New Patent Rules: When No Change Is Newsworthy

Peter is a nationally recognized leader in the field of intellectual property (IP), whose unique practice focuses on the many aspects of IP, both domestically and internationally. Peter is a Global IP Portfolio Manager, Patent and Trademark Prosecutor, Patent Litigator, Adjunct Professor of Patent Law, Business Advisor, and Rainmaker, and his practice includes management of intellectual property portfolios, patent licensing, counselling on intellectual property strategies, and intellectual property due diligence in connection with mergers and acquisitions.

© 2024 Nieves IP

New Patent Rules: When No Change Is Newsworthy

In 1899, the Director of the United States Patent and Trademark Office (USPTO), Charles H. Duell said, “[E]verything that can be invented has been invented.” If this statement were true, there certainly would not be the delays in the USPTO that have become the norm. Over the years, the USPTO has tried many different remedies to increase productivity of the USPTO, while maintaining, or increasing, the quality of patents granted.

Two areas of concern to the USPTO are the practice of continued examination filings and the number of patent application claims. Continued examination filings include continuation patent applications, continuation-in-part patent applications, requests for continued examination, and divisional patent applications. Prior to discussing current actions of the USPTO, the following definitions are provided.

Continuation patent application: A continuation patent application is a patent application that is filed by an applicant who would like to add additional claims to an earlier provided patent application (parent application), where the parent application has not yet issued or gone abandoned. The same specification is used in a continuation patent application as was used in the parent application, and the continuation has the priority date of the earlier filed, and still pending, parent application. A continuation patent application must have at least one inventor that was named as an inventor in the parent patent application.

Continuation-in-part patent application: A continuation-in-part (CIP) patent application is a patent application that is filed by an applicant who would like to add new matter to a previously filed parent application. The specification of the continuation-in-part is very similar, though not identical, to the specification of the parent patent application. The continuation-in-part patent application shares a priority date with the parent application. However, claims of the continuation-in-part application focused on matter that was not included in the parent application, do not enjoy the priority filing date of the parent application. Instead, the priority date of these claims is the filing date of the continuation-in-part patent application. Similar to the continuation, the continuation-in-part application has at least one common inventor that was named in the parent application.

Request for continued examination: A request for continued examination (RCE) is a request to continue the attempt at obtaining a patent after receiving a final rejection to the patent application from the USPTO.

Divisional patent application: A divisional patent application is a patent application that may be filed after receiving a restriction requirement from the USPTO, where the restriction requirement is a claim by an examiner of the USPTO that an original patent application has more than one invention within the disclosure. The divisional patent application also shares filing date priority with a parent patent application.

Presently, a patent applicant may file an unlimited number of continued examination filings. In addition, a patent applicant may file an unlimited number of claims with a patent application, although large numbers of claims may be prohibitive due to excess cost.

Recently, in an attempt to remedy delays in the patent office, the USPTO attempted to adopt a new guideline, a portion of which was focused on continuation practice and patent claims. Specifically, on August 21, 2007 the USPTO published new continuation and claims rules entitled “[C]hanges to Practice for Continued Examination Filings, Patent Applications Containing Patentably-indistinct Claims and Examination of Claims in Patent Applications; Final Rule” (hereinafter “New Rules”). The New Rules were to go into effect on November 1, 2007.

Important portions of the New Rules include the following:

Continued Examination Filings

  • Applicants may file, without a petition and showing:
    • A maximum of two continuation or continuation-in-part (CIP) applications; and
    • A single request for continued examination (RCE) in an application family.
      • An application family includes the initial application and its continuation or CIP applications.
      • An applicant may file a maximum of two continuation or CIP applications regardless of whether an RCE has been filed.
  • Applicants may file any additional continuing application or RCE with a petition and showing.
  • Applicants may file a divisional application if:
    • The prior-filed application is subject to a requirement for restriction; and
    • The divisional application claims only a non-elected invention(s) that has not been examined.
      • Applicants may file divisional applications in parallel or series.
    • A divisional application is not required to be filed during the pendency of the initial application, as long as the copendency requirement of 35 USC 120 is met.
  • Applicants may file, without a petition and showing:
    • A maximum of two continuation applications of a divisional application (but not a CIP); and
    • A maximum of one RCE in the divisional application family.
      • A divisional application family includes the divisional application and its continuation applications.
  • Applicants may file additional continuation applications or RCE in the divisional family with a petition and showing.

Examination of Claims

  • Applicants may present, without an examination search document (ESD), up to:
    • Five (5) independent claims, and
    • Twenty-five (25) total claims in an application.
  • Applicants may present more than 5/25 claims, if applicants file an ESD before the first Office action on the merits.
  • The 5/25 claim threshold does not count withdrawn claims.
    • Applicants may provide a suggested restriction requirement before first Office action or a restriction requirement.
  • The 5/25 claim threshold counts all of the claims present in other copending application(s) having a patentably indistinct claim, but not the claims in issued patents.
    • Applicants may present up to 15/75 claims via an initial application and 2 continuation or CIP applications prosecuted serially.

Unfortunately, considering that previously there were no limitations on the allowable number of continued examination filings and claims, the New Rules are very limiting.

The New Rules were challenged in several lawsuits. In addition, many amicus curiae briefs were submitted by parties explaining the many disadvantages associated with the USPTO implementing the New Rules. On August 22, 2007, Triantafyllos Tafas, an independent inventor, sued the USPTO and its Director, Jon Dudas, in the U.S. District Court for the Eastern District of Virginia, seeking a declaratory judgment that the new continuation rules were null and void. Tafas also sought a preliminary and permanent injunction from the court to prohibit the USPTO from putting the New Rules into effect.  In addition, on October 9th, SmithKline Beecham Corp., SmithKline Beecham PLC, and Glaxo Group Ltd. (d/b/a/ collectively as GlaxoSmithKline) filed a verified complaint in the U.S. District Court for the Eastern District of Virginia against Jon Dudas (the Under Secretary of Commerce for Intellectual Property and Director of the USPTO) and the USPTO, asking for preliminary and permanent injunctions staying implementation of the PTO’s new continuation and claims rules. The District Court in Virginia consolidated the Tafas and GlaxoSmithKline cases.

In one of the most significant recent patent law decisions, one day prior to the implementation date of the New Rules, November 1, 2007, the New Rules were placed on hold. On October 31, 2007, the court in the consolidated cases of Tafas v. Dudas and SmithKline Beecham Corp. v. Dudas, issued a temporary restraining order and a preliminary injunction enjoining the USPTO from implementing the controversial changes in the New Rules associated with claims and continuations.

This decision calmed turbulent patent waters for patent agents and patent attorneys who were franticly making changes to pending patent applications in an attempt to comply with the New Rules, especially since the New Rules were not only to be applied to newly filed patent applications, but also to be applied to already pending patent applications.  Corporations with patent portfolios that could violate the New Rules also enjoyed a brief moment of elation. Unfortunately, since the injunction is, at this point, only temporary, there is no way to know whether this time of peace will last.  The court in the Tafas and GlaxoSmithKline case is currently considering summary judgment motions, with a hearing scheduled for February 8, 2008 so we may know more very soon.

In the meantime, if your patent portfolio contains patent applications that may potentially fall within the reach of the New Rules, you should keep in touch with your patent attorney or patent agent and plan accordingly. In addition, if you are not sure whether part of your portfolio falls under the umbrella of the New Rules, it is advisable to contact your patent attorney or patent agent and ask.