PTO "Flagging" Pending Applications that Exceed 5/25 Claim Limits

    By Jason Derry --

Patent Docs has learned from posts to the "EFS-Web" list that the U.S. Patent and Trademark Office is now identifying applications in private PAIR as failing to comply with the new 5/25 claim limitation rules.  Users of Partridge, a free program developed by the Oppedahl Patent Law Firm LLC to help monitor status changes in PAIR, have reported that several of their pending applications that have more than 5 independent claims and more than 25 total claims are now shown in PAIR as "flagged for 5/25" or "Request for SIR -- Recorded."  The last identifier is a bit of a mystery, since the users reported that they had not requested SIRs.

The Patent Office seems to be actively identifying pending applications in which a notice of non-compliance with 37 C.F.R. § 1.75(b) needs to be issued.  Thus, applicants should be identifying their applications that are destined to receive a notice under Rule 75(b)(3), and should decide how to place those applications into compliance with the new claim limitation rules.  Otherwise, applicants will be forced to comply with the new 5/25 claim limits within a two-month, extendable time limit imposed by a notice under Rule 75(b)(3).  Unless the notice accompanies a requirement for restriction from the Examiner, options for responding to the notice include: (1) filing an Examination Support Document (ESD); (2) filing a new set of claims that comply with the 5/25 limits; or (3) filing a Suggested Requirement for Restriction (SRR).

For additional information regarding this topic, please see:

• "Patent Office Has Stopped Examining Patents with 25+ Claims," Patently-O

Jason Derry, Ph.D., who graduated with honors from DePaul University College of Law, is a molecular biologist and founding author of Patent Docs.

Comments

[anon]

the 2 month term for these notices (apps filed before 11/1) will be extendable. (FR 46728, for example).

[Jason]

Correct. The post has been revised to point out that the notices in applications filed before 11/1/07 are extendable (up to additional 4 months). Thanks for your comment.

[a non e mouse]

Presumably they will have to stop doing this now the rule implementation has been injuncted?

[Donald Zuhn]

a non e mouse:

It is my understanding that the Patent Office stopped flagging applications shortly after we (and other blogs) reported that it had begun this practice, in part because the Office realized that by flagging applications it was effectively implementing the new rules before the November 1st compliance date.

Thank you for your comment.

Donald Zuhn

[Patent Law Firm]

They have to stop now.