Patent Law

What, Me Worry? Continuation and Claim Rules Summary, Part Cuatro

By Douglas J. Sorocco, J. Matthew Buchanan, Laura C. Woods and Emily E. Campbell.

Your head is probably still spinning from the USPTO’s Aug. 21, 2007 Final Continuation and Claims Rules, and there is no doubt that panic, discomfort, and long hours have set in for most, if not all, patent practitioners.  Have no fear!  There is no need to worry—this post identifies the critical dates and steps you can take to ensure a smooth transition into compliance with the new rules.    Alright fellow intellectual property enthusiasts, take a deep breath, buckle your safety belts, and enjoy a delectable excursion through the realm of patent reform.

There are essentially two critical dates that all practitioners should be aware of:  November 1, 2007 and February 1, 2008.  Each date is detailed below.

November 1, 2007 

November 1 marks the official compliance date of the new rules, which means that each application filed thereafter is subject to the “2+1 Rule” (two continuations plus one RCE).  Below is a list of things to consider with regards to the November 1 deadline: 

• Determine if an RCE has already been filed on a pending application that has been issued a final rejection.  If the answer is yes, consider whether an additional RCE needs to be filed on the application.  As long as the RCE is filed by November 1, it does not count against the “2+1” limitation.
• As far as continuation filing is concerned, there is no real rush to file all of your continuations before November 1.  There is, however, one exception.  If you have a family of co-pending applications that claim priority back to the same date and you intend on filing continuations on more than one of these applications, you must do so before November 1.  After November 1, only one continuation application will be allowed for the whole family.

February 1, 2008

By February 1, 2008, every practitioner should comb over all of their patent portfolios to identify applications that are commonly owned, have at least one inventor in common, and have a filing date or priority date within two months of the filing date or priority date of the other application.  As previously pointed out (click here), the new rules impose a rebuttable presumption that all applications with overlapping disclosures and a common priority date contain patentably indistinct claims.  Thus, it is imperative to identify these overlapping, commonly owned applications to develop a method for rebutting the patentably indistinct presumption (either by stating a reason why the claims are patentably distinct or by filing a terminal disclaimer).

Aside from the two critical dates above, practitioners should evaluate all pending, unexamined applications that have yet to receive an office action from the USPTO by November 1.  Why you ask?  Well, these applications are subject to the “5/25 Rule.”  As such, practitioners should look to each application to determine whether the claims need to be amended, cancelled, or whether a Suggested Restriction Requirement (SRR) needs to be filed to comply with the “5/25 Rule.”

We will keep you posted on any new developments regarding the new claims and continuations rules within the USPTO.  As always, any questions or comments on any of our posts are appreciated.

Be sure to tune in next week as PHOSITA hosts the “1^st Annual DCR Patent Poetry Throwdown!”

Full post as published by Phosita on September 28, 2007 (boomark / email).