway about proteins.)



You observed, "Thus, it is now foolhardy to file a Chapter II Demand in any PCT application claiming priority to the U.S."

What about filing a Chapter II demand in PCT applications that do not claim priority to the U.S.? (e.g., the initial U.S. non-provisional & the PCT were filed separately on the same day; therefore, the PCT doesn't claim priority to the initial U.S. non-provisional)

The definition of divisional in 78(a)(2) states that the invention or inventions must not have been examined in *any* prior-filed application. Wouldn't that include any PCT application filed before the date of the divisional regardless of whether the PCT application claimed priority to a US case?

Thanks for your blog and the careful and thorough analysis that you provide.

Dear anonymous:

Thanks for the comment. My answer to your hypothetical gets us into the area of guess-work, since there aren't any good guideposts (I welcome my colleagues to opine if there is a definitional aspect I'm missing).

But a PCT application that does not designate the US is really a "foreign" application, in the sense that it does not confer any legal right(s) on the applicant with regard to the US (no 102(e) date, for example). Thus, I think the rule would properly not treat any Chapter II/IPEA examination as an examination in a prior filed application, any more than an examination of a Japanese application would count. Unless a country is designated, a PCT application is only relevant when it publishes, so I don't see the justification for treating is differently WRT divisional practice.

Aren't the rules fun?

Thanks again.

Thanks Kevin. I agree with your analysis that it wouldn't make sense to count examinations in non-US-designating PCT applications or foreign applications.

My analysis focused more on the term "application" as opposed to "examined." Since "application" was only limited as to when it was filed ("prior filed"), I still don't see how it wouldn't include any type of prior filed application. After all, the USPTO rules refer to PCT, foreign and non-provisional applications in other places when they intended to refer to only those categories of applications.

In any event, it looks like the USPTO took your approach and felt the need to "clarify" the term "examined" to limit it to particular examinations performed in the US. I suppose it was easier to say that "examined" had a special meaning as opposed to argue that "application" had a special meaning. This was just more proof of how shoddy the USPTO's rulemaking process was.

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