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• Withdrawn claims do not count against the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