It Ain't Necessarily So

    By Kevin E. Noonan --

As Patent Docs reported on Wednesday, Patent Commissioner John Doll (at right) was the luncheon speaker at the American Conference Institute's Biotech Patents conference in Boston.  During the question-and-answer session, the Commissioner was asked about information one participant had received from a Patent Office official regarding divisional application practice.  Specifically, the question was about the effect of filing a Chapter II Demand and receiving an International Preliminary Examination in a PCT application claiming priority to a provisional application that had also been converted to a U.S. non-provisional application.  In the scenario, the U.S. Examiner imposes a restriction requirement in the non-provisional application, and the question was whether the applicant had a right to file a divisional application on the non-elected claims.  The Patent Office official had told the questioner that the Office would consider a divisional to be precluded for any claims examined during the International phase, since the new rules limited divisional application claims to claims that had not been previously examined.  According to the official, the International Preliminary Examination would qualify as a "previous examination," and the divisional filing would be improper.

Commissioner Doll stated at lunch that it was not the Office's intention that an International Preliminary Examination would preclude an applicant from filing divisional applications in response to a U.S. Examiner-imposed restriction requirement in a national phase application.  He also promised to "get back to us" on the proper interpretation of the rule.

It seems that overnight Commissioner Doll either had a change of heart or was informed that he was misinformed.  To clarify, if a PCT application undergoes International Preliminary Examination, the Patent Office will count that as a "previously-examined claim" and preclude an applicant from filing a divisional application on any such claim in response to a restriction requirement.  This interpretation can be found in Frequently Asked Qustions (FAQ) Nos. C8 and C11 on the Patent Office website:

C8.  If applicant filed an initial application which is an international application designating the U.S. and the international application contains two inventions, can applicant file one continuation application and submit a suggested restriction requirement (SRR) in the continuation application rather than file two continuation applications?  Will the Office count the withdrawn claims in determining whether the continuation application exceeds the 5/25 claim threshold?  (Posted on 9/26/07)

Yes, an applicant may file a continuation application and submit an SRR in the continuation application in lieu of filing two separate continuation applications.  If the SRR is accepted and the examiner makes a restriction requirement, applicant may file a divisional application for the claims to the non-elected invention that has not been examined.  Note that applicant may not file a divisional application to claim an invention that has been examined in the international application designating the U.S. upon the filing of a Demand.

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.

C11.  If applicant filed an initial application which is an international application designating the U.S. and the International Searching Authority determined that the international application lacks unity of invention under PCT Rule 13, can the applicant file a divisional application for the non-elected invention that was not examined in the international application?  (Posted on 9/26/07)

Yes, applicant may file a divisional application for each non-elected invention that was not examined in the international application.  However, if applicant filed a Demand and paid the additional examination fees and all of the inventions were examined in the international application, applicant may not file a divisional application.  This is because under PCT Article 31, "examination" in the international phase is contingent upon the filing of a Demand for international preliminary examination.  The non-elected invention would be examined within the meaning of 37 CFR 1.78(d)(1)(ii) in the international application designating the U.S.

Thus, it is now foolhardy to file a Chapter II Demand in any PCT application claiming priority to the U.S.  In view of the differences, long touted by the Patent Office and recognized in voluminous case law, between the standards of an International Preliminary Examination and a U.S. Patent Office examination, this interpretation exceeds the ironic and borders on the nonsensical (and probably is contrary to U.S. law), but that doesn't seem to be a factor in the Office's decision-making.

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1)(i) & (vi): PCT Practice," September 23, 2007
• "An Analysis of the New Rules: USPTO Releases ESD Guidelines," September 17, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.265: Examination Support Document," September 13, 2007
• "An Analysis of the New Rules: Revisions to First Action and Second Action Final Practice," September 11, 2007
• "An Analysis of the New Rules: 37 C.F.R. §§ 1.78(d)(1) and 1.114: Streamlined Examination," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.117: Refund Due to Cancellation of Claims," September 10, 2007
• "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:

• "Commissioner Doll Addresses ACI Biotech Patents Conference," September 26, 2007
• "Rules Challenger Amends Complaint and Withdraws PI Motion," September 11, 2007
• "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

Comments

[anonymous]

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?

[Kevin E. Noonan]

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.

[anonymous]

PatentDocs,

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

www.nipra.org

[anonymous]

Kevin:

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.

[Kevin E. Noonan]

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.

[anonymous]

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.