Implementation of New U.S. Patent Rules Delayed Due to Injunction

Nov 02 2007

The United States Patent and Trademark Office (“USPTO”) is attempting to implement new rules which will set significant limits on the number of claims allowed in patent applications, and on the number of continuing applications and requests for continued examination that may be filed. Under the new rules, applicants will also have a duty to disclose related applications, and may be asked to provide support for the claims of continuation-in-part applications.

On October 31, 2007, the U.S. District Court granted a preliminary injunction preventing the USPTO from implementing the new rules which were set to take effect November 1, 2007. The injunction will expire upon the Court reaching a final decision on the validity of the new rules. A final decision is not expected until at least January, 2008. We will keep you advised of further developments.

Below is a summary of the new rules which the USPTO is attempting to implement. We encourage those with pending applications before the USPTO, or those about to file, to review these changes as they could impact how your case is handled by the USPTO should the new rules be implemented. In view of the injunction, the implementation dates of these new rules (if any) are uncertain and so have not been referred to below.

  1. Limits on Number of Claims

The number of claims permitted in new patent applications and pending patent applications that have not yet received a first substantive office action will effectively be limited to five independent claims, and 25 claims in total. In some cases where the claim limit is exceeded, an applicant may be permitted to suggest that the USPTO divide an application by filing a suggested restriction requirement. In other cases, it may be necessary to cancel claims to fall within the limits. For applications which are not compliant with the claim number limitations, the USPTO will send notices to applicants. Applicants will have two months to respond to a notice.

  1. Limits on Continuing Applications and RCEs

Applicants will be able to file only two continuation or continuation-in-part (CIP) applications and one request for continued examination (RCE) per patent family as a matter of right. If this limit has been reached or exceeded as at the date of implementation of the new rules (should this occur), applicants will generally be permitted one more additional continuation or CIP application.

  1.  Duty to Disclose Related Applications

Applicants will be required to identify related applications and patents. If filed before the implementation of the new rules, two patents/applications are related if they have at least one inventor in common, common ownership, and the same filing or priority date. If filed on or after the implementation of the new rules, two patents/applications will typically be related if they have at least one inventor in common, common ownership, and filing or priority dates within two months of each other. In some cases, the USPTO may deem related applications to be indistinct applications, meaning that they will be grouped together for the purpose of the new “5/25” claim number limitations.

  1. Identification of Support for Claims of CIP Applications

Applicants that have any CIP applications may be required to identify which claims in the applications may be supported by a parent application.

For further information, please contact one of our professionals.

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Tags: Patents, USPTO