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.