August 21, 2007Client Alert

New Patent Rules Include Significant Filing Limitations


On Tuesday, August 21, 2007, the United States Patent and Trademark Office published a long-awaited set of rule changes that significantly limit the number of claims applicants will be allowed to include in a single patent application. The newly announced rule changes will also limit the filing of so-called "continuation" and "continuation-in-part" patent applications. In addition, the new rules create new filing obligations for applicants filing multiple applications relating to the same invention and having common inventors.

The new rules were drafted with the stated goal of allowing the Patent Office to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater precision in describing and claiming their inventions. The new rules will be effective on November 1, 2007 and will apply to newly-filed patent applications and many patent applications filed prior to the rule change.

Limited Number of Claims in a Single Application

Under the new rules, each application may contain up to 25 claims, with no more than five of the claims being independent claims. If applicants wish to include additional claims beyond these thresholds, the new rules require the applicants to provide supplementary information (i.e., a so-called "Examination Support Document") relevant to the claimed invention. When determining whether the total number of claims exceeds the threshold, the Patent Office will consider all of the claims in the application and any patentably indistinct claims in other co-pending, commonly-owned applications.

Limited Number of Continuation, RCE and CIP Patent Applications

The new rules also provide that each applicant may file only two continuation or continuation-in-part ("CIP") applications and only a single request for continued examination ("RCE") as a matter of right. If applicants wish to file additional continuation or CIP applications, the new rules require the applicants to show why an additional continuation or CIP application is necessary. While the effective date of this new rule will be November 1, 2007, the Patent Office has provided that for pending applications, applicants will be permitted to file an additional continuation application after August 21, 2007 regardless of the number of continuation applications filed before the rule change. Also, applicants wanting to file an additional CIP application must identify the claims in the CIP that the applicants believe are entitled to the parent application’s filing date.

Applicants will be permitted to file divisional applications to non-elected inventions following a restriction requirement issued by the Patent Office during the prosecution of a prior application.

Filing Requirements for Related Applications

Applicants filing multiple applications must now identify other commonly-owned applications or patents that (1) have a claimed filing or priority date within two months of the claimed filing or priority date of the application, and (2) name at least one inventor in common with the application. If two applications have the same claimed filing or priority date and contain substantially overlapping disclosure, applicants are also required to file a terminal disclaimer or explain how the applications (or application and issued patent) contain only patentably distinct claims. In response to these filings, unless applicants can provide a valid reason for having multiple pending applications, the Patent Office may require the applicants to move all of the patentably indistinct claims to a single application.

Over the next few months, we expect the Patent Office to further clarify how these rules will be applied and to specify what factors will be considered when determining the permissibility of exceptions to these rules. Michael Best & Friedrich will, as always, keep abreast of the latest developments. Please contact your Michael Best attorney to discuss how these changes will affect specific patent portfolios and to discuss revised patent filing strategies.

The following links provide additional useful information and summaries prepared by the Patent Office:

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