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NEW CONTINUATION
RULES ANNOUNCED
The new rules were
scheduled to take
effect November 1, 2007.
However there has been litigation
challenging the authority of the US
Patent Office to implement these
substantive rules. A judge has
agreed and a temporary injunction
has been granted.
In summary, the rules
permit 2 continuation applications
(including CIP) and one Request for
Continuation Application (RCE) as a
matter of right. Further
prosecution requires a showing of
need.
The rules also impose
a limit of 25 total claims and 5
independent claims. Additional
claims may be filed with an
“examination support document” in
accordance with Section 1.265. This
document is supposed to be less
burdensome than the accelerated
support document prepared by the
applicant for petitions to make
special. (It is not clear how the
examination support document rules
will interface with the proposed
rules for information disclosure
statements. See the recent article
entitled ”Changes
for IDS.“ See also the article
entitled “DUTY
TO DISCLOSE PRIOR ART OR CONFLICTING
TECHNOLOGY TO USPTO ”. )
Note that the same
applicant can not file two
applications each with 3 independent
claims and 20 total claim wherein
even one of the application claims
is patently indistinct from the
second application. See section
1.75(b). All patently indistinct
claims must be should be filed in
one application and the number of
claims kept below the 5 independent
and 25 total limit to avoid the
requirement of the examination
support document.
The examination
support document does require
a statement that a pre-examination
search in compliance with Section
1.265(b) was conducted. The field
of search must be identified. A
listing of references most closely
identified with the subject matter
of each claim must be provided and
one appearance in the reference of
the specific feature relevant to the
claim.
The applicant is required to
identify in each reference at least
one specific feature which makes the
reference relevant to the inventions
subject of the application.
The statement must also include a
detailed explanation pointing out
how each of the independent claims
are patentable over the cited
references.
As a practice point,
this is an area where later
regrettable admissions may be made.
And further, the
support document must show where
each claim (independent and
dependent) finds support under
Section 112, paragraph 1 in the
written specification. A similar
requirement is imposed for means
plus function claims.
August 22, 2007
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