PLI CLE on New Continuation and Claims Rules

Practising Law Institute (PLI) will be offering a webcast on the final USPTO rules on claims and continuations on September 19, 2007 from 1:00-2:00 PM (EST).  Speakers Robert J. Spar, former Director of the Office of Patent Legal Administration of the U.S. Patent and Trademark Office, and John M. White, Director of Patent Professional Development of the Practising Law Institute, will provide information to facilitate a clearer understanding of the new rules, and steps that practitioners should consider taking in their patent prosecution practice.  In particular, the speakers will cover the following topics and issues:

With respect to claims:

• Limits on the number of independent and dependent claims that may be presented for examination.
• What happens if you're over the claims limit?
• Refunds for excess claims.
• The Examination Support Document (ESD).
• Options if you file multiple applications.
• Any loopholes to exceed the limits in parallel applications.
• Any notification requirements and presumptions that will be imposed.
• What is required to rebut a presumption of double patenting?

With resect to continuations:

• Limits on Continuations, RCE's, CIPs, and Divisionals.
• What happens if you (inadvertently) exceed the limits, or fail to meet the requirements?
• What kind of justification would be acceptable?
• Will a voluntary divisional be permitted, and if not, what becomes of unclaimed subject matter?
• When may an involuntary divisional be filed?
• When does it make sense to file a CIP?
• Should you present claims to multiple inventions in your first application, and voluntarily propose a restriction requirement?

With regard to the effective date of the new rules and transition issues:

• When and how will each of the new limits be effective for: (a) applications to be filed on or after the effective date; (b) the existing backfile of unexamined applications; and (c) applications in which an action on the merits has been given?
• What should you be doing now to prepare for the many different prosecution imposed criteria that will soon be effective relative to applications in each of these three statuses?

The registration fee for this webcast is $299.  Those interested in registering for the webcast, can do so online at the WestLegalEdcenter.