2Overview Introduction to Rules Examples of Rule Scenarios Best Practices and Suggestions
3Introduction to Rules Limited No. of Continuations - 2 + 1 Rule Limited No. of Claims - 5/25 RuleDisclosure of “Related” Patents and ApplicationsRebuttable Presumption of Patentably Indistinct Claims
4Themes to Rules More front end work required Searching Filing strategy Know the invention better before you file the applicationKnow what problem(s) it solves and how it differs from what was done before.Focus on maximizing claim potential not on the number of applicationsAllowance of the application takes the application out of the rules
5Rules Being Challenged Tafas vs. DudasFiled Aug. 22, 2007 (Eastern District of VA)GlaxoSmithKline vs. DudasFiled Oct. 10, 2007 (Eastern District of VA)AIPLA, IBM, etc. supporting GlaxoSmithKlineHearing October 31st
6Limited Number of Continuations 2 + 1 Continuation/RCE Rules
72 + 1 Continuation/RCE Rules Generally:Limited to 2 CONs (or CIPs) of an Initial Application. These are considered an “Invention Family”.Limited to 1 RCE in an Invention Family.Restriction Requirement creates a new Invention Family.If limits are exceeded:RCE is abandonedCONs or CIPs do not get the priority date of the Initial Application
82 + 1 Continuation/RCE Rules Although described together in the 2 +1 rule, continuing applications and RCEs are controlled by different rules, which apply differently.Continuing Applications - Rule 1.78 “Claiming benefit of earlier filing date and cross-reference to other applications” (Fail to follow - lose earlier priority claim)RCEs - Rule “Request for continued examination” (Fail to follow - RCE not granted, so still have to respond)As applied, the new rules generally have different applicability dates.Continuing Applications-Applications filed on or after November 1, 2007 mustMeet the requirements limiting the number of continuing applications under the new rules ORFile a Petition.One More Exception: Applications only claiming priority to applications filed before August 21, 2007 do not need to meet the new requirements if:The continuing application only claims priority to nonprovisional applications filed before August 21, 2007 ANDNo other applications filed on or after August 21, 2007 claim priority to the continuing application.RCEs - Rules only apply to RCEs filed on or after November 1, 2007No August 21, 2007 “One More” Exception.
9Continuation and CIP Applications Continuation applicationDiscloses and claims only inventions that were:Disclosed in a prior-filed application (does not need to be claimed).Continuation-in-partDiscloses subject matter that was not disclosed in prior-filed application.Continuation or Continuation-in-part (CIP) Priority Claim (w/o Petition)Continuation or CIP applications can claim benefit of no more than 2 parent applications (Serial aspect)Parent applications can only provide priority to one other application (Parallel aspect)
10CON and CIP Examples Parallel Serial Family Family Petition Petition UtilityUtilityParallelCIPSerialCIPCONFamilyCONFamilyPetitionPetitionPetition
11CON and CIP Examples Parallel Serial Family Family Petition Petition Provisional and Outside US (OUS) (i.e., Foreign) Applications Do Not CountProvisional/ForeignApplication(s)Provisional/ForeignApplication(s)UtilityUtilityParallelCIPSerialCIPCONFamilyCONFamilyPetitionPetitionPetition
12Exceeds the 2 Parent (Serial) Requirement CON and CIP ExamplesUtilityExceeds the 2 Parent (Serial) RequirementCIPCONCONFamilyPetition
13Divisional Applications Discloses and claims only inventions that were:Disclosed in a prior-filed application andClaimed in the prior-filed application.Required to comply with a PCT unity of invention or US restriction requirement in the prior-filed application.Inventions were:Not elected for examination andNot examined in any prior-filed application.Note “examined” does not include PCT examination after filing Demand. “Examined” only applies to US national stage examination.Continuation of a Divisional (COD)COD claims the benefit of a Divisional.COD discloses and claims only the invention(s) disclosed and claimed in the divisional application.COD claims benefit of divisional and divisional’s parents.COD claims benefit of at most one intervening application between it and the divisional. (Serial aspect)Divisional parent application can only provide priority to one other application, not including other divisional applications satisfying the above-mentioned conditions (Parallel aspect)No CIP of Divisional allowed.
14Divisional & COD Examples UtilityClaims: A, BDisclose: A, BRestriction Elect: ACON/CIPClaims: ADisclose: A, BDIVClaims: BDisclose: A, BCON/CIPClaims: ADisclose: A, BCODClaims: BDisclose: A, BPetitionCODClaims: BDisclose: A, BPetition
15Divisional & COD Examples UtilityClaims: A, BDisclose: A, B, CRestriction Elect: ANumber of Applications to Originally Unclaimed Invention C is LimitedCON/CIPClaims: A, CDisclose: A, B, CDIVClaims: BDisclose: A, B, CCON/CIPClaims: CDisclose: A, B, CCODClaims: BDisclose: A, B, CPetitionCODClaims: BDisclose: A, B, CPetition
16Divisional & COD Examples UtilityClaims: A, BDisclose: A, B, CRestriction Elect: ADIVClaims: BDisclose: A, B, CCONClaims: A, CDisclose: A, B, CCODClaims: BDisclose: A, B, CCONClaims: A, CDisclose: A, B, CCODClaims: BDisclose: A, B, CPetition
17Divisional & COD Examples 1. Not a proper COD because does not only claim the invention claimed in the divisional application.BUT2. Permitted under CON/CIP portion of the Rules.Not Permittedw/o PetitionPermittedUtilityClaims: A, B, CDisclose: A, B, CRestriction Elect: AUtilityClaims: A, B, CDisclose: A, B, CRestriction Elect: A1. Not a proper COD because does not only claim the invention claimed in the divisional application.2. Not a proper CON because has more than 2 parent applications.DIVClaims: BDisclose: A, B, CDIVClaims: BDisclose: A, B, CCONClaims: ADisclose: A, B, CCONClaims: ADisclose: A, B, CCONClaims: ADisclose: A, B, C
18Continuing Application Requirements for Priority Claim Without Petition Continuation of PCT (COP) (Bypass Nationalization)COP claims benefit under 35 U.S.C. 120 to PCT application in which:PCT application designated US;Demand has not been filed in PCT application;Basic national application fee for PCT has not been paid; ANDPCT does not claim benefit of other non-provisional or other PCT application designating US.COP is a continuation or CIP of no more than 3 parent applications. (Serial aspect)Parent applications can only provide priority to 2 other applications (Parallel aspect)Continuation of Abandoned Application Due to Failure to Respond to Missing Parts (CAMP)CAMP claims benefit of a parent non-provisional applicationParent non-provisional abandoned due to failure to respond to notice to file missing partsParent non-provisional application does not claim the benefit of any other non-provisional or US designated PCT applications.CAMP is a continuation or CIP of no more than 3 parent applications. (Serial aspect)Parent applications can only provide priority to 2 other applications. (Parallel aspect)
19“One more CON” for COPOf a 120 bypass nationalization of an international applicationDemand and the basic national fee have not been filed in the international applicationThe international application does not claim the benefit of any other nonprovisional application or international application designating the U.S.
21“One more CON” for CAMP Can file 3rd CON without petition U.S. ApplicationThe initial nonprovisional application abandoned for failure to timely reply to a Notice of Missing Parts 37 CFR 1.53(f)The initial nonprovisional application does not claim benefit of either a U.S. application or international application designating the U.S.
22Failure to Respond to Missing Parts (CAMP) “One more CON” forFailure to Respond to Missing Parts (CAMP)UtilityBUT AbandonedFail Respond toMissing PartsUtilityBUT AbandonedFail Respond toMissing PartsCON/CIP“CAMP”CON/CIP“CAMP”CON/CIP“CAMP”CON/CIP“CAMP”CON/CIP“CAMP”CON/CIP“CAMP”PetitionPetitionPetition
23Summary Number of Parent Applications that Can be Claimed (Serial Aspect)Number of OtherChildren for ParentApplications(Parallel Aspect)Examination of ClaimsContinuation21Continuation-in-part (CIP)DIVN/AClaims unexaminedContinuation of Divisional (COD)2 (1 Intervening application between COD and parent DIV plus all parent applications of DIV)1, Except Unlimited DIV’sContinuation of PCT (COP)3No demand & no national stage (claims unexamined)Continuation of Abandoned Missing Parts App. (CAMP)
24“One more CON” For Applications Filed Before Nov. 1st Can file 1 more CON/CIP after November 1, 2007 in Invention Families meeting or exceeding the two CONs/CIP limit if no CONs/CIPs were filed after August 21, 2007.Patent Office has clarified that Divisional applications and Continuations of Divisional applications (CODs) do not count against the “one more CON/CIP” Rule.Note: There is no limit to the number of CONs filed before Nov. 1. The 5/25 rule and the rebuttable presumption of indistinct claims will apply.
25“One more CON” For Applications Filed Before Nov. 1st UtilityUtilityAug. 21, 2007Nov. 1, 2007CON/CIPCON/CIPCON/CIPCON/CIPPetitionPetitionPetition
26“One more CON” For Applications Filed Before Nov. 1st UtilityUtilityCON/CIPCON/CIPCON/CIPCON/CIPCON/CIPCON/CIPAug. 21, 2007Nov. 1, 2007CON/CIPPetitionPetitionCON/CIPPetition
27“One more CON” For Applications Filed Before Nov. 1st UtilityUtilityCON/CIPCON/CIPAug. 21, 2007CON/CIPCON/CIPCON/CIPCON/CIPCON/CIPCON/CIPNov. 1, 2007PetitionPetitionPetitionPetition
28“One more CON” For Applications Filed Before Nov. 1st UtilityClaims: A, BDisclose: A, BRestriction Elect: ACON/CIPClaims: ADisclose: A, BDIVClaims: BDisclose: A, BAug. 21, 2007CON/CIPClaims: ADisclose: A, BCODClaims: BDisclose: A, BNote: Can file more than one if fall under DIV and COD RulesNov. 1, 2007CODClaims: BDisclose: A, BPetitionPetition
29Summary of 2 CONs Rule Number of Con/CIPs Filed Before Aug. 21, 2007 Filed Betweenand Oct. 31, 2007Filed On or AfterNov. 1, 2007Without a PetitionInitial + 0 Con/CIP0 Con/CIP2 Con/CIPs1 Con/CIP2 or more Con/CIPsInitial + ≥1 Con/CIPs
30RCECan file an RCE without petition if an RCE has not been previously filed in:The application;Any parent application (backward priority); orAny child application (forward priority).Divisional applications - can file an RCE without petition if an RCE has not been previously filed in:The divisional application; orContinuation of Divisional (COD) - can file an RCE without petition if an RCE has not been previously filed in:The COD;
31RCEContrary to the USPTO’s initial slide show, you can file RCEs in parallel cases without petition
32Summary of 1 RCE Rule Number of RCEs Filed Before Aug. 21, 2007 Filed Betweenand Oct. 31, 2007Filed On or AfterNov. 1, 2007Without a Petition0 RCEs1 RCE1 or more RCEs
33Petitions to exceed CON/RCE limit $400 fee (1.17(f))Amendment, argument, or evidenceProvide a showing that the amendment, argument, or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application.
34Petition Factors Factors considered: Whether applicant should file an appeal or a petition under rather than a CON/RCEThe number of applications filed in parallel or serially with substantially identical disclosuresWhether evidence, amendments, or arguments are being submitted with reasonable diligence.
35Petitions to exceed CON/RCE limit Sufficient showing:In a CON, an interference is declared in an application containing both claims corresponding to the counts and claims not corresponding to the counts and an APJ (Admin Patent Judge) suggests that the claims not corresponding to the counts be canceled from the continuing application in the interference and pursued in a separate application.
36Petitions to exceed CON/RCE limit The following are NOT sufficient showings to grant petitions for one more CON/RCE:Inadequate examination – file petition under 1.181Examiner made new arguments or new ground of rejection in a final Office actionIndependent claims of a second CON in which the dependent claims contain allowable subject matter and rewriting the dependent claims as independent claims would result in the application containing more than five independent claimsTo include subject matter that was not present at the time of filing the prior-filed applicationTo submit newly discovered references (IDS)
37Petitions to exceed CON/RCE limit More examples of what are NOT sufficient showings to grant petitions for one more CON/RCE:Product becomes commercially viableA competing product is newly discoveredNew information is discovered that could have been provided in the prior applicationApplicant discovers new inherent properties to claimApplicant acquires financial resources to file previously unclaimed inventionsWhen clinical trials indicate the previously unclaimed subject matter may be usefulWhen a court determined that the format of a patented claim is improper and applicant wishes to file a continuing application to seek proper protection
38CIPMust identify the claims that are supported by the parent application.Does not apply to CIP applications that received a FAOM before Nov. 1, 2007.CIP applications filed before Nov. 1, 2007 that did not receive a FAOM before Nov. 1, 2007 have a February 1, 2008 deadline to identify claim support.The examiner may require the location in the specification (page and line number) that support those claims. 37 C.F.R
39Streamlined Continuation Placed on examiner’s Regular Amended docket; not the New Special docket.RequirementsFile complete CON applicationApp must disclose and claim only invention disclosed and claimed in prior-appApplicant agrees that any election in response to restriction/unity of invention in prior app carries over to the CONPrior-filed app under final Office action or appealPrior-filed app must be expressly abandoned upon filing of CON.Must request that CON be placed on examiner’s Regular Amended Docket
40Streamlined Continuation Request for Streamlined Docketing Procedure PTO/SB/201
425/25 Claim Limitation Rules Applicant may present, without an ESD, up to 5 independent claims and 25 total claimsDoes not include withdrawn claims, but does include reinstated and rejoined claimsLater amendments sending claims over 5/25 without an ESD are non-responsive (Notice will be mailed)15/75 limitation considering 2 continuations in invention familyIf over 5/25, PTO will mail NoticeApplicant must: (1) Amend, (2) file ESD, or (3) file SRR (appl. filed before 11/1/07)Consider PTA, will exist in certain situations
435/25 Claim Limitation Rules 5/25 limitation applies collectively to claims in commonly owned pending applications with at least one patentably indistinct claimIf total combined is over 5/25, each application will be deemed to be over 5/25Must (1) cancel patentably indistinct claim from all but 1 appl, (2) file ESD before FAOM, or (3) amend to meet 5/25 limitation5/25 limitation does not apply to a PCT application during international phase.
445/25 Claim Limitation Rules What is a patentably indistinct claim?“The standard for ‘patentably indistinct’ as the term appears in 37 CFR 1.75(b)(4), 1.78 is the same as one-way distinctness in an obviousness-type double patenting analysis. See MPEP 804(II)(B)(1)(a).” PTO Questions and Answers, J19, J26.“If the application at issue is the later filed application or both are filed on the same day, only a one-way determination of obviousness is needed in resolving the issue of double patenting, i.e., whether the invention defined in a claim in the application would have been >anticipated by, or< an obvious variation of >,< the invention defined in a claim in the patent. See, e.g., In re Berg, 140 F.3d 1438, 46 USPQ2d 1226 (Fed. Cir. 1998) (the court applied a one-way test where both applications were filed the same day).”
455/25 Claim Limitation Rules What will count as an independent claim?A claim that refers to another claim but does not incorporate by reference all the limitations of the claim to which such claim refersEx: A method using the apparatus of claim 1, comprising ….Will be counted as an independent claimDependent claimA claim which incorporates by reference all the limitations of the previous claim to which it refers and specifies a further limitation of the subject matter of the previous claim
465/25 Claim Limitation Rules FAOM = first action on the merits = does not include restriction requirements and requirements for informationFAOM received before 11/1/075/25 limitation does not apply (but would apply to CON of app)FAOM not received before 11/1/075/25 limitation does applyNotice (2 mo. is extendable), Applicant must: (1) Amend, (2) file ESD, or (3) file SRRNotice may be combined with Rest. Req., if so, can’t file SRRApplications filed on or after 11/1/07Notice (2 mo. not extendable), Applicant must: (1) Amend, or (2) file ESDNo SRR option after Notice, must be filed earlier
47ESD (Examination Support Document) RequirementsPreexamination search statementListing of most closely related referencesIdentification of claim limitations disclosed by each reference (exempt if small entity)Detailed explanation of patentabilityShowing of support under 112ESD Guidelines Available at:Consider Accelerated Examination if already preparing ESDIf later amend claims out of ESD scope, must supplement ESD
50SRR (Suggested Restriction Requirement) RequirementsElection of no more than 5/25 claims and explanation of why the inventions are independent or distinctIdentification of the elected claimsMust be filed before the earlier of a FAOM or Rest. Req.Best practice tip: file with applicationIf accepted, Examiner will set out the restriction in the FAOMNote: it is now too late to get refund for cancelled claimsIf not accepted:Examiner makes Rest. Req.: Applicant must make election (if over 5/25 must further file ESD or amend)Examiner makes no Rest. Req.: Notice will be mailed, Applicant must either file ESD or amend
51Patent Term Adjustment (PTA) Consequences for Failure to Comply with 5/25 Rule PTA (in this context) only applies to applications filed or nationalized on or after November 1, 2007 (see Applicability Date section)“The changes to 37 CFR 1.78(a) [CON, CIP, DIV Definitions], 1.78(d)(1) [Limiting to 2 CONs/CIPs,etc.], [Default to treat PCT’s entering national stage via 371] and 1.704(c)(11) [PTA failure to comply with 5/25 claim limit] are applicable only to any application, including any continuing application, filed under 35 U.S.C. 111(a) on or after November 1, 2007, or any application entering the national stage after compliance with 35 U.S.C. 371 on or after November 1, 2007.Note: The existing PTA rules carryover, such that PTA will exist in applications filed before 11/1/07 in situations where applicant fails to respond to 5/25 Notice within 3 months
52Patent Term Adjustment (PTA) Consequences for Failure to Comply with 5/25 Rule PTA (in this context) only applies to applications filed or nationalized on or after November 1, 2007 (see Applicability Date for Rule 1.704(c)(11)).Note: The existing PTA rules carryover, such that PTA will exist in applications filed before 11/1/07 in situations where applicant fails to respond to 5/25 Notice within 3 monthsApplication filed with more than 5/25 claims – no ESD & no SRR within 4 months – PTA will existTime begins to run after 4 months and runs until compliance with 5/25 limitation
53How to Calculate PTA For Failure to Comply with 5/25 Rule Any PTA will be reduced by the number of daysBeginning on the day after the later of:Four months from filing/nationalization date; orFiling date of amendment that created the 5/25 non-compliance.Ending on :Filing date of amendment satisfying 5/25 Rule;Filing date of response to restriction requirement in which 5/25 Rule satisfied;Filing date of SRR complying with 5/25 Rule; orFiling date of compliant ESD.
54Refunds for claims fees Applies to fees paid after 12/8/04Applies to amendments canceling (not just withdrawing) claims filed before FAOM (no certificates to get date)Request must be filed within 2 mo. of amendment, and on or after 11/1/07Result of the Consolidated Appropriations Act, was set to expire 9/30/07. Congress passed a continuing resolution to continue the Act until 10/19/07. At that time, they will either pass another continuing resolution or enact a new Act.
55Disclosure of “Related” Patents and Applications
56Disclosure of “Related” Patents and Applications Applicant must, without PTO prompting, identify all “related” patents and applications.“Related” patent(s) and application(s) have:One common inventor, andA filing or priority date(s) within 2 months of one another, andA common assignee or obligation to assign
57Disclosure of “Related” Patents and Applications Filing or Priority DatesThis includes: foreign priority date, actual filing date, and any prior-filed provisional or non-provisional application that is the basis of priority.All priority/filing dates for an application or patent must be considered.Exceptions - do not need to reportPCT application not nationalized in US.PCT Applications - International filing date (and not 371 national stage date) is used to determine same filing date or 2-month window.
58Disclosure of “Related” Patents and Applications Common OwnershipIn the case of more than one assignee, application(s) and/or patent(s) are “commonly owned” if wholly owned by same (identical) person(s), organization(s)/business entity(ies) at the time the invention was made.Inventions of two, separate, wholly-owned subsidiaries are commonly owned by the parent company.Mergers & acquisitions – determine owner of each, related document at time the invention was made.Parties to a joint research agreement under the CREATE act are considered an owner (§1.78(h)).
59Disclosure of “Related” Patents and Applications Common Ownership ExampleCompanies A and B have a joint development agreement in place when invention X is made (as analyzed under the CREATE Act)The invention is considered to be owned by AB.Any other pending applications and patents owned by AB (jointly) satisfying the common inventor and filing/priority date window requirements must be reported.Pending applications and patents owned solely by A, solely by B or by another entity (e.g., ABC) do NOT need to be reported by AB.
60Disclosure of “Related” Patents and Applications Submit “Listing of Commonly Owned Applications and Patents” to PTO(at least by the LATER of):4 months from filing date of application (or beginning of national stage)2 months from mailing date of filing receipt in another, related application.Applications filed before Nov. 1, 2007, have until Feb. 1, 2008, or time periods above.
61Disclosure of “Related” Patents and Applications Exception: Applications filed before Nov. 1, 2007The two-month window does not apply.Only need to identify if have identical filing/priority date.Exception: Application filed on or after Nov. 1, 2007 claiming priority to applications/patents filed before Nov. 1, 2007The two-month window does not apply to the priority applications filed before Nov. 1, 2007.Only need to identify applications/patents if they have identical filing/priority date before Nov. 1, 2007.Note: Applications filed on or after Nov. 1, 2007 or claiming priority to applications filed on or after Nov. 1, 2007 still need to identify related applications/patents within the 2 month window.
62Failure to identify “Related” Documents Second or subsequent Office Action made final, even when double patenting rejection is new.Possible grounds for making the patent unenforceable due to inequitable conduct.Multiple violations - practitioners may be referred to the Office of Enrollment and Discipline.
63Listing Of Commonly Owned Applications And Patents PTO/SB/206
64Rebuttable Presumption of Patentably Indistinct Claims
65Rebuttable Presumption of Patentably Indistinct Claims 37 C. F. R. §1 Rebuttable presumption that there is at least one patentably indistinct claim if:One common inventor, andCommon assignee or obligation to assign to common assignee, andSame priority/filing date(s), andSubstantial, overlapping disclosure.
66Rebuttable Presumption of Patentably Indistinct Claims Substantial overlapping disclosureOccurs when one patent/application provides written description support (35 U.S.C. 112, para. 1) for at least one claim in the other patent/application.Expressly or incorporation by referenceSingle common sentence or disclosed element most likely not enoughDrawing(s) in common probably enough
67Rebuttable Presumption of Patentably Indistinct Claims I have a rebuttable presumption, what now?Applicant must take action on own initiativeAppropriate action depends on disposition of casesPending application + issued patent / allowed applicationPending application + non-allowed application
68Rebuttable Presumption of Patentably Indistinct Claims Pending application + issued patent / allowed applicationRebut the presumption (one-way obviousness test: M.P.E.P. §804(II)(B)(1)(a)); ORFile a terminal disclaimer. “Good and sufficient” reason not required.Deadline for acting: 4 months from the filing date (or beginning of national stage) of pending application.
69Rebuttable Presumption of Patentably Indistinct Claims Pending application + non-allowed applicationPossible actions:Rebut the presumption; ORAmend/cancel claims (and then rebut); ORFile terminal disclaimer; AndShow “good and sufficient” reason for multiple applications with patentably indistinct claims; ANDMeet 5/25 limitation for combined total claims
70Rebuttable Presumption of Patentably Indistinct Claims “good and sufficient” reasonExceptional cases (subjective)Examples:allowance in prior-filed application was withdrawn by PTO;Interference declared in prior-filed application. Later-filed application claims embodiment not involved in interference.
71Rebuttable Presumption of Patentably Indistinct Claims Pending application + non-allowed applicationMust take action in both casesDeadline for acting: (the later of)4 months from the filing date (orbeginning of national stage); OR2 months from mailing of filing receipt in non-allowed application
72Rebuttable Presumption of Patentably Indistinct Claims Pending application + non-allowed applicationIf amending claims, determine if amended claim has written description support in related application.Deadline for acting:Date amendment is filed.
73Comparison of Rules – When Implicated OwnershipInventorshipFiling/Priority Date(s)DisclosureClaimsReporting: Identification of Pending Applications and Patents (f)(1)Owned by same personAt least one common inventorLook at filing date:If after 11/1/07, 2-month window applies unless priority before 11/1/07;If before 11/1/07, only ID if same date.Rebuttable Presumption of Patentably Indistinct Claims 1.78(f)(2)Same as other pending non-provisional applications or patentsSubstantiallyOverlappingEliminate Patentably Indistinct Claims From All but One Application w/o Good Reason 1.78(f)(3)At least one claim patentably indistinctGroup Applications Together for 5/25 Claim Totals 1.75(b)(4)
74Comparison of Rules - Actions Required ActionFrom Filing or National Stage Entry DateFrom Mailing Date of Filing ReceiptOtherReporting: Identification of Pending Applications and Patents 1.78(f)(1)Submit form identifying other pending non-provisional applications and patents with filling/priority dates within 2 months (after 11/1/07 unless priority before 11/1/07) or same (before 11/1/07).4 Months2 MonthsRebuttable Presumption of Patentably Indistinct Claims 1.78(f)(2)Submit rebuttal or terminal disclaimer (with explanation, if required)Date Patentably Indistinct Claim Presented
76Scenario 1Scenario: How to satisfy the reporting requirement in large portfolios being handled by both inside and outside counsel?Possible Actions:Maintain database with all patents and applicationsInternally orOutside CounselUse Private PAIREach firm has a client specific customer numberEach firm (and client) reviews Private PAIRConsiderations:Segregating work between outside counsel based on inventor(s) / subject matter.Even if consolidating outside counsel will not solve problems if still filing in house.
77Satisfy Reporting Requirements Solution Generally Needs to AddressOutput - How to Easily Check if You Need to Report Other ApplicationsWhere to Store Application Data For Reporting PurposesHow to Maintain Application DataMain issue: communication about applications not yet published
78How to Easily Check if You Need to Report Other Applications Consider Web Access Solution to Provide Universal AvailabilityReporting rule requirements are generally divided betweenApplications Filed Before Nov. 1stCommon inventorSame Filing/Priority DateApplications Filed On or After Nov. 1stFiling/Priority Date within 2-month window
80How to Easily Check if You Need to Report Other Applications Applications Filed Before Nov. 1stCommon inventorSame Filing/Priority DateUse Computer Power to Generate ReportUse a database to generate reportsIf certain data complete, base report on filing date and check family information to supplement reportSimpler solution is to incorporate priority data when generating report
81How to Satisfy the Reporting Requirement Applications Filed Before Nov. 1st - Sample Matching Filing Date and Common Inventor Report
82How to Easily Check if You Need to Report Other Applications Applications Filed On or After Nov. 1stCommon inventorFiling/Priority Date within 2-month windowAgain Use Computer Power to Generate ReportIf certain data complete, base report on filing date and check family information to supplement reportSimpler solution is to incorporate priority data when generating report
83How to Satisfy the Reporting Requirement Applications Filed On or After Nov. 1st - Sample “2-Month Window” and Common Inventor Report
84How to Satisfy the Reporting Requirement Where to Store Application Data For Reporting PurposesOptionsPrivately maintain databaseAccess public/semi-publicly available recordsNo Cookie Cutter SolutionBudgetary FactorsPast Practices for Maintaining Application DataInformation Technology SupportDegree of risk willing to bearHow to Maintain Application DataMain issue: communication about applications not yet published
85“Private Records” Option Variation - Centralize Application DataIn House; orOutside CounselRequire Reporting Application Data in Standard Format (e.g., Excel spreadsheet)When Application FiledInventorship, Assignment, and/or Priority ChangesConsider using e-Office Action Pilot Program - cc: to primary data holderRequests are sent to primary data holder before reporting deadlineData accessed through web portalIn HouseApp.DataIn HouseOROutside #2App.DataOutside #1Outside #1Outside #2
86How to Satisfy the Reporting Requirement Consider Double Checking Internal Data with Public Data
87“Public Records” Option File All Applications via EFS With Unique Customer Numbers for the Client. For Example:In House For Client A - Customer No. 123Outside Counsel #1 For Client A - Customer No. 456Outside Counsel #2 For Client A - Customer No. 789For Each Customer Number Keep Standard Address, but Add All Attorneys/Agents That Work for the Client as Having Power of AttorneyIn House and Outside Counsel will Obtain Application Reporting Data Via Public Records Using Standard Search CriteriaPrivate PAIRUSPTO SearchPublic Databases (if desired) - Delphion, etc.For a Limited Window of Time - Will Need to Communicate List of Unpublished Applications Pending Applications Not Associated with the Client Specific Customer NumberWill Need to Report to Other Counsel When Inventorship, Priority, and/or Inventorship Change Creates an Issue for Other CounselPAIR,USPTO,DelphionOutside #2Outside #1In House
88Reporting Requirements - General Always Cite Family MembersForwards and BackwardsUse USPTO form PTO/SB/206Consider Preparing Report Prior to 4 Month Deadline and not when filedReduces duplicate effort
89Scenario 2Scenario: Application currently (before 11/1/07) under final rejectionConsiderations:Any unclaimed subject matter?Possible Actions:Search family’s prosecution history to determine if an RCE has already been filed for the claimed invention. If yes, file an RCE to add claims before 11/1/07Consider filing CONs or amend to add claims before 11/1/07
90Scenario 3 Option #3: Combine Option #1 and Option #2 Scenario: What is the best way to add unclaimed subject matter ad/or new claims before Nov. 1, 2007?Option #1: File multiple continuation applications in parallel before Nov. 1st:PositivesDo not need to file SRR’s.Assuming an RCE was not filed in parent case(s) you will be able to file an RCE in each line of continuation applications.NegativesLimited continuations - lose “one more” continuation.High risk of 5/25 claim violations.Increase reporting requirements.Increase chance for a terminal disclaimer.Expensive.Need to file before Nov. 1st.Option #2: Add claims to a single case and file SRRChance to receive restriction requirementIncreases the number of continuation application opportunities.Eliminates need for terminal disclaimer.Eliminates some 5/25 claim limit issues.Reduces reporting burden.Filing fees are less.Not necessary to file before Nov. 1stRestriction requirement not certain.Option #3: Combine Option #1 and Option #2
91Scenario 4Scenario:Invention family with multiple inventions disclosed (e.g., inventions A, B & C), andAt least one invention does not have claims currently pendingE.g., only one DIV (claims to invention B) currently pending (before 11/1/07)Considerations: After 11/1/07, all continuing applications claiming priority to DIV may only have claims to invention claimed in DIV (invention B)Possible Actions:Amend currently pending DIV to add claims covering unclaimed invention (and change priority as a CON)File CON to unclaimed invention before 11/1/07
92Scenario 5Scenario: FAOM received in one application before Nov. 1st, but not in another invention family applicationConsiderations: 5/25 limitation will apply to case in which FAOM not received (both individually and collectively with all invention family applications)Possible Actions: Determine if claims are patentably distinctDistinct: rebut presumption in both casesMust still meet 5/25 limitation individually in case not having FAOMNot Distinct: amend to patentably distinct (and rebut presumption)Not Distinct: consolidate into 1 applicationAvoid more than one application justification (§1.78(f)(2)-(3))If over 5/25, file SRR or wait for Rest. Req.; could file ESD
93Scenario 6 File terminal disclaimer Scenario: Family contains a large number of non-allowed applicationsConsiderations: Rebuttable presumption of patentably indistinct claimsPossible Actions:Get cases allowed before Nov. 1stIf distinct, rebut presumption of patentably indistinct claimsConsolidate Claims into 1 Case or a CIPIf over 5/25, submit SRR or wait for possible Rest. Req.; could submit ESDAvoid more than one application justification (§1.78(f)(2)-(3))Amend so each non-allowed application presents distinct claims (and rebut presumption)Must still meet 5/25 limitation in individual applicationsFile terminal disclaimer
94Scenario 7Scenario: How to claim previously unclaimed subject matter after 11/1 if application has exhausted 2 CONs + 1 RCE?Possible Actions:If < 2 years from issuance, file a broadening reissue with claims to previously unclaimed matter.If > 2 years from issuance, possibility to file narrowing reissueWith the reissue, you will be able to file 2 CONs + 1 RCE.Consider 1 more CON.
95Scenario 8Scenario: Received foreign search report with new references and already exceeded The search report was mailed over 3 months ago so you cannot make a certification under 1.97(e).Considerations:RCE NOT possible (see comments to Rules)Possible Actions:Consider if “one more” rule appliesPetition to suspend the rulesConsider Reexamination /Reissue of parent patentMemo analyzing relevance
96Scenario 9Scenario:Application filed after Nov. 1st has claims directed to Inventions A, B, C and D.Receive 1st Restriction to Group I - A, B & C and Group II - D.Respond by electing Group I (A, B & C).Receive and respond to 1st Non-final OA.Receive 2nd Restriction Requirement requiring to elect A, B or C.Respond by electing CProblem: According to rules cannot file divisional applications to Inventions A & B because A & B already examined.Possible Actions: PTO Less Draconian in FAQ2nd restrictions will now be rare - need to be authorized by head of Technology Center.PTO will consider A & B as not being examined if second restriction issued.
97Scenario 10Scenario:Received restriction and elected invention AFiled divisional to unexamined invention BProblem: Can you file 2 CONs for invention A claiming the benefit of divisional B?Answer: NO, according FAQ C12, see Rule 1,78(d)(1)(iii). Only can file 2 CONs of divisional B directed to invention BPossible Actions:Incorporate claims directed to invention A into the “divisional” B application and change priority claim from the “divisional” application to a “continuation” application.No petition required to merely change application type after 4 monthsThere is an unresolved question as to whether you can do this after an Office Action. Not sure questions as to whether Rule “Subsequent presentation of claims for different invention” will be treated as a restriction requirement.File another divisional to invention B.
98Scenario 11Scenario: How to increase the certainty of having multiple divisional applications for applications filed after Nov 1, 2007.Possible Actions:File the application as a PCT applicationIf possible, designate EP searching authority.Can pay additional search fees & file Article 19 amendments
99Scenario 12Scenario: How do you maximize potential to cover future products for applications filed after November 1, 2007?Possible Actions:File provisional applicationFile PCT application claiming benefit of provisionalNationalize or file bypass CON & prosecute with small claim set.Appeal often.At second continuation (after using RCE) file a large number of claims with an SRR and hope for restriction so that can file multiple divisional applications.Delays having the restriction requirement set too early before products are developed.Must remain aware of “not examined” requirement for divisionals because one of the early CONs might hide a similar claim that was examinedFor Utility applications use a similar tacticTo reduce SRR risk of not being accepted, instead file large claim set and SRR in 1st CON so 2nd CON acts as an insurance policy.
100Scenario 13Scenario: How to reduce the risk that a non-US patent office will cite prior art too late during prosecution (i.e., after final or allowance)?Possible Actions:File in countries outside the US (OUS) that will likely contain the best prior art or where you will likely foreign file.Obtain foreign filing license from USPTO, if needed.Request expedited examination (e.g., EPO - no charge & no reason needed to expedite examination).File provisional application to avoid intervening 102(b) prior art issueAs a practical matter, you might want to file the provisional application first because it makes obtaining an expedited foreign filing license a little easier.File PCT application claiming benefit of provisional and foreign applicationsPay additional search fees & do not file a demandNationalize in US close to Chapter II deadline to extend time to receive foreign search resultsPossible added benefit: might be able to expedite US examination through patent prosecution highway program (Japan and United Kingdom Patent Offices are participants).
101Scenario 14Scenario: How do you reduce the chance of being required by the USPTO to file a terminal disclaimer?Possible Actions:Remove the rebuttable presumption of patentably indistinct claim of rule 78(f)(2)File applications 1 day apart (e.g., file applications directed to the molecule/apparatus, method of treatment/use, and method of manufacturing on different days).Do not share common specification and/or drawings.Do not incorporate by reference.
102Scenario 15Scenario: You want to maximize the number of claims for both a Genus and Species and want to minimize impact of 5/25 Rule, reporting requirements, and patentably indistinct presumptionPossible Actions:Consider Dual PCT and Utility approach claiming benefit of common provisional (file 1 day apart to avoid rebuttable presumption)File at or near the same timeUS utility applications with Broader (Genus) Claims &PCT with narrower (Species) claims - large number of independent species claims to get unity of invention rejection so can file multiple divisionals & may strengthen patentably distinct argument for genus.Try to get utility allowed before PCT’s Chap II deadlineDelays 2+1, 5/25, reporting, and presumption issues
103Scenario 16Scenario: How to address the 5/25 limitation, as well as others, in large portfolios being handled by multiple firms?Possible Actions:Maintain claims/subject matter database per invention familyInternally orOutside CounselCoordinate so that prosecution is serialSegregating work between outside counsel based on subject matterAvoid justification (§1.78(f)(2)-(3)) and 5/25 limitation
104Scenario 17Scenario: How can you use the new rules against competitors?Possible Actions:Send competitor prior art just after allowance/issue fee payment so that they waste RCEs or CONs.Note: New IDS rules will allow applicant to consent to 3rd party protest for unsolicited documentsLitigation-new grounds for inequitable conduct and estoppel - ESDs, reporting, etc.
106What You Need to Do Now (Before Nov. 1st) Review all applications under final to determine if you can/should file RCE .Submit all IDS’s requiring a second RCE.Review all divisional applications to determine if to add claims and change to CON to incorporate unclaimed or previously claimed inventions.
107What Would be Nice to Do Now Create policy for firms handling work & update dataReporting requirements5/25 claim limitsCreate Docket EntriesFebruary 1, 2008 DeadlineFile related application/patent reports (for cases having the same filing/priority date) in applications filed before November 1, 2007.CIPs filed before Nov. 1, 2007 to determine if claim support report needed (FAOM received?).4 Month from filing/national stage dateSubmit identification of commonly owned applications and patentsCheck 5/25 - cancel, submit rebuttal of patentably indistinct claims or terminal disclaimer2 Month from amendment canceling claimsRequest refundReview CIPs to determine if you should remove priority - avoid limiting number of continuations off parent case and CIP.
108What You Do NOT Need To Do Now Don’t worry about the 5/25 claim limits before Nov. 1stAlthough 5/25 rule applies to all applications without FAOM before Nov. 1st, PTA is NOT a concern because the PTA rule (Rule 1.704(c)(11)) is only applicable to applications filed on or after Nov. 1st.You will receive a Notice that you exceed 5/252 month time to reply is extendableApplicant must: (1) Amend, (2) file SRR, or (3) file ESDNote may lose opportunity to file SRR if notice is combined with Restriction RequirementNote PTA rules will apply if you file a late response to the Notice.
109What You Need to Do Before Feb. 1, 2008 Applications Filed Before Nov. 1stSubmit report identifying applications with same filing/priority date.CIPsIf FAOM before Nov. 1st, no action required.If FAOM not before Nov. 1st, file claim support document.Applications filed After Nov. 1stSubmit report identifying applications with filing/priority date within 2 month window (note exceptions to priority claim before Nov. 1st) within 4 months of filing.File SRRs even if under 5/25 limit.Limit claims to 5/25 limit.If over 5/25, file an (1) SRR, (2) wait for possible Rest. Req. (unattractive option – if don’t receive Rest. Req., must use a CON), or (3) ESD (consider filing an SRR along with ESD to preserve PTA if ESD is non-compliant).Get applications allowed to take them out of the reporting requirements.
111Invention Disclosures Try to segregate invention disclosures to individual inventionsLong term will help with reporting requirements by limiting the number of inventors on an applicationGranular Invention Disclosures will help with divisional or separate application decisionWill help limit the number of references found during search which might help with future IDS rulesRequires more detailed invention disclosuresNo surprises when application drafted (new embodiments) can create unclaimed subject matter and claim limit problemsPrioritize Invention DisclosuresHow much searchingHow the application is draftedHow the application is prosecuted
112Patent Search Patent Searches are more important Need a better idea of art for drafting claims, so know weaknesses before the first Office Action (2+1 Rule)When available, follow USPTO Search Templates for ESD purposesAvailable atIf IDS Rules FinalizedKeep inventions (disclosures) compartmentalized to limit number of references from each searchMaintain a list of classes and subclasses from search because can be helpful in drafting an SRR to show that the claims cover different classes and subclasses.
113Patent Search – Types Standard Approach ESD or ESD Like Approach Quick Search to Find Knockout artESD or ESD Like ApproachQuick search to find knockout artDecision to fileDraft rough claim with all dependent featuresSearch all claims - Use USPTO search templatesConsider using different searchers for each searchLeaves option open for ESDConsider Filing PCT to Further Gain Benefit of Search Report
114Patent Application Drafting GeneralNeed to understand overall strategy of the caseConsider if ESD appropriate case (if ever)SpecificationConsider limiting incorporation by reference to reduce the chance of patentably indistinct presumptionLimit subject matter described to the invention to avoid describing overlapping subject matter that would support claims in other case(s) that would create patentably indistinct presumptionCross reference to other related applications where benefit is not claimed needs to be in a separate paragraph (Rule 1.78(d)(6))ClaimsLimit 5/25Draft Claims to provoke restriction & consider SRRDo not leave unclaimed subject matterUse Markush claims to reduce claim totalsClaim order more important in PCT applications because will dictate the order in which inventions are prosecuted once nationalizedConsider interference like omnibus claim (e.g., A or B)DrawingsRecycling drawings from other applications may invoke presumption of patentably indistinct claims
1151st Filed U.S. Applications Provisional ApplicationsConsider filing a series of provisional applications where product is being developed because provisionals not subject to 2+1 Rule, 5/25 Rule, and reporting rulesConsider provisional to delay examination in order to cover future productsUtilityConduct search for cases that might create presumptionForeign Priority - Need to Track Dates for ReportingRule problem discovered - consider converting to provisional to give time to fix problem (e.g., 5/25 notice - 2 month no EOT)
116PCT ApplicationsMight be more desirable now – subject to delaying US patent issuance5/25 Rule does not apply during international phaseSearch might provide art which will help decide how to prosecute in the USCan amend claims without wasting an office actionNot subject to reporting requirements until nationalizedNot subject to rebuttable presumption of patentably indistinct until nationalizedIssue: New PCT rules increased filing costs cost moreNationalization - which way is better371 Route - PCT restriction rules applyClaims subject to unity of invention rejection can file separate divisionals at nationalization.Filing a demand does not cause problem with divisional applications.120 Bypass Route & 371 Route - get generally the same number of CONs (120 Bypass – one more rule), but must NOT file a Demand, so limited in amendments and argumentsCan pay additional search fees without causing problems for divisionalsMake standard practice to not file a demand to keep nationalization options openNote impact of not filing demand: Will lose opportunity to directly nationalize in a few countries (e.g., Switzerland, etc.) if not nationalized by Chap. 1 deadline, but can nationalize through regional office (e.g., EPO, etc.)Consider Dual PCT and Utility approach claiming benefit to common provisionalUS Broader (Genus) Claims & PCT Narrower ClaimsTry to get allowance before PCT’s Chap II deadlineAvoids 2+1, 5/25, reporting, and presumption issues
117Design Applications Only have a 2 Rule and not 2+1 Rule Only can file two continuations/CIPsRCEs not permitted in Design ApplicationsReporting requirement appliesRules not clear about patentably indistinct presumptionIf common drawing with utility application will likely create presumption, but easy to rebut.Rules not clear how or if 5/25 Rule would apply to Design Applications
118Continuing Applications GeneralTrack number of applications in invention familyTrack number of RCE’s in invention familyProsecute SeriallyExhaust CON before filing divisionalsConsider SRR at filingFile Family report when filed & supplement at 4 month from filingContinuationFile rebuttal or terminal disclaimer at filingContinuation-in-partAvoid due to support reporting requirementsMust identify the claims that are supported by the parent application.The examiner may require the location in the specification (page and line number) that support those claims. 37 C.F.RCannot File CIP of a divisionalDivisionalStill must rebut presumption of indistinct claims - Consider submitting paper at filing indicating that subject to restriction and presumption should not applyRestarts 2+1 RuleCIPs of divisionals not permitted
119Patent Application Filing Identify related applicationsConsider Terminal Disclaimer, ESD, etc.File SRR even below 5/25 limit so as to create opportunity of more divisional applicationsWhen possible, file non-publication request to avoid creating 102(b) art that could be used to invalidate a continuing application that was not granted a priority date
120Docket Dates Docket 4 month to identify related cases Docket 4 month to take action on rebuttable presumptionIf over 5/25, docket 2 weeks to file SRR, amend, or ESD. (No set date in Rules for this docket entry, but need to address quickly before the notice.)Feb 1, 2008Submit related cases reports in cases where filing/priority date is identical for applications filed before Nov. 1st.Identify claim support in CIPs filed before Nov. 1st, that did not receive a FAOM before Nov. 1st.
121Post Filing Notices Receive Notice that application is over 5/25 Docket 2 monthsAppl. filed before 11/1/07Time is extendableFile SRR, Amend, or ESDAppl. filed after 11/1/07Time is not extendableFile Amend or ESD
122Patent Application Assignment “Common Ownership”Mergers & acquisitions – key is ownership (for all related documents) at the time the invention was made.Parties to a joint research agreement under the CREATE act are considered an owner (§1.78(h)).Inventions of two separate, wholly-owned subsidiaries are commonly owned by the parent company.
123Foreign FilingNeed to Track Prior Foreign Application Filing Dates for Reporting PurposesAlternative #1: Consider foreign filing first in countries that typically have relevant prior art so that art is available before US examination.File counterpart US provisional to avoid 102(b) issuesEPO consider requesting expedited examinationAlternative #2: Consider Delaying Examination in Foreign Cases until after US Prosecution concludes for the first caseAvoid burning RCE/CON on an IDSMight help with limits under new IDS RulesRequest Foreign Associates to promptly report Search/Examination Reports so IDS is timely filedMight Not Foreign File so can file non-publication request to avoid creating 102(b) art.
124PublicationIf possible, consider Non-Publication Requests when application is filed to avoid creating 102(b) art where lose priority because of violating 2 CON limit or where want to capture unclaimed subject matter that is disclosed in the application.Consider Filing Application Data Sheet to Identify Current Owner in Published Applications - easier tracking and searching for reporting requirements.If added new claims, consider filing a request for republication so that damages toll.
125IDSConsider Delaying Examination in Foreign Cases until after US Prosecution concludesAvoid burning RCE/CON on an IDSMight help with limits in proposed IDS RulesRequest Foreign Associates to promptly report Search Reports so IDS is timely filedConsider limiting number of search results from patent searches (in view of proposed IDS rules)Be selective in dependent claims so as to eliminate irrelevant art
126RestrictionNever Traverse because a restriction requirement creates a new “Invention family” which is entitled to 2 CONs/1 RCEConsider filing an SRR in every case where may have more than 1 invention, even if claims are less that 5/25.PCT Applications might help for restrictions
127Prosecution Practices First Office Action Under New Rules 2nd Final Office Actions will be more common so prosecution will be more compactConduct InterviewsPrepare 1st response like an Appeal BriefSubmit affidavits or other evidence in 1st responseMake Claims in Condition for Allowance - know number of independent claims availableObviousness Type Double Patenting will be more commonBe careful – more terminal disclaimers greater risk of not being commonly assignedNew/Amended Claims - Check for rebuttable presumptionPatentably Distinct: Rebut PresumptionPatentably Indistinct:Other case is allowed application/patent, file Terminal DisclaimerOther case is non-allowed applicationMake claims distinct: re-amend or deleteExceptional circumstances: provide “good and sufficient” reason for addt’l app & don’t exceed 5/25 limitRemove Any Claim Interpretation IssuesAids acceptance into Pre-Appeal Brief Review Program
128Second / Final Office Action Try to Interview (again) if Examiner ReceptiveFile Response by 2 month deadlinePrepare Response like appeal briefRemove Claim Interpretation IssuesSo you can use Pre-Appeal Brief Program
129RCE Final Office Action Before Nov. 1 Use RCE 1st File RCE - if one or more RCE’s already in FamilyUse RCE 1stwant to file petitions off CONS (conservative approach)If a petition filed off an RCE is denied, the application can be abandoned before you receive a decision on the petition.If a petition filed off a CON is denied, the application only loses the priority dateTrack RCE’s in FamilyNote RCE on FileTrack Electronically
130Appeal Consider Pre-Appeal Brief Review Pilot Program Allows to address “bad” final Office Actions without the need to prepare a full appeal briefPanel of Examiners (including the Examiner for the case) will reconsider grounds for rejection.Must file request with Notice of Appeal (No EOT) and cannot file with Appeal Brief.Proper Grounds to Use ProgramClear errors in fact or law in the examiner's rejections; orThe examiner's omission of one or more essential elements needed for a prima facie rejection.Improper Grounds to Use Program - Use Full AppealClaim interpretation issuesFiling RequirementsNotice of Appeal along with any EOTsPre-Appeal Brief Request for Review Form PTO/SB/33Arguments - 5 pages or lessDO NOT file an Appeal Brief with Request - will remove from programDecision from PanelAppeal process continues - 1 issue remains for appealApplication allowedProsecution ReopenedRequest denied (improper)Time period for filing an appeal brief will be reset to later of:One-month from mailing of the decision on the request, orTwo-month time period running from the receipt of the Notice of Appeal.Proposed Appeals Rules ConsiderationsStricter requirements (e.g., brief require claim charts, limited extensions, etc.)
131Allowance Want Notice of Allowance as soon as possible Authorize Examiner AmendmentsFor Patentably Indistinct Claims, file Continuation after Notice of AllowanceAvoid “good and sufficient” reason justificationAvoid 5/25 (multiple applications) limitationGet Applications Allowed Before Nov. 1Avoid 5/25 problems (single or multiple applications)Eliminate multiple, non-allowed applications having patentably indistinct claims (requiring “good and sufficient” reason)Check Inventorship at allowance to eliminate any “non”-inventors (reduce reporting load)Consider filing Comments on Reasons for Allowance to preserve Broadening Reissue rights
132Issuance and Maintenance Fees Issue Fee PaymentPay issue fee as soon as you receive a Notice of Allowance to window of competitor “game playing” that will cause you to submit additional CON/RCEPlace assignee on Patent for trackingIssue NotificationCheck Patent Term Adjustment IssuesMaintenance FeesMust identify and, when necessary, rebut presumption when a common inventor / common owner situation exists with an application and a patent that has expired due to failure to pay maintenance fees.
133Reissue Reissues Same standard to file reissue: Error which causes the patent to be "deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.“An attorney's failure to appreciate the full scope of the invention was held to be an error correctable through reissue. MPEP 1402Applicants may file a reissue application under 35 U.S.C. 251, if appropriate, to submit claims with a different scope.2+1 Rule Applies to reissueCan file 2 reissue continuation app’s + 1 RCE, w/out justification. Even if app for original patent was a 2nd continuation app.
134ReissueDisclosure of “Related” Documents and Rebuttable Presumption Applies to Reissue5/25 Rule Applies to ReissueChanges apply to reissue app’s filed on or after Nov. 1, 2007 and any reissue app in which a FAOM was not mailed before Nov. 1, 2007.ESD not req’d if reissue app does not seek to change claims in patent being reissued.Change in claims is sought either by addition of a claim, or amendment to claim or spec which changes a claim.
135Other Proceedings Reexamination Interference Consider if unable to file IDS due to 2+1 limitInterferenceLess likely to copy claims due to 5/25 limit
136Litigation ESD - creates estoppel. Obviousness type double patenting issues magnified by increased number of terminal disclaimerCommon assignee issueGrounds for inequitable conduct if fail to correct improper priority claim (see, Nilssen v. Osram Sylvania (Fed. Cir. 2007)).
137Other Proposed Rules to Consider PCT Rules - Increased Search FeeIDS - Limit to 20 ReferencesMore Stringent Appeals FormalitiesMarkush Limits… We’ll be back
138New Final PCT RulesRestoration of priority rights - does not yet apply in the US, but the earliest priority date, including restored dates, will be used as a basis to calculate PCT time limits/deadlinesPermits the insertion of a missing portion of the application without the loss of a filing date via incorporation by reference on PCT RequestPCT Rule changes directed to clarifying the circumstances and procedures under which the correction of an obvious mistake may be made in an international application - No change needed in the USIncreased search fee to $1, The search fee is applicable, regardless of whether there is a corresponding US prior nonprovisional application (i.e., no reduced fees if previously filed counterpart US application)
139Proposed IDS Rules Requirements for each period has changed 1st Period - IDS filed within 3 month or before FAOM - just submit IDS (exceptions below).2nd Period - IDS filed after FAOM - explanation and non-cumulative description.3rd Period - IDS between allowance and issue fee payment - Timeliness certification and patentability justification (including, explanation and non-cumulative description).4th Period - IDS after issue fee payment - includes 3rd Period requirements plus petition to withdraw from allowance, statement of unpatentable claims, amendment, & patentability reasons for amended claims.IDS fees eliminatedExplanation required before FAOM (1st Period)Cite over 20 references - explanation for all references.References over 25 pages.Non-English language documents.Exceptions1st Period Explanation - Not required if submit foreign search report citing the references2nd Period Explanation and Non-Cumulative Description - Not required if submit foreign search report and certification submitting within 3 months of first cited.Amendments - re-explanation for IDS or indicate nothing changed.Consent to protest by 3rd party of unsolicited documents received from 3rd party.
140Proposed IDS Rules Time Periods 1 - 4 From USPTO Presentation Application Prosecution Timelineand corresponding IDS requirementsApplicationFiledFirst Office Actionon the Merits (FAOM)Allowance ofApplicationPayment ofIssue FeeTime Sufficient for ConsiderationPatentThird PeriodTimeliness cert., andPatentability Justification which includes: Explanation,Non-cumulative description, and either:(A) Patentability reasonsfor unamended claims; or(B)(1) Statement of unpatentable claims,(B)(2) Amendment, and(B)(3) Patentability reasons for amended claim(s)Fourth PeriodTimeliness cert.;Patentability Justification which includes:Explanation,Non-cumulative description,Statement of unpatentable claims,Amendment, andPatentability reasons for amended claim(s); andPetition to w/d from allowanceFirst PeriodUp to 20 citations permittedw/o any explanation req’d.Explanations req’d for:each ref. >25 pages, or innon-English language, or forall refs when more than 20Second PeriodExplanation, andNon-cumulativedescription
141Proposed Appeals Rules Additional format requirements and sections (e.g., claim support, drawing analysis, etc.)Page limits - 25 pages for Appeal Briefs and 15 pages for Reply BriefsLimits Extensions of Times after Appeal Brief FiledFurther limits arguments that can be presentedLimits amendments that can be made and evidence presentedMakes it easier to abandon applications without noticeExaminer Makes a New Rejection - the applicant must within 2 months (to avoid abandonment) request appeal to continue (file reply brief) or request reopening of prosecution (file response).
142Proposed Markush Claims Rules An intra-claim restriction is proper unless all species share a substantial feature essential for common utility or species prima facie obvious over each other.Can file an explanation why claim limited to a single inventionA claim may not incorporate part of the specification by reference unless absolutely necessary.Markush alternatives:must be substitutable;may not encompass other alternatives;may not be a set of further alternatives; andmust not make the claim difficult to construe.
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