Proposed Rule Changes to Focus the Patent Process Involving Continuations, Double Patenting and Claims Connecticut Intellectual Property Law Association

March 29, 2006

UPR Applications Filed UPR = Utility, Plant and Reissues

[D]
FY 05 plan 375,080 (5.5% above FY 04)
FY 05 actual 384,228 (8.1% above FY04)
2.6% over plan

TC Application Inventory

¹ “New Application inventory” is the number of new applications designated or assigned to a technology center awaiting a first action.
*Total inventory includes applications not assigned to a particular TC, awaiting processing either pre- or post-examination.
TC = Technology Center

Patent Pendency(as of 1/1/2006)

¹ “Average 1st action pendency” is the average age from filing to first action for a newly filed application, completed during October-December 2005.
² “Average total pendency” is the average age from filing to issue or abandonment of a newly filed application, completed during October-December 2005.

First Action Pendency by Art Areas

¹ “Average 1st action pendency” is the average age from filing to first action for a newly filed application, completed during October-December 2005.

Inventory by Art Examples

*The number of months it would take to reach a first action on the merits (e.g., an action addressing patentability issues) on a new application filed in July 2005 at today’s production rate. Today’s production rate means that there are no changes in production due to hiring, attrition, changes to examination processing or examination efficiencies, and that applications are taken up in the order of filing in the given art unit/area. Of course, USPTO is taking aggressive steps to ensure changes that will significantly lower the inventory rates in high-inventory art areas.

Quality of Products – FY 05

*Compliance and error rates as measured by OPQA.
¹ Compliance is the percent of office actions reviewed and found to be free of any in-process examination deficiency (an error that has significant adverse impact on patent prosecution).

² Patent allowance error rate is the percent of allowed applications reviewed having at least one claim which is considered unpatentable on a basis for which a court would hold a patent invalid. “Allowance” occurs before a patent is issued, so these errors are caught before any patent is actually granted.

Technology Centers Rework* Statistics

* Rework first actions are those actions that are in a Continuing (CONs and CIPs), RCE, CPA or 129(a) applications (excludes Divisionals).

Continuation Filing Rates

Continuation Filing Percentage Graph

APPEAL PENDENCYFY01 – FY05

Appeal Conference Initiatives

• Pre-Brief Appeal Conference Pilot Program
  • 1296 Off. Gaz. Pat. Office 67 (July 12, 2005)
  • The USPTO is extending the program until further notice.
• Appeal Conferee Specialists Pilot Program

Average Number of Claims at Filing

Proposed Rule Makings on Representative Claims and Continuing Applications

• Objectives:
  • Quality: Better focused examination – help us get it right the first time
  • Efficiency: Create greater finality in examination
  • Pendency: To help the Office turn to new inventions more promptly and create public certainty on patent protection

Pendency Reduction Action Plan

Notice of Proposed Rule Making (NPR)

Proposed Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims 71 Fed. Reg. 48 (January 3, 2006)

Objectives of Proposed ChangesContinued Examination Practice NPR

• Focus the Office’s limited examining resources on new applications disclosing “new” inventions instead of on “reworking” continued examination filings.
• Make the examination process more efficient and effective by requiring more focus on important patentability issues during the first examination of an invention
• Improve the quality of issued patents; and give more timely notice of, and greater public certainty on, the scope of patent protection by reducing the number of patents that have overlapping disclosures and claims.
• Reduce double patenting burdens on USPTO

Brief Highlights of Proposed Changes Continued Examination Practice NPR

Despite what you may have heard:

Continuations*: One continuation* always available as of right.

If additional continuations* are needed, they would be available if a timely petition, including a satisfactory showing that the amendment, argument or evidence could not have been submitted during the prosecution of the prior filed application, is submitted.

First action final practice of the Office will be eliminated if proposed changes are adopted.

Includes continuation applications, continuation-in-part applications, and requests for continued examination (RCEs).

Brief Highlights of Proposed Changes Continued Examination Practice NPR

DIVISIONAL APPLICATIONS

• Are only permitted if the Office imposes a restriction, or lack of unity, requirement in the parent application and the claimed invention was not elected in the parent.
  • Thus “involuntary” divisionals would be permitted; and “voluntary” divisionals would not be permitted.
• Can only claim the benefit of a single parent application, which had the restriction, or lack of unity, requirement,
  • unless a timely petition, with a satisfactory showing that the amendment, argument of evidence could not have been submitted during the prosecution of the prior filed application, is submitted.
• A single continuation or RCE of each divisional application will be permitted (without petition).

Brief Highlights of Proposed Changes Continued Examination Practice NPR

Benefit Claims under 35 USC 120,121 or 365(c)

What will happen if the permitted conditions for a continuing application* are not met:
The Office will refuse to enter, or will delete if present, any specific reference to a prior filed application that is not permitted
The entry or failure to delete a specific reference to a prior- filed application that is not permitted by proposed 37 CFR 1.78(d)(1) does not constitute a waiver of the provisions of proposed 37 CFR 1.78(d)(1).

* A continuing application includes continuations, C-I-Ps, and divisionals, as defined in proposed 37 CFR 1.78(a)(1)-(4).

Brief Highlights of Proposed Changes Continued Examination Practice NPR

Related Applications, Claims & Double Patenting
• Applicant must timely identify all other related applications (close effective filing dates, common inventor, and common assignee), in a separate paragraph after specific references for benefit claims, if any.
• If the disclosure of any such related application substantially overlaps applicant’s disclosure, and they have the same effective filing date (typical double patenting situations), a rebuttable presumption of double patenting is established.
• Then: applicant must show claims in such applications are patentably distinct; or submit a terminal disclaimer and explanation why patentably indistinct claims should be maintained in the two or more such applications.
• The Office may require that patentably indistinct claims be eliminated from all but one application via merger or cancellation.

OTHER CHANGES
• Continuation-in-Part (C-I-P) Applications: If a C-I-P application is filed, applicant must identify which claims are supported in the parent application. If not identified, claims only entitled to filing date of the C-I-P.
• National Stage Entry: In case of ambiguity, documents and fees will be treated as an entry to the national stage of an international application under 35 USC 371 rather than as an application under 35 USC 111.

List of Rules Proposed to be Changed

• 37 CFR 1.78 – Claiming benefit of earlier filing date and cross-references to other applications
• 37 CFR 1.114 – Request for continued examination
• 37 CFR 1.495 – Entering the national stage in the United States of America

Proposed Reorganization of entire rule § 1.78 with new subsections

Section 1.78 is proposed to be reorganized as follows:
• § 1.78(a) – definitions established;
• § 1.78(b) - claims under 35 USC 119(e) for the benefit of a prior-filed provisional application;
• § 1.78(c) - delayed claims under 35 USC 119(e);
• § 1.78(d) - claims under 35 USC 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional application;
• § 1.78(e) - delayed claims under 35 USC 120, 121, or 365(c);
• § 1.78(f) - applications naming at least one inventor in common;
• § 1.78(g) - applications or patents under reexamination naming different inventors and containing patentably indistinct claims; and
• § 1.78(h) - the treatment of parties to a joint research agreement under the CREATE Act.

Benefit Claims under 35 USC 120, 121, or 365(c)

Effective Date of proposed changes to § 1.78 (if adopted):
• The proposed changes would be applicable to any application filed on or after the effective date of the final rule.
• Any application filed on or after the effective date of the final rule seeking to claim benefit of more than a single prior-filed nonprovisional application or international application under 35 USC 120, 121, 365(c) and § 1.78 would need to either:
  Meet the requirements in proposed § 1.78(d)(1)(iii) (e.g., a CIP of a divisional application compliant with proposed § 1.78(d)(1)(ii)); or
  Include a petition coupled with a satisfactory showing under proposed § 1.78(d)(1)(iv).

Notice of Proposed Rule Making

Changes to Practice for the Examination of Claims in Patent Applications
71 Fed. Reg. 61 (Jan. 3, 2006)

Objectives of Proposed ChangesClaims NPR

Better, more thorough, and reliable examination quality through focused initial patentability examination of a limited number of representative claims, which are selected by applicant.

Applicant may have more (representative) claims receive an initial patentability examination, provided applicant submits support for patentability.

All claims (including all non-representative claims) will be examined before allowance.

Proposed Rulemaking Claims NPR

Despite what you may have heard:

• No limit on the number of total or independent claims permitted in an application.
• Only 1.2% of applications include >10 independent claims; thus, proposed rulemaking will not require additional effort on the part of applicants in 98.8% of applications.
• Proposal makes use of familiar representative claim practice, similar to that used by BPAI.

Highlights of Proposed ChangesClaims NPR

Only representative claims will be initially examined.
Representative claims are all of the independent claims in an application, and only those dependent claims that are expressly designated by the applicant for initial examination.

Up to 10 representative claims will get an initial examination.
If applicant submits more than 10 independent claims, or designates additional dependent claims so there are more than 10 representative claims to be initially examined, the Office will require the applicant to submit an examination support document, or take other appropriate action.

If you prefer not to submit an Examination Support Document
1. Cancel any extra (over 10) independent claims;
2. Rescind designation of enough dependent claims so total of representative claims is 10 or less; or
3. Submit a proposed restriction requirement, with an election w/o traverse of an invention to which there are drawn 10 or fewer representative claims.

Note: Refunds may be given for claims cancelled before examination.

• Examination Support Document will require: a pre-examination search, an IDS, identification of limitations shown by cited references, a patentability statement, a utility statement, and a showing of how limitations are supported by disclosure.
• Dependent claims that are not designated for initial examination will get a deferred examination after the initial examination yields allowable representative claims.
• Patentably indistinct claims in certain related applications will be collectively considered as being in one application.
• Some dependent claims, which are effectively independent claims, will be treated as independent claims.

Claims NPR Rules Proposed to be Changed or Added in 37 CFR

• § 1.75(b) and (c) Claim(s)
• § 1.104(a)(1), (b), and (c)(1) Nature of examination
• § 1.105(a)(1)(ix) Requirements for information
• § 1.117 (new) Refund due to cancellation of claim
• § 1.261 (new) Examination support document
• § 1.704 (c)(11) and (c)(12) Reduction of period of adjustment of patent term

Claims NPREffective date provision

Effective Date: Applicable to any application filed on or after the effective date of the final rule, as well as to any application in which a first Office action on the merits was not mailed before the effective date of the final rule.

The Office will provide applicants who filed their applications before the effective date of the final rule and who would be affected by the changes in the final rule with an opportunity to designate dependent claims for initial examination, and to submit either an examination support document or a new set of claims to avoid the need for an examination support document.

More Information

• Additional information is posted on the USPTO’s Internet Web site at: http://www.uspto.gov
• For more information, please contact the Office of Patent Legal Administration at (571) 272-7701 or e-mail to PatentPractice@USPTO.gov, or contact one of the following legal advisors:
• Robert Clarke 571-272-7735
• Elizabeth Dougherty 571-272-7733
• Eugenia Jones 571-272-7727
• Mary Till 571-272-7755

To Submit Comments:

Public comments on these proposed rule makings must be received on or before May 3, 2006 via e-mail, fax, mail or the internet.

Comments should be sent by electronic mail to the following addresses:

• Continuations – AB93Comments@uspto.gov
• Claims – AB94Comments@uspto.gov

Changes to Practice for the Examination of Claims in Patent Applications

Examples

• All independent claims must be elected.
• The election of claim 3 is improper. An elected dependent claim must depend from another elected claim. Applicant can choose to re-write claim 3 to depend from 1, or also elect claim 2 to be examined.

Election of Claims – Example 2

Claims
1. An apparatus comprising….
7. The method of using the apparatus of claim 1 to …..
Claim 7 is an independent method claim and will be treated as such for the purposes of claim election. Therefore, it must be elected to be examined.

Election of Claims – Example 3

Claims:
1. An apparatus comprising….
4. An apparatus as claimed in one of claims 1-3 further comprising….
For the purposes of election, proper multiply dependent claim 4 will be treated as 3 separate claims. Thus, 3 claims will be counted to determine whether the applicant has exceeded the 10 claim limit to avoid submission of an examiner support document.

Election of Claims – Example 4

Applicant files an application with claims to a single invention. The application is filed with 10 total claims: 3 independent claims and 7 dependent claims.
• Designation Options:

If the applicant does not designate any dependent claims for initial examination, the Office will give initial examination only to the 3 independent claims.
If the applicant designates all 7 dependent claims for initial examination, the Office will give initial examination to all 10 claims.

Election of claims – Example 5

After getting an examination on the merits on the 10 representative claims, including 3 independent claims and 7 designated dependent claims, applicant files an amendment which:
a) cancels 3 (representative) claims (1 independent and 2 dependent), and (b) adds 11 claims (4 independent and 7 dependent). The application, as amended, now contains 18 claims: 6 independent claims and 12 dependent claims.

If applicant does not change the original designation of dependent claims,*
applicant must submit an examination support document covering the 11 representative claims, or
reduce the number of representative claims to 10 or fewer by canceling independent claims, rescinding the designating of dependent claims for initial examination, or a combination of thereof.

*In this instance, there are now 11 designated representative claims: 6 independent claims and the 5 remaining dependent claims which were previously designated.

Election of claims – Example 6

Applicant files an application with all 20 claims to a single invention including: 3 independent claims and 17 dependent claims.

Applicant’s options for designating dependent claims as representative claims (up to 10) include:

1. If applicant does not designate any dependent claims for initial examination, the Office will give initial examination only to the 3 independent claims.
2. If applicant designates 7 dependent claims for an initial examination, the Office will give initial examination to 10 claims; 3 independent claims and the 7 designated dependent claims.
3. If applicant designates more than 7 dependent claims for initial examination, the application will have more than 10 representative claims, and applicant must:
   submit an examination support document covering the representative claims.

Note: Applicant may reduce the number of representative claims to 10 or fewer by canceling independent claims, rescinding the designating of dependent claims for initial examination, or a combination thereof.

Election of Claims – Example 7

Applicant files an application with 30 claims to 3 distinct inventions, including 3 independent claims and 27 dependent claims.

Options for designating (up to 10) representative claims include:

1. If no dependent claim is designated for initial examination: An initial examination will be given only to the 3 independent claims; or The Office may still restrict the application to a single invention.
2. If 7 dependent claims are designated for initial examination: An initial examination will be given to the 3 independent claims and the 7 designated dependent claims; or The Office may restrict the application to a single invention.
3. Applicant may submit a suggested restriction requirement with an election w/o traverse, and designate dependent claims so there is no more than 10 representative claims.

The Office may adopt applicant’s suggested restriction requirement and give an initial examination to the representative claims; or The Office may make a different restriction requirement.
4. If all 27 dependent claims are designated for initial examination, there will be 30 representative claims, and applicant must: submit an examination support document covering the 30 representative claims.

Note: Applicant may reduce the number of representative claims to 10 or fewer by canceling independent claims, rescinding the designation of dependent claims for initial examination, or a combination thereof; or submit a suggested restriction requirement as indicated above.

Changes to Practice for Continuing Applications

Examples

Continuations: Ex. 1Benefit Claims under 35 USC 120, 121, or 365(c)

One RCE, Continuation, or CIP Permitted (Line Graph Converted)

1. Provisional Application
2. Nonprovisional Application claiming the benefit of the provisional application, 35 USC 119(e)
3. Applicant may file: an RCE, or a continuation or a CIP application, claiming a benefit under 35 USC 120, 121 or 365(c)

Continuations: Ex. 2 Benefit Claims under 35 USC 120, 121, or 365(c)

Divisional Applications Can Only Claim Benefit of One Prior Nonprovisional Application That Was Subject to a Restriction or Unity of Invention Requirement (Line Graph Converted)

1. Nonprovisional Application with claims to inventions A, B, and C

Restriction made in Application #1. Applicant elected invention A and canceled claims directed to B, and C
2. Applicant may file Divisional Applications claiming only the benefit of application #1 and the claims must be directed non-elected inventions in application #1
3. Applicant may file Divisional Applications claiming only the benefit of application #1 and the claims must be directed non-elected inventions in application #1

Continuations: Ex. 3 Divisionals

Scenario: Applicant files application #1 with 65 claims. The USPTO requires restriction between the following groups:
1. Invention 1 - 15 claims; 3 independent + 12 dependent claims
2. Invention 2 - 30 claims; 5 independent + 25 dependent claims
3. Invention 3 - 20 claims; 1 independent + 19 dependent claims

Applicant may file two divisional applications, one each for inventions 2 and 3.
• But, both will need to be filed during the pendency of application #1 in order to be entitled to claim the benefit of application #1’s filing date. If divisional #3 is filed during the pendency of divisional #2, but not during pendency of application #1, it will only be entitled to the filing date of divisional #2.

Continuations: Ex. 4Benefit Claims under 35 USC 120, 121, or 365(c)

One Continuing Filing after a Divisional Permitted (Line Graph Converted)

1. Provisional Application
2. Nonprovisional Application claiming the benefit of the provisional application, 35 USC 119(e)

Restriction made in Application #2
3. Divisional Application (as defined in proposed rule) to non-elected invention
4. Applicant may file: a single RCE, or continuation or CIP application of the divisional application

Continuations: Ex. 5 Benefit Claims under 35 USC 120, 121, or 365(c)

Second Continuing Filing Requires Petition & Showing That the Amendment, Argument, or Evidence Could Not Have Been Earlier Submitted

1. Provisional Application
2. Nonprovisional Application claiming the benefit of the provisional application
3. A first continuing application or an RCE
4. Applicant may file a second or subsequent RCE or continuing application w/ a petition and showing

Continuations – Ex. 6 Voluntary Divisional Treated as a Continuation

Scenario: Applicant files application #1 claiming only 1 invention. Later, applicant files application #2 with the same disclosure but claims direction to a different invention. In application #2, the applicant claims the benefit of application #1’s filing date.

This is permitted, but application #2 will be treated as the one continuation of application #1 allowed as a matter of right.

• Therefore, neither applications #1 or #2 can have any additional RCEs or continuations absent a petition.
• Also, as both applications have the same effective filing date, there will be rebuttable presumption of double patenting. The applicant will need to file a terminal disclaimer or argue persuasively that the claims are patentably distinct.

Examples of a Showing for Filing a Second Continuing Application

Example 1: In a continuation application,

• An interference is declared in an application containing both claims corresponding to the count(s) and claims not corresponding to the count(s), and

The APJ suggests that the claims not corresponding to the count(s) be canceled from the application in interference and pursued in a separate application.

Examples of a Showing for Filing a Second Continuing Application

Example 2: In a continuation application,

• Data necessary to support a showing of unexpected results just became available to overcome a final rejection under 35 U.S.C. 103, and

The data is the result of a lengthy experimentation that was started after applicant received the rejection for the first time.

Examples of a Showing for Filing a Second Continuing Application

Example 3: In a continuation application,

• The final rejection contains a new ground of rejection that could not have been anticipated by the applicant, and

The applicant seeks to submit evidence which could not have been submitted earlier to overcome this new rejection.

Examples of Unacceptable Showing for Filing a Second Continuing Application

Example 1:

• An argument that a final rejection in one of the prior applications was premature.

Applicant should address the propriety of the final rejection during prosecution of the prior application, and not collaterally in a petition for a continuation application.

Example 2:

• An argument that an amendment after final rejection should have been entered in the prior application.

Applicant should address the non-entry in the prior application, and not collaterally in a petition for a continuation application.

Thank You!

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