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ALERT! New Patent Rules

On August 21, 2007 the US Patent and Trademark Office published new rules that will impact nearly everyone seeking patent rights in the United States. Some practitioners have described this major rules change as "controversial." Citadel Patent Law is gearing up to meet the challenges presented by these changes. Citadel Patent Law will analyze the strategic impact of these new rules and present a plan of action to each affected client. Those clients with a number of related and pending US applications will be impacted the most.

While we intend only to hit the highlights in this blog entry, we intend to expand on the impact of multiple facets of the new rules in the coming months.

The 5/25 claims rule :

Beginning November 1, 2007, applicants must submit an extensive and extremely detailed examination support document (ESD) if an application contains more than five independent claims or more than twenty-five total claims (five/twenty-five claim threshold), counting all of the claims in any other copending application having a patentably indistinct claim. An ESD is intended to be a detailed review of formally searched prior art as compared to each claim in a patent application. The search required for an ESD has been compared to a non-infringement search and is expected to cost as much as some patent applications to prepare.

For applications that exceed five/twenty-five claim threshold because they contain claims to more than one invention, the applicant has the option of submitting a suggested restriction requirement (SRR) and election of an invention to which there are no more than five independent claims or twenty-five total claims.

If an application exceeds the five/twenty-five claim threshold and does not contain a SRR or ESD, the USPTO will issue a notice giving the applicant time to provide an ESD or amend the application to be within the five/twenty-five claim threshold. The change is applicable to all applications in which a first action on the merits has not been mailed by November 1, 2007. The USPTO will issue a notice in applications pending before November 1, 2007 giving the applicant time to provide an ESD or an SRR, or to amend the application to be within the five/twenty-five claim threshold.

Continued examination filings:

An application or chain of continuing applications may include only two continuing applications (continuation or continuation-in-part applications), and a single request for continued examination (RCE) in any one of these three applications (the initial or two continuing applications), without justification. The applicant may file divisional applications to the non-elected invention(s) only if the USPTO issues a restriction requirement in the prior application. The applicant must identify the claims in a continuation-in-part application that the applicant believes are entitled to the parent application's filing date.

The USPTO will permit an applicant to have "one more" continuing application after August 21, 2007, regardless of the number of continuing applications filed before November 1, 2007.

Related applicationsand double patenting:

The applicant must identify other commonly owned pending 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.

In addition, the applicant must also file a terminal disclaimer or explain how the applications (or application and patent) contain only patentably distinct claims if the applications also have the same claimed filing or priority date and contain substantial overlapping disclosure.

The USPTO may require the applicant to put all of the patentably indistinct claims in a single application unless there is good reason for multiple copending applications having patentably indistinct claims.

Patentably indistinct claims will probably be determined according to an obviousness criteria.

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Citadel Patent Law - Tacoma Intellectual Property Attorney
Located at 9125 Bridgeport Way Southwest, Suite 105 Lakewood, WA 98499. View Map
Phone: (253) 256-5775 | Local Phone: (253) 682-0246.