The US District Court in the Eastern District of Virginia has ruled that the USPTO's proposed rule changes (see below) are void as they are substantive in nature and the USPTO is not empowered to make substantive rules.
This means the USPTO will continue to process and examine patent applications under the rules and procedures in effect on 31 October.
This situation should continue unless and until an appeal overturns this latest decision.
|
1 November 2007 update
US District Court halts implementation of new rules
|
Changes to USPTO rules (outlined below), due to take effect from today, have been halted by order of the US District Court in the Eastern District of Virginia following action initiated by GlaxoSmithKline.
The Court has issued a preliminary injunction pending a full review by the Court.
The USPTO will continue to process and examine patent applications under the rules and procedures in effect on 31 October until further notice.
|
Original 4 October 2007 message
|
In an effort to reduce an overwhelming backlog of pending patent applications, the United States Patent and Trademarks Office (USPTO) is introducing some new rules that will take effect from 1 November 2007.
As some aspects will impact on applications that are currently pending, we recommended that you consider the changes now and take appropriate action prior to 1 November.
|
The new rules in brief
|
- An applicant may file, as a matter of right, two continuing applications and one request for continued examination (RCE) in any family of applications.
- An applicant will be entitled to the examination of a maximum of 25 total claims including 5 independent claims per application.
- Applicants will be required to identify and notify the USPTO of multiple applications with a common inventor and/or overlapping subject matter.
|
|
The new rules in detail
|
Continuing applications
|
The USPTO will now permit the filing of only two continuing applications (continuation, continuation-in-part (CIP) or voluntary divisional) and one RCE as a matter of right. Any filing beyond this limit must be supported by a request establishing why the amendment, argument, or evidence presented in the new application could not have been submitted previously.
This provision is effective as of 1 November 2007 and is partly retroactive. That is, if the limit of two continuing applications had already been met by 20 August 2007 (the date of release of the new rules), applicants will be permitted to file one more continuing application. Please note that if an RCE has already been filed, the filing of a further RCE after 1 November 2007 will need to be justified as indicated above.
Thus, if facing a final rejection in any of your cases, or if any new amendments or evidence are to be submitted, you should consider filing a request for continued examination (RCE) prior to 1 November 2007. If one has already been filed in an application, any parent application, or any application that claims priority to the same parent application, an RCE will not be permitted after 1 November 2007 without justification.
|
Divisional applications
|
 A divisional application is defined in the new rules as an application that claims subject matter that was non-elected subject matter resulting from a restriction requirement. Divisional applications need not be filed during the pendency of the application subject to a restriction requirement. That is, “serial divisionals” are permitted. While divisional applications will not be included in the above continuation limits, “voluntary divisionals” (divisional applications that are not the result of a restriction requirement) will be considered to be continuing applications and are therefore subject to the above limits.
Each non-voluntary divisional application will be treated as an independent application, in that each will be allowed two continuations and one RCE, however, no CIPs may be based on a divisional application.
|
Claim numbers
|
The USPTO will limit examination to no more than 5 independent claims and 25 claims in total in a single application. If the applicant seeks examination of more than 5 independent claims or more than 25 claims, the applicant will be required to submit an examination support document (ESD, see details below). This provision will apply to newly filed applications and retroactively to pending applications that have not received a first action on the merits before 1 November 2007. In these cases the USPTO will mail a notice to applicants when an application exceeds these claim limits. The notice will set a two-month non-extendable period for response to either cancel the claims in excess of the limit or submit an ESD. Failure to respond will result in abandonment.
The ESD must include:
|
- A statement that a search was conducted, indicating the field of search by class and subclass, the databases searched with search logic and the date of the search.
- An Information Disclosure Statement (IDS) citing the most relevant art related to each claim.
- An identification of all of the claim limitations that are disclosed in the prior art cited.
- A detailed explanation of how all of the independent claims are patentable over the art cited.
- A indication of where each limitation of each claim finds support in the written description of the application and any parent application from which benefit of priority is claimed.
|
|
If the claim limit is exceeded because the claims relate to more than one invention, the applicant may submit a suggested restriction requirement (SRR) and elect a single invention which is limited to no more than 5 independent and 25 claims in total. If the Examiner accepts the SRR, the resulting divisional application(s) will be treated as divisional applications as discussed above.
|
Related applications
|
In applications or patents that have a common inventor, that are commonly owned, and have a claimed filing date or priority date within two months of each other, the applicant is required to notify the USPTO and identify each application or patent.
If multiple applications with a common inventor and that are commonly owned are filed with overlapping subject matter and have the same filing or priority date, there will be a rebuttable presumption that double patenting exists and the applicant must either file a terminal disclaimer or explain how the subject matter is patentably distinct.
If multiple applications contain patentably indistinct claims, the USPTO will treat the multiple applications as a single application for purposes of determining whether the 5 independent or the 25 total claim limits have been exceeded.
Applicants are required to identify any claims in a CIP application for which subject matter is disclosed in the parent application. Any claim not supported by the disclosure of the parent application will be afforded the filing date of the CIP for prior art purposes. |
