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SKGF_Advisory_Strategies for Life Under the New USPTO Rules on Continuation and Claims Practice_2007

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  • 1. Strategies for Life Under the New USPTO Rules on Continuation and Claims Practice Elizabeth Haanes, Ph.D., Esq. Mike Messinger, Esq. Michele A. Cimbala Ph.D., Esq. September 18, 2007
  • 2. Strategies for Life Under the New USPTO Rules • Rational Responses – Sell All Your Belongings – Stop Innovating and – Live in a Cave
  • 3. Notice of Final Rulemaking • “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications” – 72 Fed. Reg. 46716 (August 21, 2007) • Effective: November 1, 2007 (but much is retroactive)
  • 4. Key Provisions • The number of examined claims will be limited (Rule 75) • The number of continuation or CIP applications in a family will be limited, and voluntary divisional applications will not be allowed (Rule 78(d)) • Only one RCE per application family (Rule 114) • Applicants will be required to identify certain copending, commonly-owned applications which share a common inventor (Rule 78(f))
  • 5. The Good News... • Excess claim fees paid for unexamined, canceled claims will be refunded upon request • Applicants may now propose a “suggested restriction requirement” (SRR) to the Examiner • Streamlined Continuations – may request continuations to be placed on Examiner’s Amended Docket
  • 6. The Bad News... • Only 5 independent and 25 total claims will be examined in any application without an “examination support document” (ESD) • Commonly owned applications with common subject matter, a common inventor, or both, must be identified • Typically only two continuation or CIP applications and one RCE per family “as of right” • No voluntary divisional applications
  • 7. The REALLY Bad News • Examination Support Documents • Copending applications determined to have “patentably indistinct” claims will be combined to meet the 5/25 claim rule
  • 8. SKGF is Here to Help You!
  • 9. What We are Doing Already • First Client Advisory Letter (Aug. 30) • Second Client Advisory Letter (in draft) • Triaged File Review • Staffing • Automation – Support for New Search Queries and Reports • Docketing – New Rules and Dates • Internal and External Training • Frequent Involvement with USPTO
  • 10. Rule 75 - Claims • The maximum number of examined claims per “non-allowed” application as a matter of right: – 5 independent claims – 25 total claims • An “Examination Support Document” (ESD) under 37 C.F.R. 1.265 must be submitted if you are not in compliance with Rule 75 • Withdrawn claims do not count against the 5/25 limit unless they are reinstated or rejoined
  • 11. Rule 75 - Claims • The number of claims in applications that are co-owned and that contain at least one “patentably indistinct” claim will be added together for the purposes of counting the total number of claims. • Once an application is allowed, a continuing application (CON or CIP) can be filed with another set of claims that complies with the 5/25 rule (“serial continuations”) • Reissue applications must comply with the 5/25 limit.
  • 12. Rule 75 - Claims • If two or more pending, co-owned applications contain patentably indistinct claims, the USPTO will require the combined claims in those applications to meet the 5/25 limit
  • 13. Rule 75 • If the application is not in compliance with Rule 75 and it appears this was inadvertent, Applicant will be sent a notice with a 2 month period (not extendable) to: – supply an ESD; – Cancel claims; or – Submit a suggested restriction accompanied by an election without traverse to an invention drawn to a group that is in compliance.
  • 14. Rule 75 is “Retroactive” • applies to any application that has not yet received a first office action on the merits (“FAOM”) by November 1, 2007
  • 15. Ways Around 5/25 • Prosecute CONs Serially – File after Parent Allowed • SRR • ESD
  • 16. Suggested Restriction Requirements (SRR) • New practice under rule 142 -- Applicant can submit a suggested restriction requirement (SRR) BUT – It must be filed prior to the first action on merits or first action that contains a restriction or lack of unity – An SRR must be accompanied by an election without traverse of an invention that complies with the 5/25 claim number requirement
  • 17. SRRs • The Examiner can: – accept the SRR and commence examination on the elected group of claims; – reject the SRR and issue a different restriction requirement (Applicant must elect a group of claims and conform limit claims to 5/25); or – or reject the SRR and issue NO restriction requirement (Applicant must then limit claims to 5/25)
  • 18. Rule 265: Examination Support Document Requirements • A statement that a preexamination search has been conducted • A listing of references deemed most closely related to the subject matter of each claim • For each reference an identification of all of the limitations of each of the claims that are disclosed by the reference • A detailed explanation of how each of the independent claims is patentable over the cited references • A showing of where each limitation of each of the claims finds enablement and written description support in the specification and any priority applications
  • 19. ESD Recommendation • Avoid them where possible • Expensive and ripe for estoppel • May have to file Supplemental ESD(s) • See new ESD Guidelines issued Sept. 6
  • 20. More Strategy Recommendations – Claims Practice • Currently pending cases: – After FINAL and RCE - Consider RCE by Nov. 1 – After First Action on Merits – no claims limit yet – watch out if next action is expected to be a final – If restriction requirement pending, reply ASAP to try to receive first action on the merits prior to Nov. 1, 2007 – No FAOM issued prior to Nov. 1, 2007: • Consider SRR and election
  • 21. Strategy Recommendations • Future cases – new filings – Keep in mind 5/25 limit for appl. and 15/75 limit for appl. family – Draft claims with an eye toward restriction and divisional filings – PTO wants generic claims fully prosecuted first • Thin or Fat Initial Applications? – File Multiple Thin Initial Applications on same or different dates • Catch – ID requirement, Possible Merger, Terminal Disclaimer + Show why applications cannot be in one application – File Single Fat Application with many claims • Catch – SRR/Divisionals at Examiner’s discretion, SRR may have to argue one-way distinctness • No easy solution where substantial amount of overlapping material needs to be claimed • We will pull all this together in an example later
  • 22. How will the 5/25 Rule Effect USPTO Restriction Practice? • Examiners may be motivated to limit the restrictions to reduce claims examined in any one application family; BUT • Given the USPTO count system and time restrictions on Examiners, incentive remains for Examiners to issue restriction requirements to create more work on familiar applications • Time will tell...
  • 23. Identification of Copending Applications under Rule 78(f)(1) • Plan to be Aggravated • Burdensome, No Way Around It • How to Cope • SKGF May Need Your Help
  • 24. Identification of Copending Applications under Rule 78(f)(1) • Applicant must identify – all non-provisional applications/patents (that have not been allowed) that have benefit or filing dates within 2 months of each other – that name at least one common inventor and – that are owned/subject to assignment to the same entity • must provide within 4 months of filing or entering U.S. national phase • required even if the applications do not have similar subject matter
  • 25. Identification of Copending Applications under Rule 78(f)(1) • Rule is retroactive! • Applicants MUST comply with new rule 78(f)(1) in ALL pending applications by: FEBRUARY 1, 2008. • Intervening filing dates of Cons/Divs/CIPs should be considered as well
  • 26. Treatment of Copending Applications under Rule 78(f)(2) • If identification under 78(f)(1) required AND - multiple applications have the same filing or benefit date; - and contain “substantial overlapping disclosure - Then a rebuttable presumption exists that the applications each contain at least one claim that is not patentably distinct from at least one claim in the other application
  • 27. Treatment of Copending Applications under Rule 78(f)(2) • Applicants must rebut the presumption that the claims are patentably indistinct; OR • Submit a terminal disclaimer AND explain why the claims cannot be in a single application
  • 28. Compliance with Rule 78(f)(2) is by the later of • 4 months from the filing or national stage entry date • the date on which a claim that is not patentably distinct is presented • two months from the date of mailing of the initial filing receipt in any of the applications
  • 29. Rule 78(f)(2) is Retroactive! • Compliance with rule 78(f)(2) for all pending applications is required by February 1, 2008
  • 30. Ways Around the ID requirement • There are none – Inventorship determination is a matter of law – Staggering filing dates may raise other issues – Big burden for complex older patent families • What happens if we don’t comply... – Don’t go there intentionally • Best route – Apply experienced legal talent to benefit claim analysis – Automate like crazy with oversight – Look at your benefit claim data NOW
  • 31. SKGF Action • Prior to Feb. 1, 2008, SKGF will work with clients to identify all pending applications which require cross-identification under rule 78(f) • We will need client input as to whether additional applications (prosecuted in-house or by other firms) need to be identified
  • 32. Domestic Benefit Claims Rule 78(d) (d)(1) All domestic benefit claims MUST satisfy at least one of (d)(1)(i) through (d)(1)(vi) NB! The PTO is not responsible for its own errors: (d)(1): A mistake on the part of the PTO in entering or in not deleting an improper claim does not constitute a waiver of Rule 78(d)(1).
  • 33. Domestic Benefit Claims The Basics: • Only two continuation applications “as of right” • Each divisional may have its own two con applns. • No voluntary divisionals • No CIP’s filed off of divisionals
  • 34. Domestic Benefit Claims Organization of Rule 78(d) (d)(1)(i) - continuation appln (ii) - divisional appln (iii) - continuation of divisional appln (iv) - 1st nonprov is a Chap. I PCT; no fee paid and no Chap. II demand (v) - 1st nonprov appln was abandoned with a NTFMP (vi) - appln has a “petition and showing”
  • 35. “Continuing” Applications • A “Continuing Application” is a nonprovisional or PCT application designating the US that claims benefit of a prior filed nonprovisional or PCT application designating the US – Includes: continuation, divisional, continuation-in-part or PCT applications – Does NOT include: • A first filed nonprovisional application • A provisional application • An application that only has a benefit claim to a provisional application or a priority claim to a foreign application
  • 36. Continuation Applications Definition: • A continuing application that discloses and claims only subject matter that was disclosed in a prior- filed non-provisional application
  • 37. Continuation-in-Part (CIP) Applications • A continuing application that discloses subject matter that was not disclosed in a prior-filed non-provisional application • Applicants must identify claims in a CIP that have 35 U.S.C. 112(1) support in the earlier-filed non-provisional application • Any claim not so identified will be presumed to be entitled only to the filing date of the CIP
  • 38. CIP Recommendations • Avoid them. If claims are supported by the earlier-filed non-provisional application, use a continuation rather than a CIP • If the claims would not be supported by the earlier-filed non- provisional application, consider filing a new application without claiming priority benefit
  • 39. Recommendation: Postpone “Continuing” Applications • Now: consider converting first-filed U.S. nonprovisional filings to provisionals • Future: file initial filings in the United States as provisional applications
  • 40. “Showing” Standard for Additional Continuing Applications • Must include an amendment, argument, or evidence • Must show that the information sought to be entered could not have been submitted during the prosecution of the prior-filed application • Must be submitted within 4 months from the filing date, or national stage entry date, of the continuing application.
  • 41. Divisional Applications • A divisional application is a continuing application that discloses and claims only inventions subject to a lack of unity or restriction in a prior- filed application, and that were – Not elected in the prior application; and – Not examined in any prior application. • A “voluntary divisional” is a continuation
  • 42. Divisionals • Can I rely upon a restriction requirement to immediately file a divisional? – Yes, if you elect without traverse, and cancel all non-elected claims – No, if you traverse the restriction, because there is a chance it will be withdrawn – No, if you retain non-elected claims, because they might be rejoined
  • 43. “Not Examined in Any Prior-filed Application” • Does “Examined” encompass PCT Chapter II “preliminary examination” ? • YES (?) NO(?) <PTO must clarify> • Thus, during later US prosecution a lack of unity rejection or restriction requirement is made, it may not be possible to file a proper “divisional” application on claims which were already subject to PCT Chapter II preliminary examination
  • 44. What if Restricted Claims Have Been Examined? • Elect those claims which have already been examined • Traverse the restriction requirement and petition finality • File the already-examined but restricted claims in a “continuation” with a petition and showing
  • 45. RCEs • Only 1 RCE as of right in any application family • Additional RCEs will require a petition, fee, and a sufficient “showing” that the amendment, argument, or evidence sought to be submitted couldn’t have been submitted prior to close of prosecution in the application • For subsequent RCEs, an IDS, by itself, is an insufficient “showing” • Is it not sufficient that the Examiner raised new grounds of rejection in a final office action.
  • 46. RCE and “After Final” Recommendations • NOW: if you currently have a final rejection and have already filed one RCE in the family, file a second RCE prior to November 1, 2007 • Going forward: petition improper final office actions • Use interview practice to negotiate allowable claims • If further continuations are not an option, amend claims to put in best form for appeal
  • 47. Example, Continuations Filed Before 8/21/07 8/21/07 11/1/07 2nd Con Con Con Con • Benefit claim will be ok but if not yet examined, will still have to comply with the 5/25 rule. • Applications must comply with the identification requirements of Rule 78(f)
  • 48. Filing Con before 11/1/07 8/21/07 11/1/07 2nd Con Con Con Con These are 3rd – 5th Continuations; No “one more exception” (OME) will be available after 11/1 5/25 will apply and also identification Rule 78(f)(1) and (2) The PTO can force you to combine all the continuations.
  • 49. So is it wise to file continuations before November 1? Filing Cons after 8/21/07 and before 11/1/07 won’t help and may hurt.
  • 50. New Mindset for Focused Examination • Impact on New Filings and Patent Portfolio Creation • Maximize Value of an Application Family (Initial Appl./2 CONs) – Target claims even better upfront – Consider more “story” in specification or evidence on non-obviousness – Consider more patentability searching (Seagate) – Know Prosecution Strategy, Desired Claim Coverage and Endgame Upfront • More Pitfalls - Patent Prosecution Expertise and Time for Analysis Even More Important
  • 51. First Example of Life Under the New Rules Example – Wireless Web Phone Functionality Invention
  • 52. Example of Life Under the New Rules
  • 53. First Example of Life Under the New Rules
  • 54. Example of Life Under the New Rules
  • 55. Example – Compound Claims
  • 56. Example – Compound Claims
  • 57. New Mindset for Focused Examinaton • The New Skill Set – Suggesting restrictions • Arguing one-way distinctness – Petitioning Improper Final Office Action – Interviewing • before and after Office Actions if possible – More Appeals to BPAI – Concise Claiming – Tracking Claim Count – Identifying Commonly-Owned Applications with a Common Inventor even across multiple prosecution firms
  • 58. To Do List – SKGF and Clients • Our Actions Items - SKGF and Clients – Now to Nov. 1, 2007 • Get Grandfathered – Respond to Restriction Requirements – File RCEs after Final – Now to Feb. 1, 2008 • Review and Collect Data for ID Req’t – Special Cases to Call Your Attorney • New Continuations to Cover Unclaimed Subject Matter • Pending Cases with Very High Claim Counts • Complex Benefit Claims
  • 59. THANK YOU! Elizabeth Haanes, Ph.D., Esq. bhaanes@SKGF.com Mike Messinger, Esq. mikem@SKGF.com Michele A. Cimbala, Ph.D., Esq. mcimbala@SKGF.com This content of this presentation by Sterne, Kessler, Goldstein & Fox P.L.L.C. is for purposes of discussion and should not be considered legal advice. © 2007 Sterne, Kessler, Goldstein & Fox P.L.L.C. 722854

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