Changes To Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, 48-61 [05-24528]

Download as PDF 48 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules § 31.6011(a)–1 Returns under Federal Insurance Contributions Act. (a) * * * (5) [The text of proposed § 31.6011(a)– 1(a)(5) is the same as the text of § 31.6011(a)–1T(a)(5) published elsewhere in this issue of the Federal Register]. * * * * * Par. 3. Section 31.6011(a)–4 is amended by revising paragraph (a)(4) to read as follows: § 31.6011(a)–4 withheld. Returns of income tax (a) * * * (4) [The text of proposed § 31.6011(a)– 4(a)(4) is the same as the text of § 31.6011(a)–4T(a)(4) published elsewhere in this issue of the Federal Register]. * * * * * Par. 4. Section 31.6302–1 is amended by revising paragraphs (b)(4), (c)(5) and 6, (d) Example 6, (f)(4), and (f)(5) Example 3 to read as follows: § 31.6302–1 Federal tax deposit rules for withheld income taxes and taxes under the Federal Insurance Contributions Act (FICA) attributable to payments made after December 31, 1992. * * * * * (b) * * * (4) * * * (i) [The text of the proposed § 31.6302–1(b)(4)(i) is the same as the text of § 31.6302–1T(b)(4)(i) published elsewhere in this issue of the Federal Register]. (ii) [The text of the proposed § 31.6302–1(b)(4)(ii) is the same as the text of § 31.6302–1T(b)(4)(ii) published elsewhere in this issue of the Federal Register]. (c) * * * (5) [The text of proposed § 31.6302– 1(c)(5) is the same as the text of § 31.6302–1T(c)(5) published elsewhere in this issue of the Federal Register]. (6) [The text of proposed § 31.6302– 1(c)(6 is the same as the text of § 31.6302–1T(c)(6) published elsewhere in this issue of the Federal Register]. (d) * * * rmajette on DSK29S0YB1PROD with PROPOSALS6 Example 6. [The text of proposed § 31.6302–1(d) Example 6 is the same as the text of § 31.6302–1T(d) Example 6 published elsewhere in this issue of the Federal Register]. * * * * * (f) * * * (4) De minimis rule—(i) De minimis deposit rule for quarterly and annual return periods beginning on or after January 1, 2001. If the total amount of accumulated employment taxes for the return period is de minimis and the amount is fully deposited or remitted VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 with a timely filed return for the return period, the amount deposited or remitted will be deemed to have been timely deposited. The total amount of accumulated employment taxes is de minimis if it is less than $2,500 for the return period or if it is de minimis pursuant to paragraph (f)(4)(ii) of this section. (ii) De minimis deposit rule for quarterly return periods. For purposes of paragraph (f)(4)(i) of this section, if the total amount of accumulated employment taxes for the immediately preceding quarter was less than $2,500, unless paragraph (c)(3) of this section applies to require a deposit at the close of the next banking day, then the employer will be deemed to have timely deposited the employer’s employment taxes for the current quarter if the employer complies with the time and method of payment requirements contained in paragraph (f)(4)(i) of this section. (iii) [The text of proposed § 31.6302– 1(f)(4)(iii) is the same as the text of § 31.6302–1T(f)(4)(iii) published elsewhere in this issue of the Federal Register]. (5) * * * Example 3. [The text of proposed § 31.6302–1(f)(5) Example 3 is the same as the text of § 31.6302–1T(f)(5) Example 3 published elsewhere in this issue of the Federal Register] * * * * * Mark E. Matthews, Deputy Commissioner for Services and Enforcement. [FR Doc. 05–24563 Filed 12–30–05; 8:45 am] BILLING CODE 4830–01–P DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Part 1 [Docket No.: 2005–P–066] RIN 0651–AB93 Changes To Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Notice of proposed rule making. SUMMARY: Continued examination practice, including the use of both continuing applications and requests for continued examination, permits applicants to obtain further examination and advance an application to final PO 00000 Frm 00020 Fmt 4702 Sfmt 4702 agency action. This practice allow applicants to craft their claims in light of the examiner’s evidence and arguments, which in turn may lead to well-designed claims that give the public notice of precisely what the applicant regards as his or her invention. However, each continued examination filing, whether a continuing application or request for continued examination, requires the United States Patent and Trademark Office (Office) to delay taking up a new application and thus contributes to the backlog of unexamined applications before the Office. In addition, current practice allows an applicant to generate an unlimited string of continued examination filings from an initial application. In such a string of continued examination filings, the exchange between examiners and applicants becomes less beneficial and suffers from diminishing returns as each of the second and subsequent continuing applications or requests for continued examination in a series is filed. Moreover, the possible issuance of multiple patents arising from such a process tends to defeat the public notice function of patent claims in the initial application. The Office is making every effort to become more efficient, to ensure that the patent application process promotes innovation, and to improve the quality of issued patents. With respect to continued examination practice, the Office is proposing to revise the patent rules of practice to better focus the application process. The revised rules would require that second or subsequent continued examination filings, whether a continuation application, a continuation-in-part application, or a request for continued examination, be supported by a showing as to why the amendment, argument, or evidence presented could not have been previously submitted. It is expected that these rules will make the exchange between examiners and applicants more efficient and effective. The revised rules should also improve the quality of issued patents, making them easier to evaluate, enforce, and litigate. Moreover, under the revised rules patents should issue sooner, thus giving the public a clearer understanding of what is patented. The revised rules would also ease the burden of examining multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and common assignee by requiring that all patentably indistinct claims in such applications be submitted in a single application. E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules The changes proposed in this notice will also allow the Office to focus its patent examining resources on new applications instead of multiple continued examination filings that contain amendments or evidence that could have been submitted earlier, and thus allow the Office to reduce the backlog of unexamined applications. This will mean faster and more effective examination for the vast majority of applicants without any additional work on the applicant’s part. Additional resources will be devoted to multiple continued examination filings only where necessary. Comment Deadline Date: To be ensured of consideration, written comments must be received on or before May 3, 2006. No public hearing will be held. ADDRESSES: Comments should be sent by electronic mail message over the Internet addressed to AB93Comments@uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop Comments— Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, or by facsimile to (571) 273–7735, marked to the attention of Robert W. Bahr. Although comments may be submitted by mail or facsimile, the Office prefers to receive comments via the Internet. If comments are submitted by mail, the Office prefers that the comments be submitted on a DOS formatted 31⁄2 inch disk accompanied by a paper copy. Comments may also be sent by electronic mail message over the Internet via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web site (http:// www.regulations.gov) for additional instructions on providing comments via the Federal eRulemaking Portal. The comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the Office Internet Web site (address: http://www.uspto.gov). Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments. FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent Attorney, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272–8800, by mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, or VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 by facsimile to (571) 273–7735, marked to the attention of Robert W. Bahr. SUPPLEMENTARY INFORMATION: The current volume of continued examination filings—including both continuing applications and requests for continued examination—and duplicative applications that contain ‘‘conflicting’’ or patentably indistinct claims, are having a crippling effect on the Office’s ability to examine ‘‘new’’ (i.e., non-continuing) applications. The cumulative effect of these continued examination filings is too often to divert patent examining resources from the examination of new applications to new technology and innovations, to the examination of applications that have already been examined, have issued as patents, or have been abandoned. In addition, when the continued examination process fails to reach a final resolution, and when multiple applications containing claims to patentably indistinct inventions are filed, the public is left uncertain as to what the set of patents resulting from the initial application will cover. Thus, these practices impose a burden on innovation both by retarding the Office’s ability to examine new applications and by undermining the function of claims to notify the public as to what technology is or is not available for use. Commentators have noted that the current unrestricted continuing application and request for continued examination practices preclude the Office from ever finally rejecting an application or even from ever finally allowing an application. See Mark A. Lemley and Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev. 63, 64 (2004). The burdens imposed by the repetitive filing of applications (as continuing applications) on the Office (as well as on the public) is not a recent predicament. See To Promote the Progress of Useful Arts, Report of the President’s Commission on the Patent System, at 17–18 (1966) (recommending changes to prevent the repetitive filing of dependent (i.e., continuing) applications). Unrestricted continued examination filings and multiple applications containing patentably indistinct claims, however, are now having such an impact on the Office’s ability to examine new applications that it is now appropriate for the Office to clarify the applicant’s duty to advance the application to final action by placing some restrictions on the filing of multiple continuing applications, requests for continued examination, and other multiple applications to the same invention. See 35 U.S.C. 2(b) (authorizes PO 00000 Frm 00021 Fmt 4702 Sfmt 4702 49 the Office to establish regulations, not inconsistent with law, which shall govern the conduct of proceedings in the Office, and shall facilitate and expedite the processing of patent applications). This would permit the Office to apply the patent examining resources currently absorbed by these applications to the examination of new applications and thereby reduce the backlog of unexamined applications. The Office also notes that not every applicant comes to the Office prepared to particularly point out and distinctly claim what the applicant regards as his invention, for example, where the applicant’s attorney or agent has not adequately reviewed or revised the application documents (often a literal translation) received from the applicant. In these situations examination of what applicants actually regard as their invention may not begin until after one or more continued examination filings. Applicants should not rely on an unlimited number of continued examination filings to correct deficiencies in the claims and disclosure that applicant or applicant’s representative have not adequately reviewed. In addition, a small minority of applicants have misused continued examination practice with multiple continued examination filings in order to simply delay the conclusion of examination. This skirts applicant’s duty to make a bona fide attempt to advance the application to final agency action and impairs the ability of the Office to examine new and existing applications. It also prejudices the public by permitting applicants to keep applications in pending status while awaiting developments in similar or parallel technology and then later amending the pending application to cover the developments. The courts have permitted the addition of such claims, when supported under 35 U.S.C. 112, ¶ 1, to encompass products or processes discovered in the marketplace. See PIN/NIP, Inc., v. Platt Chemical Co., 304 F.3d 1235, 1247, 64 USPQ2d 1344, 1352 (Fed. Cir. 2002). However, the practice of maintaining continuing applications for the purpose of adding claims after such discoveries is not calculated to advance prosecution before the Office. The Office, in light of its backlog and anticipated continued increase in applications is making every effort to become more efficient. Achieving greater efficiency requires the cooperation of those who provide the input into the examination process, the applicants and their representatives. With respect to continued examination practice, the Office is proposing to E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 50 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules revise the rules of practice to assure that multiple continued examination filings from a single application do not absorb agency resources unless necessary for effective examination. The revised rules would require that second or subsequent continuation or continuation-in-part applications and second or subsequent requests for continued examination of an application include a showing as to why the amendment, argument, or evidence presented could not have been previously submitted. It is expected that these rules will make the exchange between examiners and applicants more efficient, get claims to issue faster, and improve the quality of issued patents. The revised rules would also ease the burden of examining multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and common assignee by requiring that all patentably indistinct claims in such applications be submitted in a single application absent good and sufficient reason. The Office’s Patent Application Locating and Monitoring (PALM) records show that, in fiscal year 2005, the Office received approximately 317,000 nonprovisional applications, and that about 62,870 of these nonprovisional applications were continuing applications. In addition, the Office’s PALM records show that the Office received about 52,750 requests for continued examination in fiscal year 2005. Thus, about thirty percent (63,000 + 52,000)/(317,000 + 52,000) of the Office’s patent examining resources must be applied to examining continued examination filings that require reworking earlier applications instead of examining new applications. In comparison, the Office issued over 289,000 first Office actions on the merits in fiscal year 2005. Had there been no continued examination filings, the Office could have issued an action for every new application received in 2005 and reduced the backlog by issuing actions in 35,000 older cases. Instead, the Office’s backlog grew because of the large number of continued examination filings. Thus, current continued examination practice and the filing of multiple applications containing patentably indistinct claims are impairing the Office’s ability to examine new applications without real certainty that these practices effectively advance prosecution, improve patent quality, or serve the typical applicant or the public. These proposed changes to the rules in title 37 of the Code of Federal Regulations (CFR) are intended to ensure that continued examination VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 filings are used efficiently to move applications forward. The Office expects that the new rules will lead to more focused and efficient examination, improve the quality of issued patents, result in patents that issue faster, and give the public earlier notice of just what patentees claim. The changes to the rules also address the growing practice of filing (by a common applicant or assignee) of multiple applications containing patentably indistinct claims. Of the roughly 63,000 continuing applications filed in fiscal year 2005, about 44,500 were designated as continuation/continuation-in-part (CIP) applications, and about 18,500 were designated as divisional applications. About 11,800 of the continuation/CIP applications were second or subsequent continuation/CIP applications. Of the over 52,000 requests for continued examination filed in fiscal year 2005, just under 10,000 were second or subsequent requests for continued examination. Thus, the Office’s proposed requirements for seeking second and subsequent continuations will not have an effect on the vast majority of patent applications. 35 U.S.C. 111(a) and 120, respectively, permit an applicant to file a nonprovisional application and to claim the benefit of a prior-filed nonprovisional application. Similarly, 35 U.S.C. 363 and 365(c), respectively, permit an applicant to file an international application under Patent Cooperation Treaty (PCT) Article 11 and 35 U.S.C. 363 and, if the international application designates the United States of America, claim the benefit of a priorfiled international application designating the United States of America or a prior-filed nonprovisional application. Similarly again, 35 U.S.C. 111(a) and 365(c) permit an applicant to file a nonprovisional application (filed under 35 U.S.C. 111(a)) and claim the benefit of a prior-filed international application designating the United States of America (under 35 U.S.C. 365(c)). The practice of filing ‘‘continuation applications’’ arose early in Office practice mainly as a procedural device to effectively permit the applicant to amend an application after rejection and receive an examination of the ‘‘amended’’ (or new) application. See In re Bogese, 22 USPQ2d 1821, 1824 (Comm’r Pats. 1991) (Bogese I). The concept of a continuation application per se was first recognized in Godfrey v. Eames, 68 U.S. (1 Wall.) 317, 325–26 (1864). See Bogese I, 22 USPQ2d at 1824. 35 U.S.C. 120 is a codification of the continuation application practice PO 00000 Frm 00022 Fmt 4702 Sfmt 4702 recognized in Godfrey v. Eames. See id (citing In re Hogan, 559 F.2d 595, 603, 194 USPQ 527, 535 (CCPA 1977)). Applicants should understand, however, that there is not an unfettered right to file multiple continuing applications without making a bona fide attempt to claim the applicant’s invention. See In re Bogese, 303 F.3d 1362, 64 USPQ2d 1448 (Fed. Cir. 2002) (Bogese II). While Bogese II was an extreme case, one of prosecution laches, it makes clear that applicants face a general requirement of good faith in prosecution and that the Director has the inherent authority, rooted in 35 U.S.C. 2, to ensure that applicants comply with that duty. See Bogese II, 303 F.3d at 1368 n.5, 64 USPQ2d at 1452 n.5. The proposed rules are not an attempt to codify Bogese II or to simply combat such extreme cases of prosecutions laches. Nor do these rules set a per se limit on the number of continuing applications. Compare In re Henriksen, 399 F.2d 253, 158 USPQ 224 (CCPA 1968). Rather, they require that applicants who file multiple continuing applications from the same initial application show that the third and following applications in the chain are necessary to advance prosecution. In particular, the proposed rules require that any second or subsequent continuing application show to the satisfaction of the Director that the amendment, argument, or evidence could not have been submitted during the prosecution of the initial application or the first continuing application. The Office is aware of case law which suggests that the Office has no authority to place an absolute limit on the number of copending continuing applications originating from an original application. See In re Hogan, 559 F.2d at 603–05, 194 USPQ at 565–66; and Henriksen, 399 F.2d at 262, 158 USPQ at 231. The Office does not attempt that here. No limit is placed on the number of continuing applications. Rather applicants are required to show that later-filed applications in a multiplecontinuing chain are necessary to claim the invention—and do not contain unnecessarily delayed evidence, arguments, or amendments that could have been presented earlier. In addition, in those earlier cases the Office had not promulgated any rules, let alone given the public adequate notice of, or an opportunity to respond to, the ad hoc limits imposed. See Henriksen, at 399 F.2d at 261–62, 158 USPQ at 231 (characterizing the action of the Office as akin to a retroactive rule change that had no support in the rules of practice or Manual of Patent Examining E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules Procedure). Furthermore, the Court in Bogese II rejected the view that its previous case law (e.g., Henriksen) stood for the broad proposition that 35 U.S.C. 120 gave applicants carte blanche to prosecute continuing applications in any desired manner. See Bogese II, 303 F.3d at 1368 n.5, 64 USPQ2d at 1452 n.5. 35 U.S.C. 132(b) provides for the request for continued examination practice set forth in § 1.114. Unlike continuation application practice, the request for continued examination practice was recently added to title 35, U.S.C., in section 4403 of the American Inventors Protection Act of 1999. See Pub. L. 106–113, 113 Stat. 1501, 1501A– 560 (1999). 35 U.S.C. 132(b) provides (inter alia) that the Office ‘‘shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant.’’ Nothing in 35 U.S.C. 132(b) or its legislative history suggests that the Office must or even should permit an applicant to file an unlimited number of requests for continued examination in an application. Therefore, the Office is proposing rules that allow applicants to file their first request for continued examination without any justification, but require applicants to justify the need for any further requests for continued examination in light of the past prosecution. The Office appreciates that appropriate continued examination practice permits an applicant to obtain further examination and advance an application to final action. The current unrestricted continued examination practice, however, does not provide adequate incentives to assure that the exchanges between an applicant and the examiner during the examination process are efficient. The marginal value vis-a-vis the patent examination process as a whole of exchanges between an applicant and the examiner during the examination process tends to decrease after the first continued examination filing. The Office resources absorbed by the examination of a second or subsequent continued examination filing are diverted away from the examination of new applications, thus increasing the backlog of unexamined applications. Therefore, the Office is proposing to require that an applicant filing a second or subsequent continuing application or second or subsequent request for continued examination include a showing as to why the amendment, argument, or evidence could not have been previously submitted. The Office also appreciates that applicants sometimes use continued VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 examination practice to obtain further examination rather than file an appeal to avoid the delays that historically have been associated with the appeal process. The Office, however, has taken major steps to eliminate such delays. The Board of Patent Appeals and Interferences (BPAI) has radically reduced the inventory of pending appeals from 9,201 at the close of fiscal year 1997 to 882 at the close of fiscal year 2005. The Office has also adopted an appeal conference program to review the rejections in applications in which an appeal brief has been filed to ensure that an appeal will not be forwarded to the BPAI for decision absent the concurrence of experienced examiners. See Manual of Patent Examining Procedure section 1208 (8th ed. 2001) (Rev. 3, August 2005) (MPEP). The Office is also in the process of adopting a pre-brief appeal conference program to permit an applicant to request that a panel of examiners review the rejections in his or her application prior to the filing of an appeal brief. See New PreAppeal Brief Conference Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005). These programs provide for a relatively expeditious review of rejections in an application under appeal. Thus, for an applicant faced with a rejection that he or she feels is improper from a seemingly stubborn examiner, the appeal process offers a more effective resolution than seeking further examination before the examiner. Efficient examination also requires that applicants share some of the burden of examination when they file multiple applications containing ‘‘conflicting’’ or patentably indistinct claims. The rules of practice currently provide that ‘‘[w]here two or more applications filed by the same applicant contain conflicting claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.’’ See current § 1.78(b). The Office is proposing to revise this rule so that, when an applicant (or assignee) files multiple applications with the same effective filing date, a common inventor and overlapping disclosures, the Office will presume that the applications contain patentably indistinct claims. In such a situation, the applicant must either rebut this presumption by explaining to the satisfaction of the Director how the applications contain only patentably distinct claims, or submit the appropriate terminal disclaimers and explain to the satisfaction of the Director why two or more pending PO 00000 Frm 00023 Fmt 4702 Sfmt 4702 51 applications containing ‘‘conflicting’’ or patentably indistinct claims should be maintained. The effect of this proposed rule will be to share the burden of examining multiple applications, with overlapping disclosure, a common inventor, and the same filing date, for double patenting. Double patenting exists because a party (or parties to a joint research agreement under the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act), Public Law 108–453, 118 Stat. 3596 (2004)) has filed multiple patent applications containing patentably indistinct claims. The applicant (or the owner of the application) is in a far better position than the Office to determine whether there are one or more other applications or patents containing patentably indistinct claims. For this reason, where an applicant chooses to file multiple applications that are substantially the same, it will be the applicant’s responsibility to assist the Office in resolving potential double patenting situations rather than taking no action until faced with a double patenting rejection. Finally, the Office has a first action final rejection practice under which the first Office action in a continuing application may be made final under certain circumstances. See MPEP § 706.07(b). If the changes proposed in this notice are adopted, the Office will discontinue this practice as no longer necessary in continuing applications under 35 U.S.C. 120, 121, or 365(c) and in requests for continued examination under 35 U.S.C. 132(b). The Office, however, does not plan any change to the final action practice for the Office action following a submission under § 1.129(a). See Changes to the Transitional Procedures for Limited Examination After Final Rejection in Certain Applications Filed Before June 8, 1995, 70 FR 24005 (May 6, 2005), 1295 Off. Gaz. Pat. Office 22 (Jun. 7, 2005). Discussion of Specific Rules Title 37 of the Code of Federal Regulations, Part 1, is proposed to be amended as follows: Section 1.78: Section 1.78 is proposed to be reorganized as follows: (1) § 1.78(a) contains definitions of continuing application, continuation application, divisional application, and continuation-in-part application; (2) § 1.78(b) contains provisions relating to claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application; (3) § 1.78(c) contains provisions relating to delayed claims under 35 U.S.C. 119(e) for the benefit of E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 52 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules a prior-filed provisional application; (4) § 1.78(d) contains provisions relating to claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or international application; (5) § 1.78(e) contains provisions relating to delayed claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or international application; (6) § 1.78(f) contains provisions relating to applications naming at least one inventor in common and containing patentably indistinct claims; (7) § 1.78(g) contains provisions relating to applications or patents under reexamination naming different inventors and containing patentably indistinct claims; and (8) § 1.78(h) contains provisions pertaining to the treatment of parties to a joint research agreement under the CREATE Act. Proposed 1.78(a)(1) defines a ‘‘continuing application’’ as a nonprovisional application or international application designating the United States of America that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed nonprovisional application or international application designating the United States of America. Proposed 1.78(a)(1) further provides that an application that does not claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application, is not a continuing application even if the application claims the benefit under 35 U.S.C. 119(e) of a provisional application, claims priority under 35 U.S.C. 119(a)– (d) or 365(b) to a foreign application, or claims priority under 35 U.S.C. 365(a) or (b) to an international application designating at least one country other than the United States of America. A continuing application must be one of a continuation application, a divisional application, or a continuation-in-part application. See MPEP § 201.11 (‘‘To specify the relationship between the applications, applicant must specify whether the application is a continuation, divisional, or continuation-in-part of the prior application. Note that the terms are exclusive. An application cannot be, for example, both a continuation and a divisional or a continuation and a continuation-in-part of the same application.’’). Proposed 1.78(a)(2) defines a ‘‘continuation application’’ as a continuing application as defined in § 1.78(a)(1) that discloses and claims only an invention or inventions that were disclosed in the prior-filed application. See MPEP § 201.07 (defines a continuation application as an application that discloses (or discloses VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 and claims) only subject matter that was disclosed in the prior-filed nonprovisional application). Proposed § 1.78(a)(3) defines a ‘‘divisional application’’ as a continuing application as defined in § 1.78(a)(1) that discloses and claims only an invention or inventions that were disclosed and claimed in the prior-filed application, but were subject to a requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 and not elected for examination in the priorfiled application. MPEP § 201.06 defines a divisional application as an application for an independent and distinct invention, which discloses and claims only subject matter that was disclosed in the prior-filed nonprovisional application. Proposed § 1.78(a)(3), however, limits a the definition of ‘‘divisional application’’ to an application that claims only an invention or inventions that were subject to a requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 and not elected for examination in the prior-filed application. See 35 U.S.C. 121 (‘‘[i]f two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions [and i]f the other invention is made the subject of a divisional application which complies with the requirements of [35 U.S.C.] 120 * * *’’). Proposed § 1.78(a)(4) defines a ‘‘continuation-in-part application’’ as a continuing application as defined in § 1.78(a)(1) that discloses subject matter that was not disclosed in the prior-filed application. See MPEP § 201.08 (a continuation-in-part repeats some substantial portion or all of the earlier nonprovisional application and adds matter not disclosed in the prior-filed nonprovisional application). Proposed § 1.78(b) contains provisions relating to claims under 35 U.S.C. 119(e) for the benefit of a priorfiled provisional application. 35 U.S.C. 119(e)(1) requires that a provisional application disclose the invention claimed in at least one claim of the later-filed application in the manner provided by 35 U.S.C. 112, ¶ 1, for the later-filed application to actually receive the benefit of the filing date of the provisional application. See New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294, 63 USPQ2d 1843, 1846 (Fed. Cir. 2002) (for a nonprovisional application to actually receive the benefit of the filing date of the provisional application, ‘‘the PO 00000 Frm 00024 Fmt 4702 Sfmt 4702 specification of the provisional [application] must ‘contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms,’ 35 U.S.C. 112 ¶ 1, to enable an ordinarily skilled artisan to practice the invention claimed in the nonprovisional application’’). Proposed § 1.78(b), however, does not also state (as does current § 1.78(a)(4)) that the provisional application discloses the invention claimed in at least one claim of the later-filed application in the manner provided by 35 U.S.C. 112, ¶ 1, because: (1) It is not necessary for the rules of practice to restate provisions of statute; and (2) the Office does not require or check for such a disclosure as a condition of permitting an application to claim the benefit of the filing date of a provisional application. Proposed § 1.78(b) also provides that the nonprovisional application or international application designating the United States of America must be filed not later than twelve months after the date on which the provisional application was filed (35 U.S.C. 119(e)), and that this twelve-month period is subject to 35 U.S.C. 21(b) and § 1.7(a) (proposed § 1.78(b)(1)). 35 U.S.C. 21(b) and § 1.7(a) provide that when the day, or the last day, for taking any action (e.g., filing a nonprovisional application within twelve months of the date on which the provisional application was filed) or paying any fee in the Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, the action may be taken, or fee paid, on the next succeeding secular or business day. Proposed § 1.78(b) otherwise contains the provisions of current § 1.78(a)(4) and (a)(5) (with the changes in Provisions for Claiming the Benefit of a Provisional Application with a NonEnglish Specification and Other Miscellaneous Matters, 70 FR 56119 (Sept. 26, 2005), 1299 Off. Gaz. Pat. Office 142 (Oct. 25, 2005) (final rule)). Proposed § 1.78(c) contains provisions relating to delayed claims under 35 U.S.C. 119(e) for the benefit of a priorfiled provisional application. Proposed § 1.78(c) contains the provisions of current § 1.78(a)(6). Proposed § 1.78(d) contains provisions relating to claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or international application. Proposed § 1.78(d)(1) provides certain conditions under which an application may claim the benefit of a prior-filed nonprovisional application or international application designating the United States of America under 35 U.S.C. 120, 121, or 365(c) and § 1.78. E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules The Office will refuse to enter, or will delete if already present, any specific reference to a prior-filed application that is not permitted by § 1.78(d)(1) (i.e., any claim for the benefit of a prior-filed nonprovisional application or international application designating the United States of America that does not meet one of the conditions specified in §§ 1.78(d)(1)(i) through 1.78(d)(1)(iii) and in which a petition under § 1.78(d)(1)(iv) either has not been filed or is not granted). If the claim for the benefit of a prior-filed nonprovisional application or international application designating the United States of America is not permitted by § 1.78(d)(1), the Office will refuse any benefit under 35 U.S.C. 120, 121, or 365(c) and § 1.78 of the prior-filed nonprovisional application or international application designating the United States of America during proceedings before the Office. Proposed § 1.78(d)(1) provides that a nonprovisional application that is a continuation application as defined in § 1.78(a)(2) or a continuation-in-part application as defined in § 1.78(a)(4) may claim the benefit under 35 U.S.C. 120, 121, or 365(c)) of only a single prior-filed application, if the benefit of such prior-filed application is not claimed in any other nonprovisional application other than a divisional application in compliance with § 1.78(d)(1)(ii), and no request for continued examination under § 1.114 has been filed in the prior-filed application (proposed § 1.78(d)(1)(i)). This provision will permit an applicant to continue prosecution of an application (other than a continuing application) via a continuation or continuation-in-part application as an alternative to a request for continued examination under § 1.114 (in the event that the prior-filed application is a design application, the applicant needs to add or claim subject matter not disclosed in the prior-filed application, or the applicant has other reasons for preferring a continuation or continuation-in-part application over a request for continued examination under § 1.114). Proposed § 1.78(d)(1)(i) will also permit an applicant to continue prosecution of claims in a continuationin-part application (via a ‘‘further’’ continuation or continuation-in-part application) that are directed solely to subject matter added in a ‘‘first’’ continuation-in-part application (provided that the ‘‘further’’ continuation or continuation-in-part application does not also claim the benefit of the prior-filed application relative to the ‘‘first’’ continuation-in- VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 part application). At least one claim of a later-filed application must be disclosed in the prior-filed application in the manner provided by 35 U.S.C. 112, ¶ 1, for the later-filed application to actually receive the benefit of the filing date of the prior-filed application (35 U.S.C. 120), and the term of any resulting patent will be measured under 35 U.S.C. 154(a)(2) from the filing date of the prior-filed application, even if the later-filed application never receives any benefit from the prior-filed application. See Abbott Lab. v. Novopharm Ltd., 104 F.3d 1305, 1309, 41 USPQ2d 1535, 1537 (Fed. Cir. 1997). Thus, the Office is not proposing to require that such ‘‘further’’ continuation or continuation-in-part application contain a showing that all of the claims are directed solely to subject matter added in the ‘‘first’’ continuation-in-part application. Rather, proposed § 1.78(d)(1)(i) permits the ‘‘further’’ continuation or continuation-in-part application to claim the benefit of the first continuation-in-part application, but does not permit the ‘‘further’’ continuation or continuation-in-part application to also claim the benefit of the prior-filed initial application (the prior-filed application relative to the first continuation-in-part application). For example, consider an applicant who files: (1) An initial application, ‘‘A’’: (2) a continuation-in-part application, ‘‘B,’’ claiming the benefit of application A; and (3) a ‘‘further’’ continuation or continuation-in-part application ‘‘C,’’ claiming the benefit of application B. Under proposed 1.78(d)(i), application C could not claim any benefit from application A (except as permitted under proposed § 1.78(d)(1)(iv)). Proposed § 1.78(d)(1)(i) will also permit an applicant whose application (other than a continuing application) contains rejected claims and allowed claims to obtain a patent on the allowed claims and continue prosecution of the rejected or other claims in a continuation or continuation-in-part application. Proposed § 1.78(d)(1) also provides that a nonprovisional application that is a divisional application as defined in § 1.78(a)(3) may claim the benefit under 35 U.S.C. 120, 121, or 365(c)) of only a single prior-filed application, if the prior-filed application was subject to a requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121, and the divisional application contains only claims directed to an invention or inventions that were identified in such requirement of unity of invention or for restriction but were not elected for examination in the prior-filed PO 00000 Frm 00025 Fmt 4702 Sfmt 4702 53 application (proposed § 1.78(d)(1)(ii)). This will permit an applicant to obtain examination of claims that were withdrawn from consideration in the prior-filed application due to a requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121. Proposed § 1.78(d)(1)(ii) permits ‘‘involuntary’’ divisional applications (a continuing application filed as a result of a requirement of unity of invention under PCT Rule 13 or requirement for restriction under 35 U.S.C. 121 in the prior-filed application), but does not permit ‘‘voluntary divisional’’ applications (a continuing application not filed as a result of a requirement of unity of invention under PCT Rule 13 or requirement for restriction under 35 U.S.C. 121 in the prior-filed application). Proposed § 1.78(d)(1) also provides that a nonprovisional application that is either a continuation application as defined in § 1.78(a)(2) or a continuationin-part application as defined in § 1.78(a)(4) may claim the benefit under 35 U.S.C. 120, 121, or 365(c)) of only either a single divisional application in compliance with § 1.78(d)(1)(ii) and the prior-filed application whose benefit is claimed in such single divisional application, if no request for continued examination under § 1.114 has been filed in the prior-filed divisional application (proposed § 1.78(d)(1)(iii)). This provision will permit an applicant to continue prosecution of a divisional application via a single continuation application or continuation-in-part application as an alternative to a request for continued examination under § 1.114. Proposed § 1.78(d)(1)(iii), however, would not allow an applicant to file more than a single continuation application or continuation-in-part application of a divisional application as of right. Proposed § 1.78(d)(1)(iii) will also permit an applicant whose divisional application contains rejected claims and allowed claims to obtain a patent on the allowed claims, and continue prosecution of the rejected or other claims in a single continuation or continuation-in-part application. Proposed § 1.78(d)(1) also provides that a continuing nonprovisional application that is filed to obtain consideration of an amendment, argument, or evidence that could not have been submitted during the prosecution of the prior-filed application may claim the benefit under 35 U.S.C. 120, 121, or 365(c) of such prior-filed application (proposed § 1.78(d)(1)(iv)). Proposed § 1.78(d)(1)(iv) specifically provides that such a continuing nonprovisional E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 54 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules application must have filed therein a petition accompanied by the fee set forth in § 1.17(f) and a showing to the satisfaction of the Director that the amendment, argument, or evidence could not have been submitted during the prosecution of the prior-filed application. This will permit an applicant to continue prosecution of an application via a continuing application to obtain consideration of an amendment, argument, or evidence that could not have been submitted during the prosecution of the prior-filed application. Applicants are permitted to submit any desired amendment, argument, or evidence after the first Office action in the prior-filed application, and are further permitted to file either a single continuation or continuation-in-part application (proposed §§ 1.78(d)(1)(i) and 1.78(d)(1)(iii)) or a single request for continued examination under § 1.114 to submit any desired amendment, argument, or evidence before or after the first Office action in the continuation or continuation-in-part application or request for continued examination under § 1.114. Since multiple opportunities are given to submit any desired amendment, argument, or evidence, that an amendment, argument, or evidence is refused entry because prosecution in the prior-filed application is again closed (after the filing of a continuation or continuationin-part application (proposed §§ 1.78(d)(1)(i) and 1.78(d)(1)(iii)) or a request for continued examination under § 1.114) will not by itself be a sufficient reason to warrant the grant of a petition under § 1.78(d)(1)(iv). Rather, an applicant will be expected to demonstrate why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the prior-filed application. Proposed § 1.78(d)(1)(iv) also sets forth the time period within which such a petition must be provided: (1) If the later-filed continuing application is an application filed under 35 U.S.C. 111(a), within four months from the actual filing date of the laterfiled application; and (2) if the laterfiled continuing application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, within four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed international application. Proposed § 1.78(d) also provides that the Office will refuse to enter, or will delete if present, any specific reference VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 to a prior-filed application that is not permitted by proposed § 1.78(d) (proposed § 1.78(d)(3)). If the claim for the benefit of a prior-filed nonprovisional application or international application designating the United States of America is not permitted by § 1.78(d)(1), the Office will refuse any benefit under 35 U.S.C. 120, 121, or 365(c) and § 1.78 of the priorfiled nonprovisional application or international application designating the United States of America during proceedings before the Office. Proposed § 1.78(d) also provides that the entry of or failure to delete a specific reference to a prior-filed application that is not permitted by § 1.78(d)(1) does not constitute a waiver of the provisions of § 1.78(d)(1). The grant of a petition under § 1.78(d)(1)(iv) or waiver of a requirement of § 1.78(d)(1) would be only by an explicit decision by the Office, and would not occur by implication due to the entry of or failure to delete a specific reference to a priorfiled application that is not permitted by § 1.78(d)(1). Proposed § 1.78(d)(3) also includes the parenthetical ‘‘(i.e., whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application or international application)’’ to clarify in the rules of practice what is meant by the requirement that an applicant identify (currently stated as indicate) the relationship of the applications. See MPEP § 201.11. Proposed § 1.78(d)(3) also provides that if an application is identified as a continuation-in-part application, the applicant must identify which claim or claims in the continuation-in-part application are disclosed in the manner provided by 35 U.S.C. 112, ¶ 1, in the prior-filed application. Any claim in the continuation-in-part application that is not identified as being disclosed in the manner provided by 35 U.S.C. 112, ¶ 1, in the prior-filed application will be treated as entitled only to the filing date of the continuation-in-part application. Proposed § 1.78(d) also does not contain the provision that the prior-filed application disclose the invention claimed in at least one claim of the later-filed application in the manner provided by 35 U.S.C. 112, ¶ 1. It is necessary for the prior-filed application to disclose the invention claimed in at least one claim of the later-filed application in the manner provided by 35 U.S.C. 112, ¶ 1, for the later-filed application to actually receive the benefit of the filing date of the priorfiled application (35 U.S.C. 120), but the Office does not require such a disclosure as a condition of permitting PO 00000 Frm 00026 Fmt 4702 Sfmt 4702 an application to claim the benefit of the filing date of a prior-filed application. See MPEP § 201.08 (‘‘Unless the filing date of the earlier nonprovisional application is actually needed * * *, there is no need for the Office to make a determination as to whether the requirement of 35 U.S.C. 120, that the earlier nonprovisional application discloses the invention of the second application in the manner provided by 35 U.S.C. 112, ¶ 1, is met and whether a substantial portion of all of the earlier nonprovisional application is repeated in the second application in a continuation-in-part situation. Accordingly, an alleged continuation-inpart application should be permitted to claim the benefit of the filing date of an earlier nonprovisional application if the alleged continuation-in-part application complies with the * * * formal requirements of 35 U.S.C. 120.’’). Proposed § 1.78(d) also provides that cross-references to applications for which a benefit is not claimed under title 35, United States Code, must be located in a separate paragraph from the references required by 35 U.S.C. 119(e) or 120 and § 1.78 to applications for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c) (proposed § 1.78(d)(6)). Proposed § 1.78(d) otherwise contains the provisions of current § 1.78(a)(1) and (a)(2). Proposed § 1.78(e) contains provisions relating to delayed claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or international application. Proposed § 1.78(e) provides that a petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application will not be granted in an application in which a request for continued examination under § 1.114 has been filed. Proposed § 1.114(f) does not permit a request for continued examination in a continuing application (other than a divisional application in compliance with § 1.78(d)(1)(ii)), without a petition showing to the satisfaction of the Director that the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application. Thus, proposed § 1.78(e) provides that an applicant may not add a delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a priorfiled application in an application in which a request for continued examination under § 1.114 has been filed. Proposed § 1.78(e) otherwise contains the provisions of current § 1.78(a)(3). E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules Proposed § 1.78(f) contains provisions relating to applications naming at least one inventor in common and containing patentably indistinct claims. Proposed § 1.78(f)(1) provides that if a nonprovisional application has a filing date that is the same as or within two months of the filing date of one or more other pending nonprovisional applications or patents, taking into account any filing date for which a benefit is sought under title 35, United States Code, names at least one inventor in common with the one or more other pending nonprovisional applications or patents, and is owned by the same person, or subject to an obligation of assignment to the same person, as the one or more other pending nonprovisional applications or patents, the applicant must identify each such other application or patent by application number (i.e., series code and serial number) and patent number (if applicable). This identification requirement would also apply to each identified application, because if the identifying application has a filing date that is the same as or within two months of the filing date of the identified application, the identified application has a filing date that is the same as or within two months of the filing date of the identifying application. The application or patent may be identified in the specification in the paragraph containing cross-references to applications for which a benefit is not claimed under title 35, United States Code (proposed § 1.78(d)(6)), or may be identified in a separate paper. Proposed § 1.78(f)(1) also provides that the identification of one or more other nonprovisional applications under this paragraph must be within four months from the actual filing date of a nonprovisional application filed under 35 U.S.C. 111(a), or within four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371. Proposed § 1.78(f)(2) provides that if the circumstances set forth in proposed § 1.78(f)(1) exist and the nonprovisional application has the same filing date as the one or more other pending nonprovisional applications or patents, taking into account any filing date for which a benefit is sought under title 35, United States Code, and contains substantial overlapping disclosure as the one or more other pending nonprovisional applications or patents, a rebuttable presumption shall exist that the nonprovisional application contains VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 at least one claim that is not patentably distinct from at least one of the claims in the one or more other pending or patented nonprovisional applications. Proposed § 1.78(f)(2) also provides that in such a situation, the applicant in the nonprovisional application must either: (1) rebut this presumption by explaining to the satisfaction of the Director how the application contains only claims that are patentably distinct from the claims in each of such other pending applications or patents; or (2) submit a terminal disclaimer in accordance with § 1.321(c). In addition, proposed § 1.78(f)(2) provides that where one or more other pending nonprovisional applications containing patentably indistinct claims have been identified, the applicant must explain to the satisfaction of the Director why it is necessary that there are two or more pending nonprovisional applications naming at least one inventor in common and owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims. As discussed previously, where an applicant chooses to file multiple applications that are substantially the same it will be the applicant’s responsibility to assist the Office in resolving potential double patenting situations rather than taking no action until faced with a double patenting rejection. Thus, if an Office action must include a double patenting rejection, it is because the applicant has not yet met his or her responsibility to resolve the double patenting situation by filing the appropriate terminal disclaimer. Therefore, the inclusion of a new double patenting rejection in a second or subsequent Office action will not preclude the Office action from being made final (assuming that the conditions in MPEP § 706.07(a) are otherwise met). Proposed § 1.78(f)(3) provides that in the absence of good and sufficient reason for there being two or more pending nonprovisional applications naming at least one inventor in common and owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims, the Office may require elimination of the patentably indistinct claims from all but one of the applications. The Office expects to apply this provision primarily in situations covered by proposed § 1.78(f)(2)(ii), under which applicants must explain to the satisfaction of the Director why it is necessary that there are two or more pending nonprovisional applications naming at least one inventor in common PO 00000 Frm 00027 Fmt 4702 Sfmt 4702 55 and owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims. The Office, however, may require that an applicant provide good and sufficient reason whenever there are two or more pending nonprovisional applications naming at least one inventor in common and owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims (i.e., in situations other than those covered by § 1.78(f)(2) or even § 1.78(f)(1)). Proposed § 1.78(g) contains provisions relating to applications or patents under reexamination naming different inventors and containing patentably indistinct claims. Proposed § 1.78(g) contains the provisions of current § 1.78(c), except that ‘‘conflicting claims’’ is proposed to be changed to ‘‘patentably indistinct claims’’ for clarity and for consistency with the language of proposed § 1.78(f). Proposed § 1.78(h) covers the situation in which parties to a joint research agreement are treated (in essence) as a common owner for purposes of 35 U.S.C. 103 by virtue of the CREATE Act. Proposed § 1.78(h) provides that if an application discloses or is amended to disclose the names of parties to a joint research agreement (35 U.S.C. 103(c)(2)(C)), the parties to the joint research agreement are considered to be the same person for purposes of § 1.78. The CREATE Act amended 35 U.S.C. 103(c) to provide that subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if three conditions are met: (1) The claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; (2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. See Changes to Implement the Cooperative Research and Technology Enhancement Act of 2004, 70 FR 1818, 1818 (Jan. 11, 2005), 1291 Off. Gaz. Pat. Office 58, 58–59 (Feb. 8, 2005). Proposed § 1.78(h) also provides that if the application is amended to disclose the names of parties to a joint research agreement under 35 U.S.C. 103(c)(2)(C), the identification of such one or more other nonprovisional applications as required by § 1.78(f)(1) E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 56 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules must be submitted with the amendment under 35 U.S.C. 103(c)(2)(C) unless such identification is or has been submitted within the four-month period specified in § 1.78(f)(1). The proposed changes to § 1.78 (if adopted) would be applicable to any application filed on or after the effective date of the final rule. Thus, any application filed on or after the effective date of the final rule seeking to claim the benefit of more than a single priorfiled nonprovisional application or international application under 35 U.S.C. 120, 121, 365(c) and § 1.78 would need to either meet the requirements specified in proposed § 1.78(d)(1)(iii) or include a petition under proposed § 1.78(d)(1)(iv). That is, an applicant may only file one continuation or continuation-in-part application (and not ‘‘one more’’ continuation or continuation-in-part application) after the effective date of the final rule without meeting the requirements specified in proposed § 1.78(d)(1)(iii) or including a petition under proposed § 1.78(d)(1)(iv). Conforming changes: The proposed reorganization and revision of § 1.78 would also require conforming changes to §§ 1.17, 1.52, 1.53, 1.76, and 1.110. Section 1.114: Proposed § 1.114(a) adds the phrase ‘‘subject to the conditions of this section’’ to make clear that an applicant may not file an unrestricted number of requests for continued examination. Proposed § 1.114(a) otherwise contains the provisions of current § 1.114(a). Proposed § 1.114(f) provides that an applicant may not file more than a single request for continued examination under § 1.114 in any application, and that an applicant may not file a request for continued examination under § 1.114 in any continuing application (§ 1.78(a)(1)) other than a divisional application in compliance with § 1.78(d)(1)(ii), unless the request for continued examination also includes a petition accompanied by the fee set forth in § 1.17(f) and a showing to the satisfaction of the Director that the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application. Thus, an applicant may file a single request for continued examination in a noncontinuing application, or in a divisional application in compliance with § 1.78(d)(1)(ii), without a showing to the satisfaction of the Director that the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application. Otherwise, a request for continued examination must be VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 accompanied by a petition accompanied by the fee set forth in § 1.17(f) and a showing to the satisfaction of the Director that the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application. Since multiple opportunities are given to submit any desired amendment, argument, or evidence, that an amendment, argument, or evidence is refused entry because prosecution in the application is again closed (after the filing of a continuation or continuationin-part application (§§ 1.78(d)(1)(i) and 1.78(d)(1)(iii)) or a request for continued examination under § 1.114) will not by itself be a sufficient reason to warrant the grant of a petition under § 1.114(f). Rather, an applicant will be expected to demonstrate why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application. Proposed § 1.114(f) further provides that any other proffer of a request for continued examination in an application not on appeal will be treated as a submission under § 1.116, and that any other proffer of a request for continued examination in an application on appeal will be treated only as a request to withdraw the appeal. Thus, a second or subsequent request for continued examination that does not include the required petition will not have the same effect as a first request for continued examination. The proposed changes to § 1.114 (if adopted) would be applicable to any application in which a request for continued examination is filed on or after the effective date of the final rule. Thus, any request for continued examination filed on or after the effective date of the final rule in an application in which a request for continued examination has previously been filed must include a petition under proposed § 1.114(f). That is, an applicant may only file one request for continued examination (and not ‘‘one more’’ request for continued examination) after the effective date of the final rule without a petition under proposed § 1.114(f). Section 1.495: Proposed § 1.495(g) provides that if the documents and fees contain conflicting indications as between an application under 35 U.S.C. 111 and a submission to enter the national stage under 35 U.S.C. 371, the documents and fees will be treated as a submission to enter the national stage under 35 U.S.C. 371. It is Office experience that, in the majority of cases, documents and fees that contain conflicting indications as between an application under 35 U.S.C. 111 and a PO 00000 Frm 00028 Fmt 4702 Sfmt 4702 submission to enter the national stage under 35 U.S.C. 371 were intended as a submission under 35 U.S.C. 371. In addition, the changes to § 1.78 (if adopted) would render the option of filing of a ‘‘bypass’’ continuation application under 35 U.S.C. 111(a) less preferable to simply entering the national stage under 35 U.S.C. 371 in an international application. A ‘‘bypass’’ continuation application is an application for patent filed under 35 U.S.C. 111(a) that claims the benefit of the filing date of an earlier international application that did not enter the national stage under 35 U.S.C. 371. Rule Making Considerations Regulatory Flexibility Act: For the reasons set forth herein, the Deputy General Counsel for General Law of the United States Patent and Trademark Office has certified to the Chief Counsel for Advocacy of the Small Business Administration that the changes proposed in this notice will not have a significant economic impact on a substantial number of small entities. See 5 U.S.C. 605(b). In Fiscal Year 2005, the Office received approximately 317,000 nonprovisional applications. Of those, about 62,870 (about 19,700 small entity) were continuing applications. In addition, the Office received about 52,750 (about 8,970 small entity) requests for continued examination. This notice proposes to require that: (1) Any second or subsequent continuation or continuation-in-part application and any second or subsequent request for continued examination include a showing to the satisfaction of the Director as to why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution after a single continuation or continuation-in-part application or request for continued examination; and (2) multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and a common assignee include either an explanation to the satisfaction of the Director of how the claims are patentably distinct, or a terminal disclaimer and explanation to the satisfaction of the Director of why patentably indistinct claims have been filed in multiple applications. Continuing Applications: This notice proposes to require that any second or subsequent continuation or continuation-in-part application include a petition (with a $400.00 petition fee) with a showing to the satisfaction of the Director as to why the amendment, argument, or evidence could not have been submitted prior to the close of E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules prosecution in the prior-filed application. This proposed rule change will not affect a substantial number of small entities. Of the 62,870 continuing applications filed in fiscal year 2005, about 44,500 (about 15,665 small entity) were designated as continuation or continuation-in-part applications, and about 11,790 (about 4,470 small entity) of these applications were a second or subsequent continuation or continuation-in-part application. Therefore, the proposed petition fee and showing requirement would impact relatively few applications (about 3.7 percent or 11,790 out of 317,000) and relatively few small entity applications (about 4.8 percent or 4,470 out of 93,000). It is also noted that this proposed change would not disproportionately impact small entity applicants. The primary impact of this change would be to require applicants to make a bona fide attempt to advance the application to final agency action by submitting any desired amendment, argument, or evidence prior to the close of prosecution after a single continuation or continuation-in-part application or single request for continued examination (except as permitted by § 1.116 or § 41.33). The notice does not propose any petition fee or showing requirement for a divisional application, but only requires that a divisional application be the result of a requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 in the prior-filed application. Thus, an applicant may obtain examination of claims to an invention in the prior-filed application because the Office did not impose a requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 in the prior-filed application, or the applicant may obtain examination of claims to an invention in a divisional application because the Office did impose a requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 in the prior-filed application. Of the 62,870 continuing applications filed in fiscal year 2005, about 18,370 (about 4,000 small entity) were designated as divisional applications. Requests for Continued Examination: This notice proposes to require that any second or subsequent request for continued examination include a petition (with a $400.00 petition fee) with a showing to the satisfaction of the Director as to why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution. VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 This proposed rule change will not affect a substantial number of small entities. Of the 52,750 requests for continued examination filed in fiscal year 2005, about 9,925 (about 1,796 small entity) were a second or subsequent request for continued examination. Therefore, the proposed petition fee and showing requirement would impact relatively few applicants (about 3.1 percent or 9,925 out of 317,000) and relatively few small entity applicants (about 1.9 percent or 1,796 out of 93,000). It is also noted that this proposed change would not disproportionately impact small entity applicants. The primary impact of this change would be to require applicants to make a bona fide attempt to advance the application to final agency action by submitting any desired amendment, argument, or evidence prior to the close of prosecution after a single continuation application or single request for continued examination (except as permitted by § 1.116 or § 41.33). Patentably Indistinct Claims: Finally, this notice proposes that applicants (or assignees) who file multiple applications having the same effective filing date, overlapping disclosure, and a common inventor include either an explanation of how the claims are patentably distinct, or a terminal disclaimer and explanation of why there are patentably indistinct claims in multiple applications. An applicant who files multiple applications containing patentably indistinct claims must in any case submit the appropriate terminal disclaimers to avoid double patenting. See In re Berg, 140 F.3d 1428, 1434, 46 USPQ2d 1226, 1231 (Fed. Cir. 1998) (applicants who may file all of their claims in a single application, but instead chose to file such claims in multiple applications, are not entitled to two-way double patenting test). This proposed rule change does not affect a substantial number of small entities. The Office received about 17,600 (about 3,850 small entity) terminal disclaimers in fiscal year 2004. Based upon the Office’s experience with double patenting situations, most of these double patenting situations involved an application and a patent (rather than two applications) containing patentably indistinct claims. In addition, § 1.78(b) currently provides where two or more applications filed by the same applicant contain conflicting (i.e., patentably indistinct) claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application). Therefore, PO 00000 Frm 00029 Fmt 4702 Sfmt 4702 57 the requirement for an explanation up front as to why there are two or more pending applications by the same applicant (or assignee) containing patentably indistinct claims when that is the case would impact relatively few applicants (about 5.7 percent or 17,600 out of 310,000) and relatively few small entity applicants (about 4.1 percent or 3,850 out of 93,000). It is also noted that this proposed change would not disproportionately impact small entity applicants. Moreover, there are no fees associated with this proposed rule change. Executive Order 13132: This rule making does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999). Executive Order 12866: This rule making has been determined to be significant for purposes of Executive Order 12866 (Sept. 30, 1993). Paperwork Reduction Act: This notice involves information collection requirements which are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collection of information involved in this notice has been reviewed and previously approved by OMB under OMB control number 0651– 0031. This notice proposes to require that: (1) Any second or subsequent continuation or continuation-in-part application and any second or subsequent request for continued examination include a showing to the satisfaction of the Director as to why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution after a single continuation application or request for continued examination; and (2) multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and a common assignee include either an explanation to the satisfaction of the Director of how the claims are patentably distinct, or a terminal disclaimer and explanation to the satisfaction of the Director of why patentably indistinct claims have been filed in multiple applications. The United States Patent and Trademark Office is resubmitting an information collection package to OMB for its review and approval because the changes in this notice do affect the information collection requirements associated with the information collection under OMB control number 0651–0031. The title, description and respondent description of the information collection under OMB control number 0651–0031 is shown below with an estimate of the E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 58 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules annual reporting burdens. Included in the estimate is the time for reviewing instructions, gathering and maintaining the data needed, and completing and reviewing the collection of information. The title, description and respondent description of the information collection under OMB control number 0651–0031 is shown below with an estimate of the annual reporting burdens. Included in the estimate is the time for reviewing instructions, gathering and maintaining the data needed, and completing and reviewing the collection of information. OMB Number: 0651–0031. Title: Patent Processing (Updating). Form Numbers: PTO/SB/08, PTO/SB/ 17i, PTO/SB/17p, PTO/SB/21–27, PTO/ SB/24B, PTO/SB/30–32, PTO/SB/35–39, PTO/SB/42–43, PTO/SB/61–64, PTO/ SB/64a, PTO/SB/67–68, PTO/SB/91–92, PTO/SB/96–97, PTO–2053–A/B, PTO– 2054–A/B, PTO–2055–A/B, PTOL– 413A. Type of Review: Approved through July of 2006. Affected Public: Individuals or households, business or other for-profit institutions, not-for-profit institutions, farms, Federal Government and State, Local and Tribal Governments. Estimated Number of Respondents: 2,284,439. Estimated Time per Response: 1 minute and 48 seconds to 12 hours. Estimated Total Annual Burden Hours: 2,732,441 hours. Needs and Uses: During the processing of an application for a patent, the applicant or applicant’s representative may be required or desire to submit additional information to the United States Patent and Trademark Office concerning the examination of a specific application. The specific information required or which may be submitted includes: Information disclosure statement and citation, examination support documents, requests for extensions of time, the establishment of small entity status, abandonment and revival of abandoned applications, disclaimers, appeals, petitions, expedited examination of design applications, transmittal forms, requests to inspect, copy and access patent applications, publication requests, and certificates of mailing, transmittals, and submission of priority documents and amendments. Comments are invited on: (1) Whether the collection of information is necessary for proper performance of the functions of the agency; (2) the accuracy of the agency’s estimate of the burden; (3) ways to enhance the quality, utility, and clarity of the information to be collected; and (4) ways to minimize the VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 burden of the collection of information to respondents. Interested persons are requested to send comments regarding these information collections, including suggestions for reducing this burden, to: (1) The Office of Information and Regulatory Affairs, Office of Management and Budget, New Executive Office Building, Room 10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk Officer for the Patent and Trademark Office; and (2) Robert J. Spar, Director, Office of Patent Legal Administration, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450. Notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid OMB control number. List of Subjects in 37 CFR Part 1 Administrative practice and procedure, Courts, Freedom of information, Inventions and patents, Reporting and recordkeeping requirements, Small businesses. For the reasons set forth in the preamble, 37 CFR part 1 is proposed to be amended as follows: PART 1—RULES OF PRACTICE IN PATENT CASES 1. The authority citation for 37 CFR part 1 continues to read as follows: Authority: 35 U.S.C. 2(b)(2). 2. Section 1.78 is revised to read as follows: § 1.78 Claiming benefit of earlier filing date and cross-references to other applications. (a) Definitions. (1) Continuing application. A continuing application is a nonprovisional application or an international application designating the United States of America that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed nonprovisional application or international application designating the United States of America. An application that does not claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application, is not a continuing application even if the application claims the benefit under 35 U.S.C. 119(e) of a provisional application, claims priority under 35 U.S.C. 119(a)– (d) or 365(b) to a foreign application, or claims priority under 35 U.S.C. 365(a) or (b) to an international application PO 00000 Frm 00030 Fmt 4702 Sfmt 4702 designating at least one country other than the United States of America. (2) Continuation application. A continuation application is a continuing application as defined in paragraph (a)(1) of this section that discloses and claims only an invention or inventions that were disclosed in the prior-filed application. (3) Divisional application. A divisional application is a continuing application as defined in paragraph (a)(1) of this section that discloses and claims only an invention or inventions that were disclosed and claimed in the prior-filed application, but were subject to a requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 and not elected for examination in the priorfiled application. (4) Continuation-in-part application. A continuation-in-part application is a continuing application as defined in paragraph (a)(1) of this section that discloses subject matter that was not disclosed in the prior-filed application. (b) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. A nonprovisional application, other than for a design patent, or an international application designating the United States of America may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this paragraph. (1) The nonprovisional application or international application designating the United States of America must be filed not later than twelve months after the date on which the provisional application was filed. This twelvemonth period is subject to 35 U.S.C. 21(b) and § 1.7(a). (2) Each prior-filed provisional application must name as an inventor at least one inventor named in the laterfiled application, must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(d) must be paid within the time period set forth in § 1.53(g). (3) Any nonprovisional application or international application designating the United States of America claiming the benefit of one or more prior-filed provisional applications must contain or be amended to contain a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number). If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76), or the specification must E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules contain or be amended to contain such reference in the first sentence(s) following the title. (4) The reference required by paragraph (b)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the priorfiled provisional application. If the later-filed application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in the laterfiled international application or sixteen months from the filing date of the priorfiled provisional application. These time periods are not extendable. Except as provided in paragraph (c) of this section, the failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) of such prior-filed provisional application. The time periods in this paragraph do not apply if the later-filed application is: (i) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or (ii) An international application filed under 35 U.S.C. 363 before November 29, 2000. (5) If the prior-filed provisional application was filed in a language other than English and both an Englishlanguage translation of the prior-filed provisional application and a statement that the translation is accurate were not previously filed in the prior-filed provisional application, applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and statement were filed in the provisional application, or an amendment or Supplemental Application Data Sheet withdrawing the benefit claim, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional application, even if the provisional application has become abandoned. (c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 provisional application. If the reference required by 35 U.S.C. 119(e) and paragraph (b)(3) of this section is presented in a nonprovisional application after the time period provided by paragraph (b)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application may be accepted if submitted during the pendency of the later-filed application and if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application must be accompanied by: (1) The reference required by 35 U.S.C. 119(e) and paragraph (b)(3) of this section to the prior-filed provisional application, unless previously submitted; (2) The surcharge set forth in § 1.17(t); and (3) A statement that the entire delay between the date the claim was due under paragraph (b)(4) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. (d) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or international application. A nonprovisional application (including an international application that has entered the national stage after compliance with 35 U.S.C. 371) may claim the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States of America under the conditions set forth in 35 U.S.C. 120 and this paragraph. (1) A nonprovisional application claiming the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States of America must satisfy at least one of the following conditions: (i) The nonprovisional application is either a continuation application as defined in paragraph (a)(2) of this section or a continuation-in-part application as defined in paragraph (a)(4) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of only a single prior-filed application, the benefit of such priorfiled application not being claimed in any other nonprovisional application other than a divisional application in compliance with paragraph (d)(1)(ii) of this section, and no request for continued examination under § 1.114 PO 00000 Frm 00031 Fmt 4702 Sfmt 4702 59 has been filed in the prior-filed application. (ii) The nonprovisional application is a divisional application as defined in paragraph (a)(3) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of only a single prior-filed application, the prior-filed application was subject to a requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121, and the divisional application contains only claims directed to an invention or inventions that were identified in such requirement of unity of invention or requirement for restriction but were not elected for examination in the prior-filed application. (iii) The nonprovisional application is either a continuation application as defined in paragraph (a)(2) of this section or a continuation-in-part application as defined in paragraph (a)(4) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of only a single divisional application in compliance with paragraph (d)(1)(ii) of this section and the single prior-filed application whose benefit is claimed in such divisional application, and no request for continued examination under § 1.114 has been filed in such prior-filed divisional application. (iv) The nonprovisional application is a continuing application as defined in paragraph (a)(1) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application, which continuing application is filed to obtain consideration of an amendment, argument, or evidence that could not have been submitted during the prosecution of the prior-filed application. The nonprovisional application must have filed therein a petition accompanied by the fee set forth in § 1.17(f) and a showing to the satisfaction of the Director that the amendment, argument, or evidence could not have been submitted during the prosecution of the prior-filed application. If the later-filed continuing application is an application filed under 35 U.S.C. 111(a), this petition must be submitted within four months from the actual filing date of the later-filed continuing application, and if the laterfiled continuing application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this petition must be submitted within four months from the date on which the national stage commenced under 35 E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 60 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules U.S.C. 371(b) or (f) in the later-filed international application. (2) Each prior-filed application must name as an inventor at least one inventor named in the later-filed application and must be either an international application entitled to a filing date in accordance with PCT Article 11 and designating the United States of America, or a nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or § 1.53(d) and have paid therein the basic filing fee set forth in § 1.16 within the pendency of the application. (3) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, or international application designating the United States of America, claiming the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States of America must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and identifying the relationship of the applications (i.e., whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application or international application). If an application is identified as a continuation-in-part application, the applicant must identify which claim or claims in the continuation-in-part application are disclosed in the manner provided by the first paragraph of 35 U.S.C. 112 in the prior-filed application. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76), or the specification must contain or be amended to contain such reference in the first sentence(s) following the title. The Office will refuse to enter, or will delete if present, any specific reference to a prior-filed application that is not permitted by paragraph (d)(1) of this section. The entry of or failure to delete a specific reference to a prior-filed application that is not permitted by paragraph (d)(1) of this section does not constitute a waiver of the provisions of paragraph (d)(1) of this section. (4) The reference required by 35 U.S.C. 120 and paragraph (d)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in the laterfiled international application or sixteen months from the filing date of the priorfiled application. These time periods are not extendable. Except as provided in paragraph (e) of this section, the failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (d)(3) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such prior-filed application. The time periods in this paragraph do not apply if the later-filed application is: (i) An application for a design patent; (ii) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or (iii) An international application filed under 35 U.S.C. 363 before November 29, 2000. (5) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number. (6) Cross-references to other related applications may be made when appropriate (see § 1.14). Crossreferences to applications for which a benefit is not claimed under title 35, United States Code, must be located in a separate paragraph from the references required by 35 U.S.C. 119(e) or 120 and this section to applications for which a benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c). (e) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional application or international application. If the reference required by 35 U.S.C. 120 and paragraph (d)(3) of this section is presented after the time period provided by paragraph (d)(4) of this section, the claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed copending nonprovisional application or international application designating the United States of America may be PO 00000 Frm 00032 Fmt 4702 Sfmt 4702 accepted if the reference identifying the prior-filed application by application number or international application number and international filing date was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application will not be granted in an application in which a request for continued examination under § 1.114 has been filed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application must be accompanied by: (1) The reference required by 35 U.S.C. 120 and paragraph (d)(3) of this section to the prior-filed application, unless previously submitted; (2) The surcharge set forth in § 1.17(t); and (3) A statement that the entire delay between the date the claim was due under paragraph (d)(4) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. (f) Applications and patents naming at least one inventor in common. (1) If a nonprovisional application has a filing date that is the same as or within two months of the filing date of one or more other pending or patented nonprovisional applications, taking into account any filing date for which a benefit is sought under title 35, United States Code, names at least one inventor in common with the one or more other nonprovisional applications, and is owned by the same person, or subject to an obligation of assignment to the same person, as the one or more other nonprovisional applications, the applicant must identify each such other application by application number (i.e., series code and serial number) and patent number (if applicable). The identification of such one or more other nonprovisional applications if required by this paragraph must be submitted within four months from the actual filing date of a nonprovisional application filed under 35 U.S.C. 111(a), or within four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371. (2) If a nonprovisional application has the same filing date as the filing date of one or more other pending or patented nonprovisional applications, taking into account any filing date for which a benefit is sought under title 35, United E:\FR\FM\03JAP1.SGM 03JAP1 rmajette on DSK29S0YB1PROD with PROPOSALS6 Federal Register / Vol. 71, No. 1 / Tuesday, January 3, 2006 / Proposed Rules States Code, names at least one inventor in common with the one or more other pending or patented nonprovisional applications, is owned by the same person, or subject to an obligation of assignment to the same person, and contains substantial overlapping disclosure as the one or more other pending or patented nonprovisional applications, a rebuttable presumption shall exist that the nonprovisional application contains at least one claim that is not patentably distinct from at least one of the claims in the one or more other pending or patented nonprovisional applications. In this situation, the applicant in the nonprovisional application must either: (i) Rebut this presumption by explaining to the satisfaction of the Director how the application contains only claims that are patentably distinct from the claims in each of such other pending applications or patents; or (ii) Submit a terminal disclaimer in accordance with § 1.321(c). In addition, where one or more other pending nonprovisional applications have been identified, the applicant must explain to the satisfaction of the Director why there are two or more pending nonprovisional applications naming at least one inventor in common and owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims. (3) In the absence of good and sufficient reason for there being two or more pending nonprovisional applications naming at least one inventor in common and owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims, the Office may require elimination of the patentably indistinct claims from all but one of the applications. (g) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same party and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, the Office may require the assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, and if not, indicate which named inventor is the prior inventor. VerDate Mar<15>2010 10:52 Nov 10, 2010 Jkt 223001 (h) Parties to a joint research agreement. If an application discloses or is amended to disclose the names of parties to a joint research agreement (35 U.S.C. 103(c)(2)(C)), the parties to the joint research agreement are considered to be the same person for purposes of this section. If the application is amended to disclose the names of parties to a joint research agreement under 35 U.S.C. 103(c)(2)(C), the identification of such one or more other nonprovisional applications as required by paragraph (f)(1) of this section must be submitted with the amendment under 35 U.S.C. 103(c)(2)(C) unless such identification is or has been submitted within the four-month period specified in paragraph (f)(1) of this section. 3. Section 1.114 is amended by revising the introductory text of paragraph (a) and by adding a new paragraph (f) to read as follows: 61 and fees contain conflicting indications as between an application under 35 U.S.C. 111 and a submission to enter the national stage under 35 U.S.C. 371, the documents and fees will be treated as a submission to enter the national stage under 35 U.S.C. 371. * * * * * Dated: December 19, 2005. Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 05–24528 Filed 12–30–05; 8:45 am] BILLING CODE 3510–16–P DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Part 1 [Docket No.: 2005–P–067] § 1.114 Request for continued examination. RIN 0651–AB94 (a) If prosecution in an application is closed, an applicant may, subject to the conditions of this section, file a request for continued examination of the application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of: * * * * * (f) An applicant may not file more than a single request for continued examination under this section in any application, and may not file any request for continued examination under this section in any continuing application (§ 1.78(a)(1)) other than a divisional application in compliance with § 1.78(d)(1)(ii), unless the request for continued examination also includes a petition accompanied by the fee set forth in § 1.17(f) and a showing to the satisfaction of the Director that the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application. Any other proffer of a request for continued examination in an application not on appeal will be treated as a submission under § 1.116. Any other proffer of a request for continued examination in an application on appeal will be treated only as a request to withdraw the appeal. 4. Section 1.495 is amended by revising paragraph (g) to read as follows: § 1.495 Entering the national stage in the United States of America. * * * * * (g) The documents and fees submitted under paragraphs (b) and (c) of this section must be clearly identified as a submission to enter the national stage under 35 U.S.C. 371. If the documents PO 00000 Frm 00033 Fmt 4702 Sfmt 4702 Changes to Practice for the Examination of Claims in Patent Applications AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Notice of proposed rule making. SUMMARY: The United States Patent and Trademark Office (Office) is proposing to revise the rules of practice relating the examination of claims in patent applications. The Office is proposing to focus its initial examination on the claims designated by the applicant as representative claims. The representative claims will be all of the independent claims and only the dependent claims that are expressly designated by the applicant for initial examination. The Office is also proposing that if an application contains more than ten independent claims (a rare occurrence), or if the applicant wishes to have initial examination of more than ten representative claims, then the applicant must provide an examination support document that covers all of the independent claims and the dependent claims designated for initial examination. The changes proposed in this notice will allow the Office to do a better, more thorough and reliable examination since the number of claims receiving initial examination will be at a level which can be more effectively and efficiently evaluated by an examiner. Comment Deadline Date: To be ensured of consideration, written comments must be received on or before May 3, 2006. No public hearing will be held. E:\FR\FM\03JAP1.SGM 03JAP1

Agencies

[Federal Register Volume 71, Number 1 (Tuesday, January 3, 2006)]
[Proposed Rules]
[Pages 48-61]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 05-24528]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 2005-P-066]
RIN 0651-AB93


Changes To Practice for Continuing Applications, Requests for 
Continued Examination Practice, and Applications Containing Patentably 
Indistinct Claims

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

-----------------------------------------------------------------------

SUMMARY: Continued examination practice, including the use of both 
continuing applications and requests for continued examination, permits 
applicants to obtain further examination and advance an application to 
final agency action. This practice allow applicants to craft their 
claims in light of the examiner's evidence and arguments, which in turn 
may lead to well-designed claims that give the public notice of 
precisely what the applicant regards as his or her invention. However, 
each continued examination filing, whether a continuing application or 
request for continued examination, requires the United States Patent 
and Trademark Office (Office) to delay taking up a new application and 
thus contributes to the backlog of unexamined applications before the 
Office. In addition, current practice allows an applicant to generate 
an unlimited string of continued examination filings from an initial 
application. In such a string of continued examination filings, the 
exchange between examiners and applicants becomes less beneficial and 
suffers from diminishing returns as each of the second and subsequent 
continuing applications or requests for continued examination in a 
series is filed. Moreover, the possible issuance of multiple patents 
arising from such a process tends to defeat the public notice function 
of patent claims in the initial application.
    The Office is making every effort to become more efficient, to 
ensure that the patent application process promotes innovation, and to 
improve the quality of issued patents. With respect to continued 
examination practice, the Office is proposing to revise the patent 
rules of practice to better focus the application process. The revised 
rules would require that second or subsequent continued examination 
filings, whether a continuation application, a continuation-in-part 
application, or a request for continued examination, be supported by a 
showing as to why the amendment, argument, or evidence presented could 
not have been previously submitted. It is expected that these rules 
will make the exchange between examiners and applicants more efficient 
and effective. The revised rules should also improve the quality of 
issued patents, making them easier to evaluate, enforce, and litigate. 
Moreover, under the revised rules patents should issue sooner, thus 
giving the public a clearer understanding of what is patented.
    The revised rules would also ease the burden of examining multiple 
applications that have the same effective filing date, overlapping 
disclosure, a common inventor, and common assignee by requiring that 
all patentably indistinct claims in such applications be submitted in a 
single application.

[[Page 49]]

    The changes proposed in this notice will also allow the Office to 
focus its patent examining resources on new applications instead of 
multiple continued examination filings that contain amendments or 
evidence that could have been submitted earlier, and thus allow the 
Office to reduce the backlog of unexamined applications. This will mean 
faster and more effective examination for the vast majority of 
applicants without any additional work on the applicant's part. 
Additional resources will be devoted to multiple continued examination 
filings only where necessary.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before May 3, 2006. No public hearing 
will be held.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to AB93Comments@uspto.gov. Comments may also be 
submitted by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or 
by facsimile to (571) 273-7735, marked to the attention of Robert W. 
Bahr. Although comments may be submitted by mail or facsimile, the 
Office prefers to receive comments via the Internet. If comments are 
submitted by mail, the Office prefers that the comments be submitted on 
a DOS formatted 3\1/2\ inch disk accompanied by a paper copy.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located in Madison East, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
Office Internet Web site (address: http://www.uspto.gov). Because 
comments will be made available for public inspection, information that 
is not desired to be made public, such as an address or phone number, 
should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent 
Attorney, Office of the Deputy Commissioner for Patent Examination 
Policy, by telephone at (571) 272-8800, by mail addressed to: Mail Stop 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA, 22313-1450, or by facsimile to (571) 273-7735, marked to the 
attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION: The current volume of continued examination 
filings--including both continuing applications and requests for 
continued examination--and duplicative applications that contain 
``conflicting'' or patentably indistinct claims, are having a crippling 
effect on the Office's ability to examine ``new'' (i.e., non-
continuing) applications. The cumulative effect of these continued 
examination filings is too often to divert patent examining resources 
from the examination of new applications to new technology and 
innovations, to the examination of applications that have already been 
examined, have issued as patents, or have been abandoned. In addition, 
when the continued examination process fails to reach a final 
resolution, and when multiple applications containing claims to 
patentably indistinct inventions are filed, the public is left 
uncertain as to what the set of patents resulting from the initial 
application will cover. Thus, these practices impose a burden on 
innovation both by retarding the Office's ability to examine new 
applications and by undermining the function of claims to notify the 
public as to what technology is or is not available for use.
    Commentators have noted that the current unrestricted continuing 
application and request for continued examination practices preclude 
the Office from ever finally rejecting an application or even from ever 
finally allowing an application. See Mark A. Lemley and Kimberly A. 
Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev. 63, 64 
(2004). The burdens imposed by the repetitive filing of applications 
(as continuing applications) on the Office (as well as on the public) 
is not a recent predicament. See To Promote the Progress of Useful 
Arts, Report of the President's Commission on the Patent System, at 17-
18 (1966) (recommending changes to prevent the repetitive filing of 
dependent (i.e., continuing) applications). Unrestricted continued 
examination filings and multiple applications containing patentably 
indistinct claims, however, are now having such an impact on the 
Office's ability to examine new applications that it is now appropriate 
for the Office to clarify the applicant's duty to advance the 
application to final action by placing some restrictions on the filing 
of multiple continuing applications, requests for continued 
examination, and other multiple applications to the same invention. See 
35 U.S.C. 2(b) (authorizes the Office to establish regulations, not 
inconsistent with law, which shall govern the conduct of proceedings in 
the Office, and shall facilitate and expedite the processing of patent 
applications). This would permit the Office to apply the patent 
examining resources currently absorbed by these applications to the 
examination of new applications and thereby reduce the backlog of 
unexamined applications.
    The Office also notes that not every applicant comes to the Office 
prepared to particularly point out and distinctly claim what the 
applicant regards as his invention, for example, where the applicant's 
attorney or agent has not adequately reviewed or revised the 
application documents (often a literal translation) received from the 
applicant. In these situations examination of what applicants actually 
regard as their invention may not begin until after one or more 
continued examination filings. Applicants should not rely on an 
unlimited number of continued examination filings to correct 
deficiencies in the claims and disclosure that applicant or applicant's 
representative have not adequately reviewed. In addition, a small 
minority of applicants have misused continued examination practice with 
multiple continued examination filings in order to simply delay the 
conclusion of examination. This skirts applicant's duty to make a bona 
fide attempt to advance the application to final agency action and 
impairs the ability of the Office to examine new and existing 
applications. It also prejudices the public by permitting applicants to 
keep applications in pending status while awaiting developments in 
similar or parallel technology and then later amending the pending 
application to cover the developments. The courts have permitted the 
addition of such claims, when supported under 35 U.S.C. 112, ] 1, to 
encompass products or processes discovered in the marketplace. See PIN/
NIP, Inc., v. Platt Chemical Co., 304 F.3d 1235, 1247, 64 USPQ2d 1344, 
1352 (Fed. Cir. 2002). However, the practice of maintaining continuing 
applications for the purpose of adding claims after such discoveries is 
not calculated to advance prosecution before the Office.
    The Office, in light of its backlog and anticipated continued 
increase in applications is making every effort to become more 
efficient. Achieving greater efficiency requires the cooperation of 
those who provide the input into the examination process, the 
applicants and their representatives. With respect to continued 
examination practice, the Office is proposing to

[[Page 50]]

revise the rules of practice to assure that multiple continued 
examination filings from a single application do not absorb agency 
resources unless necessary for effective examination. The revised rules 
would require that second or subsequent continuation or continuation-
in-part applications and second or subsequent requests for continued 
examination of an application include a showing as to why the 
amendment, argument, or evidence presented could not have been 
previously submitted. It is expected that these rules will make the 
exchange between examiners and applicants more efficient, get claims to 
issue faster, and improve the quality of issued patents. The revised 
rules would also ease the burden of examining multiple applications 
that have the same effective filing date, overlapping disclosure, a 
common inventor, and common assignee by requiring that all patentably 
indistinct claims in such applications be submitted in a single 
application absent good and sufficient reason.
    The Office's Patent Application Locating and Monitoring (PALM) 
records show that, in fiscal year 2005, the Office received 
approximately 317,000 nonprovisional applications, and that about 
62,870 of these nonprovisional applications were continuing 
applications. In addition, the Office's PALM records show that the 
Office received about 52,750 requests for continued examination in 
fiscal year 2005. Thus, about thirty percent (63,000 + 52,000)/(317,000 
+ 52,000) of the Office's patent examining resources must be applied to 
examining continued examination filings that require reworking earlier 
applications instead of examining new applications.
    In comparison, the Office issued over 289,000 first Office actions 
on the merits in fiscal year 2005. Had there been no continued 
examination filings, the Office could have issued an action for every 
new application received in 2005 and reduced the backlog by issuing 
actions in 35,000 older cases. Instead, the Office's backlog grew 
because of the large number of continued examination filings.
    Thus, current continued examination practice and the filing of 
multiple applications containing patentably indistinct claims are 
impairing the Office's ability to examine new applications without real 
certainty that these practices effectively advance prosecution, improve 
patent quality, or serve the typical applicant or the public. These 
proposed changes to the rules in title 37 of the Code of Federal 
Regulations (CFR) are intended to ensure that continued examination 
filings are used efficiently to move applications forward. The Office 
expects that the new rules will lead to more focused and efficient 
examination, improve the quality of issued patents, result in patents 
that issue faster, and give the public earlier notice of just what 
patentees claim. The changes to the rules also address the growing 
practice of filing (by a common applicant or assignee) of multiple 
applications containing patentably indistinct claims.
    Of the roughly 63,000 continuing applications filed in fiscal year 
2005, about 44,500 were designated as continuation/continuation-in-part 
(CIP) applications, and about 18,500 were designated as divisional 
applications. About 11,800 of the continuation/CIP applications were 
second or subsequent continuation/CIP applications. Of the over 52,000 
requests for continued examination filed in fiscal year 2005, just 
under 10,000 were second or subsequent requests for continued 
examination. Thus, the Office's proposed requirements for seeking 
second and subsequent continuations will not have an effect on the vast 
majority of patent applications.
    35 U.S.C. 111(a) and 120, respectively, permit an applicant to file 
a nonprovisional application and to claim the benefit of a prior-filed 
nonprovisional application. Similarly, 35 U.S.C. 363 and 365(c), 
respectively, permit an applicant to file an international application 
under Patent Cooperation Treaty (PCT) Article 11 and 35 U.S.C. 363 and, 
if the international application designates the United States of 
America, claim the benefit of a prior-filed international application 
designating the United States of America or a prior-filed 
nonprovisional application. Similarly again, 35 U.S.C. 111(a) and 
365(c) permit an applicant to file a nonprovisional application (filed 
under 35 U.S.C. 111(a)) and claim the benefit of a prior-filed 
international application designating the United States of America 
(under 35 U.S.C. 365(c)).
    The practice of filing ``continuation applications'' arose early in 
Office practice mainly as a procedural device to effectively permit the 
applicant to amend an application after rejection and receive an 
examination of the ``amended'' (or new) application. See In re Bogese, 
22 USPQ2d 1821, 1824 (Comm'r Pats. 1991) (Bogese I). The concept of a 
continuation application per se was first recognized in Godfrey v. 
Eames, 68 U.S. (1 Wall.) 317, 325-26 (1864). See Bogese I, 22 USPQ2d at 
1824. 35 U.S.C. 120 is a codification of the continuation application 
practice recognized in Godfrey v. Eames. See id (citing In re Hogan, 
559 F.2d 595, 603, 194 USPQ 527, 535 (CCPA 1977)).
    Applicants should understand, however, that there is not an 
unfettered right to file multiple continuing applications without 
making a bona fide attempt to claim the applicant's invention. See In 
re Bogese, 303 F.3d 1362, 64 USPQ2d 1448 (Fed. Cir. 2002) (Bogese II). 
While Bogese II was an extreme case, one of prosecution laches, it 
makes clear that applicants face a general requirement of good faith in 
prosecution and that the Director has the inherent authority, rooted in 
35 U.S.C. 2, to ensure that applicants comply with that duty. See 
Bogese II, 303 F.3d at 1368 n.5, 64 USPQ2d at 1452 n.5.
    The proposed rules are not an attempt to codify Bogese II or to 
simply combat such extreme cases of prosecutions laches. Nor do these 
rules set a per se limit on the number of continuing applications. 
Compare In re Henriksen, 399 F.2d 253, 158 USPQ 224 (CCPA 1968). 
Rather, they require that applicants who file multiple continuing 
applications from the same initial application show that the third and 
following applications in the chain are necessary to advance 
prosecution. In particular, the proposed rules require that any second 
or subsequent continuing application show to the satisfaction of the 
Director that the amendment, argument, or evidence could not have been 
submitted during the prosecution of the initial application or the 
first continuing application.
    The Office is aware of case law which suggests that the Office has 
no authority to place an absolute limit on the number of copending 
continuing applications originating from an original application. See 
In re Hogan, 559 F.2d at 603-05, 194 USPQ at 565-66; and Henriksen, 399 
F.2d at 262, 158 USPQ at 231. The Office does not attempt that here. No 
limit is placed on the number of continuing applications. Rather 
applicants are required to show that later-filed applications in a 
multiple-continuing chain are necessary to claim the invention--and do 
not contain unnecessarily delayed evidence, arguments, or amendments 
that could have been presented earlier. In addition, in those earlier 
cases the Office had not promulgated any rules, let alone given the 
public adequate notice of, or an opportunity to respond to, the ad hoc 
limits imposed. See Henriksen, at 399 F.2d at 261-62, 158 USPQ at 231 
(characterizing the action of the Office as akin to a retroactive rule 
change that had no support in the rules of practice or Manual of Patent 
Examining

[[Page 51]]

Procedure). Furthermore, the Court in Bogese II rejected the view that 
its previous case law (e.g., Henriksen) stood for the broad proposition 
that 35 U.S.C. 120 gave applicants carte blanche to prosecute 
continuing applications in any desired manner. See Bogese II, 303 F.3d 
at 1368 n.5, 64 USPQ2d at 1452 n.5.
    35 U.S.C. 132(b) provides for the request for continued examination 
practice set forth in Sec.  1.114. Unlike continuation application 
practice, the request for continued examination practice was recently 
added to title 35, U.S.C., in section 4403 of the American Inventors 
Protection Act of 1999. See Pub. L. 106-113, 113 Stat. 1501, 1501A-560 
(1999). 35 U.S.C. 132(b) provides (inter alia) that the Office ``shall 
prescribe regulations to provide for the continued examination of 
applications for patent at the request of the applicant.'' Nothing in 
35 U.S.C. 132(b) or its legislative history suggests that the Office 
must or even should permit an applicant to file an unlimited number of 
requests for continued examination in an application. Therefore, the 
Office is proposing rules that allow applicants to file their first 
request for continued examination without any justification, but 
require applicants to justify the need for any further requests for 
continued examination in light of the past prosecution.
    The Office appreciates that appropriate continued examination 
practice permits an applicant to obtain further examination and advance 
an application to final action. The current unrestricted continued 
examination practice, however, does not provide adequate incentives to 
assure that the exchanges between an applicant and the examiner during 
the examination process are efficient. The marginal value vis-a-vis the 
patent examination process as a whole of exchanges between an applicant 
and the examiner during the examination process tends to decrease after 
the first continued examination filing. The Office resources absorbed 
by the examination of a second or subsequent continued examination 
filing are diverted away from the examination of new applications, thus 
increasing the backlog of unexamined applications. Therefore, the 
Office is proposing to require that an applicant filing a second or 
subsequent continuing application or second or subsequent request for 
continued examination include a showing as to why the amendment, 
argument, or evidence could not have been previously submitted.
    The Office also appreciates that applicants sometimes use continued 
examination practice to obtain further examination rather than file an 
appeal to avoid the delays that historically have been associated with 
the appeal process. The Office, however, has taken major steps to 
eliminate such delays. The Board of Patent Appeals and Interferences 
(BPAI) has radically reduced the inventory of pending appeals from 
9,201 at the close of fiscal year 1997 to 882 at the close of fiscal 
year 2005. The Office has also adopted an appeal conference program to 
review the rejections in applications in which an appeal brief has been 
filed to ensure that an appeal will not be forwarded to the BPAI for 
decision absent the concurrence of experienced examiners. See Manual of 
Patent Examining Procedure section 1208 (8th ed. 2001) (Rev. 3, August 
2005) (MPEP). The Office is also in the process of adopting a pre-brief 
appeal conference program to permit an applicant to request that a 
panel of examiners review the rejections in his or her application 
prior to the filing of an appeal brief. See New Pre-Appeal Brief 
Conference Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005). 
These programs provide for a relatively expeditious review of 
rejections in an application under appeal. Thus, for an applicant faced 
with a rejection that he or she feels is improper from a seemingly 
stubborn examiner, the appeal process offers a more effective 
resolution than seeking further examination before the examiner.
    Efficient examination also requires that applicants share some of 
the burden of examination when they file multiple applications 
containing ``conflicting'' or patentably indistinct claims. The rules 
of practice currently provide that ``[w]here two or more applications 
filed by the same applicant contain conflicting claims, elimination of 
such claims from all but one application may be required in the absence 
of good and sufficient reason for their retention during pendency in 
more than one application.'' See current Sec.  1.78(b). The Office is 
proposing to revise this rule so that, when an applicant (or assignee) 
files multiple applications with the same effective filing date, a 
common inventor and overlapping disclosures, the Office will presume 
that the applications contain patentably indistinct claims. In such a 
situation, the applicant must either rebut this presumption by 
explaining to the satisfaction of the Director how the applications 
contain only patentably distinct claims, or submit the appropriate 
terminal disclaimers and explain to the satisfaction of the Director 
why two or more pending applications containing ``conflicting'' or 
patentably indistinct claims should be maintained. The effect of this 
proposed rule will be to share the burden of examining multiple 
applications, with overlapping disclosure, a common inventor, and the 
same filing date, for double patenting.
    Double patenting exists because a party (or parties to a joint 
research agreement under the Cooperative Research and Technology 
Enhancement Act of 2004 (CREATE Act), Public Law 108-453, 118 Stat. 
3596 (2004)) has filed multiple patent applications containing 
patentably indistinct claims. The applicant (or the owner of the 
application) is in a far better position than the Office to determine 
whether there are one or more other applications or patents containing 
patentably indistinct claims. For this reason, where an applicant 
chooses to file multiple applications that are substantially the same, 
it will be the applicant's responsibility to assist the Office in 
resolving potential double patenting situations rather than taking no 
action until faced with a double patenting rejection.
    Finally, the Office has a first action final rejection practice 
under which the first Office action in a continuing application may be 
made final under certain circumstances. See MPEP Sec.  706.07(b). If 
the changes proposed in this notice are adopted, the Office will 
discontinue this practice as no longer necessary in continuing 
applications under 35 U.S.C. 120, 121, or 365(c) and in requests for 
continued examination under 35 U.S.C. 132(b). The Office, however, does 
not plan any change to the final action practice for the Office action 
following a submission under Sec.  1.129(a). See Changes to the 
Transitional Procedures for Limited Examination After Final Rejection 
in Certain Applications Filed Before June 8, 1995, 70 FR 24005 (May 6, 
2005), 1295 Off. Gaz. Pat. Office 22 (Jun. 7, 2005).

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.78: Section 1.78 is proposed to be reorganized as 
follows: (1) Sec.  1.78(a) contains definitions of continuing 
application, continuation application, divisional application, and 
continuation-in-part application; (2) Sec.  1.78(b) contains provisions 
relating to claims under 35 U.S.C. 119(e) for the benefit of a prior-
filed provisional application; (3) Sec.  1.78(c) contains provisions 
relating to delayed claims under 35 U.S.C. 119(e) for the benefit of

[[Page 52]]

a prior-filed provisional application; (4) Sec.  1.78(d) contains 
provisions relating to claims under 35 U.S.C. 120, 121, or 365(c) for 
the benefit of a prior-filed nonprovisional or international 
application; (5) Sec.  1.78(e) contains provisions relating to delayed 
claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-
filed nonprovisional or international application; (6) Sec.  1.78(f) 
contains provisions relating to applications naming at least one 
inventor in common and containing patentably indistinct claims; (7) 
Sec.  1.78(g) contains provisions relating to applications or patents 
under reexamination naming different inventors and containing 
patentably indistinct claims; and (8) Sec.  1.78(h) contains provisions 
pertaining to the treatment of parties to a joint research agreement 
under the CREATE Act.
    Proposed 1.78(a)(1) defines a ``continuing application'' as a 
nonprovisional application or international application designating the 
United States of America that claims the benefit under 35 U.S.C. 120, 
121, or 365(c) of a prior-filed nonprovisional application or 
international application designating the United States of America. 
Proposed 1.78(a)(1) further provides that an application that does not 
claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed 
application, is not a continuing application even if the application 
claims the benefit under 35 U.S.C. 119(e) of a provisional application, 
claims priority under 35 U.S.C. 119(a)-(d) or 365(b) to a foreign 
application, or claims priority under 35 U.S.C. 365(a) or (b) to an 
international application designating at least one country other than 
the United States of America. A continuing application must be one of a 
continuation application, a divisional application, or a continuation-
in-part application. See MPEP Sec.  201.11 (``To specify the 
relationship between the applications, applicant must specify whether 
the application is a continuation, divisional, or continuation-in-part 
of the prior application. Note that the terms are exclusive. An 
application cannot be, for example, both a continuation and a 
divisional or a continuation and a continuation-in-part of the same 
application.'').
    Proposed 1.78(a)(2) defines a ``continuation application'' as a 
continuing application as defined in Sec.  1.78(a)(1) that discloses 
and claims only an invention or inventions that were disclosed in the 
prior-filed application. See MPEP Sec.  201.07 (defines a continuation 
application as an application that discloses (or discloses and claims) 
only subject matter that was disclosed in the prior-filed 
nonprovisional application).
    Proposed Sec.  1.78(a)(3) defines a ``divisional application'' as a 
continuing application as defined in Sec.  1.78(a)(1) that discloses 
and claims only an invention or inventions that were disclosed and 
claimed in the prior-filed application, but were subject to a 
requirement of unity of invention under PCT Rule 13 or a requirement 
for restriction under 35 U.S.C. 121 and not elected for examination in 
the prior-filed application. MPEP Sec.  201.06 defines a divisional 
application as an application for an independent and distinct 
invention, which discloses and claims only subject matter that was 
disclosed in the prior-filed nonprovisional application. Proposed Sec.  
1.78(a)(3), however, limits a the definition of ``divisional 
application'' to an application that claims only an invention or 
inventions that were subject to a requirement of unity of invention 
under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 
and not elected for examination in the prior-filed application. See 35 
U.S.C. 121 (``[i]f two or more independent and distinct inventions are 
claimed in one application, the Director may require the application to 
be restricted to one of the inventions [and i]f the other invention is 
made the subject of a divisional application which complies with the 
requirements of [35 U.S.C.] 120 * * *'').
    Proposed Sec.  1.78(a)(4) defines a ``continuation-in-part 
application'' as a continuing application as defined in Sec.  
1.78(a)(1) that discloses subject matter that was not disclosed in the 
prior-filed application. See MPEP Sec.  201.08 (a continuation-in-part 
repeats some substantial portion or all of the earlier nonprovisional 
application and adds matter not disclosed in the prior-filed 
nonprovisional application).
    Proposed Sec.  1.78(b) contains provisions relating to claims under 
35 U.S.C. 119(e) for the benefit of a prior-filed provisional 
application. 35 U.S.C. 119(e)(1) requires that a provisional 
application disclose the invention claimed in at least one claim of the 
later-filed application in the manner provided by 35 U.S.C. 112, ] 1, 
for the later-filed application to actually receive the benefit of the 
filing date of the provisional application. See New Railhead Mfg., 
L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294, 63 USPQ2d 1843, 1846 
(Fed. Cir. 2002) (for a nonprovisional application to actually receive 
the benefit of the filing date of the provisional application, ``the 
specification of the provisional [application] must `contain a written 
description of the invention and the manner and process of making and 
using it, in such full, clear, concise, and exact terms,' 35 U.S.C. 112 
] 1, to enable an ordinarily skilled artisan to practice the invention 
claimed in the nonprovisional application''). Proposed Sec.  1.78(b), 
however, does not also state (as does current Sec.  1.78(a)(4)) that 
the provisional application discloses the invention claimed in at least 
one claim of the later-filed application in the manner provided by 35 
U.S.C. 112, ] 1, because: (1) It is not necessary for the rules of 
practice to restate provisions of statute; and (2) the Office does not 
require or check for such a disclosure as a condition of permitting an 
application to claim the benefit of the filing date of a provisional 
application.
    Proposed Sec.  1.78(b) also provides that the nonprovisional 
application or international application designating the United States 
of America must be filed not later than twelve months after the date on 
which the provisional application was filed (35 U.S.C. 119(e)), and 
that this twelve-month period is subject to 35 U.S.C. 21(b) and Sec.  
1.7(a) (proposed Sec.  1.78(b)(1)). 35 U.S.C. 21(b) and Sec.  1.7(a) 
provide that when the day, or the last day, for taking any action 
(e.g., filing a nonprovisional application within twelve months of the 
date on which the provisional application was filed) or paying any fee 
in the Office falls on Saturday, Sunday, or a Federal holiday within 
the District of Columbia, the action may be taken, or fee paid, on the 
next succeeding secular or business day. Proposed Sec.  1.78(b) 
otherwise contains the provisions of current Sec.  1.78(a)(4) and 
(a)(5) (with the changes in Provisions for Claiming the Benefit of a 
Provisional Application with a Non-English Specification and Other 
Miscellaneous Matters, 70 FR 56119 (Sept. 26, 2005), 1299 Off. Gaz. 
Pat. Office 142 (Oct. 25, 2005) (final rule)).
    Proposed Sec.  1.78(c) contains provisions relating to delayed 
claims under 35 U.S.C. 119(e) for the benefit of a prior-filed 
provisional application. Proposed Sec.  1.78(c) contains the provisions 
of current Sec.  1.78(a)(6).
    Proposed Sec.  1.78(d) contains provisions relating to claims under 
35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed 
nonprovisional or international application.
    Proposed Sec.  1.78(d)(1) provides certain conditions under which 
an application may claim the benefit of a prior-filed nonprovisional 
application or international application designating the United States 
of America under 35 U.S.C. 120, 121, or 365(c) and Sec.  1.78.

[[Page 53]]

The Office will refuse to enter, or will delete if already present, any 
specific reference to a prior-filed application that is not permitted 
by Sec.  1.78(d)(1) (i.e., any claim for the benefit of a prior-filed 
nonprovisional application or international application designating the 
United States of America that does not meet one of the conditions 
specified in Sec. Sec.  1.78(d)(1)(i) through 1.78(d)(1)(iii) and in 
which a petition under Sec.  1.78(d)(1)(iv) either has not been filed 
or is not granted). If the claim for the benefit of a prior-filed 
nonprovisional application or international application designating the 
United States of America is not permitted by Sec.  1.78(d)(1), the 
Office will refuse any benefit under 35 U.S.C. 120, 121, or 365(c) and 
Sec.  1.78 of the prior-filed nonprovisional application or 
international application designating the United States of America 
during proceedings before the Office.
    Proposed Sec.  1.78(d)(1) provides that a nonprovisional 
application that is a continuation application as defined in Sec.  
1.78(a)(2) or a continuation-in-part application as defined in Sec.  
1.78(a)(4) may claim the benefit under 35 U.S.C. 120, 121, or 365(c)) 
of only a single prior-filed application, if the benefit of such prior-
filed application is not claimed in any other nonprovisional 
application other than a divisional application in compliance with 
Sec.  1.78(d)(1)(ii), and no request for continued examination under 
Sec.  1.114 has been filed in the prior-filed application (proposed 
Sec.  1.78(d)(1)(i)). This provision will permit an applicant to 
continue prosecution of an application (other than a continuing 
application) via a continuation or continuation-in-part application as 
an alternative to a request for continued examination under Sec.  1.114 
(in the event that the prior-filed application is a design application, 
the applicant needs to add or claim subject matter not disclosed in the 
prior-filed application, or the applicant has other reasons for 
preferring a continuation or continuation-in-part application over a 
request for continued examination under Sec.  1.114).
    Proposed Sec.  1.78(d)(1)(i) will also permit an applicant to 
continue prosecution of claims in a continuation-in-part application 
(via a ``further'' continuation or continuation-in-part application) 
that are directed solely to subject matter added in a ``first'' 
continuation-in-part application (provided that the ``further'' 
continuation or continuation-in-part application does not also claim 
the benefit of the prior-filed application relative to the ``first'' 
continuation-in-part application). At least one claim of a later-filed 
application must be disclosed in the prior-filed application in the 
manner provided by 35 U.S.C. 112, ] 1, for the later-filed application 
to actually receive the benefit of the filing date of the prior-filed 
application (35 U.S.C. 120), and the term of any resulting patent will 
be measured under 35 U.S.C. 154(a)(2) from the filing date of the 
prior-filed application, even if the later-filed application never 
receives any benefit from the prior-filed application. See Abbott Lab. 
v. Novopharm Ltd., 104 F.3d 1305, 1309, 41 USPQ2d 1535, 1537 (Fed. Cir. 
1997). Thus, the Office is not proposing to require that such 
``further'' continuation or continuation-in-part application contain a 
showing that all of the claims are directed solely to subject matter 
added in the ``first'' continuation-in-part application. Rather, 
proposed Sec.  1.78(d)(1)(i) permits the ``further'' continuation or 
continuation-in-part application to claim the benefit of the first 
continuation-in-part application, but does not permit the ``further'' 
continuation or continuation-in-part application to also claim the 
benefit of the prior-filed initial application (the prior-filed 
application relative to the first continuation-in-part application). 
For example, consider an applicant who files: (1) An initial 
application, ``A'': (2) a continuation-in-part application, ``B,'' 
claiming the benefit of application A; and (3) a ``further'' 
continuation or continuation-in-part application ``C,'' claiming the 
benefit of application B. Under proposed 1.78(d)(i), application C 
could not claim any benefit from application A (except as permitted 
under proposed Sec.  1.78(d)(1)(iv)).
    Proposed Sec.  1.78(d)(1)(i) will also permit an applicant whose 
application (other than a continuing application) contains rejected 
claims and allowed claims to obtain a patent on the allowed claims and 
continue prosecution of the rejected or other claims in a continuation 
or continuation-in-part application.
    Proposed Sec.  1.78(d)(1) also provides that a nonprovisional 
application that is a divisional application as defined in Sec.  
1.78(a)(3) may claim the benefit under 35 U.S.C. 120, 121, or 365(c)) 
of only a single prior-filed application, if the prior-filed 
application was subject to a requirement of unity of invention under 
PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121, and 
the divisional application contains only claims directed to an 
invention or inventions that were identified in such requirement of 
unity of invention or for restriction but were not elected for 
examination in the prior-filed application (proposed Sec.  
1.78(d)(1)(ii)). This will permit an applicant to obtain examination of 
claims that were withdrawn from consideration in the prior-filed 
application due to a requirement of unity of invention under PCT Rule 
13 or a requirement for restriction under 35 U.S.C. 121. Proposed Sec.  
1.78(d)(1)(ii) permits ``involuntary'' divisional applications (a 
continuing application filed as a result of a requirement of unity of 
invention under PCT Rule 13 or requirement for restriction under 35 
U.S.C. 121 in the prior-filed application), but does not permit 
``voluntary divisional'' applications (a continuing application not 
filed as a result of a requirement of unity of invention under PCT Rule 
13 or requirement for restriction under 35 U.S.C. 121 in the prior-
filed application).
    Proposed Sec.  1.78(d)(1) also provides that a nonprovisional 
application that is either a continuation application as defined in 
Sec.  1.78(a)(2) or a continuation-in-part application as defined in 
Sec.  1.78(a)(4) may claim the benefit under 35 U.S.C. 120, 121, or 
365(c)) of only either a single divisional application in compliance 
with Sec.  1.78(d)(1)(ii) and the prior-filed application whose benefit 
is claimed in such single divisional application, if no request for 
continued examination under Sec.  1.114 has been filed in the prior-
filed divisional application (proposed Sec.  1.78(d)(1)(iii)). This 
provision will permit an applicant to continue prosecution of a 
divisional application via a single continuation application or 
continuation-in-part application as an alternative to a request for 
continued examination under Sec.  1.114. Proposed Sec.  
1.78(d)(1)(iii), however, would not allow an applicant to file more 
than a single continuation application or continuation-in-part 
application of a divisional application as of right. Proposed Sec.  
1.78(d)(1)(iii) will also permit an applicant whose divisional 
application contains rejected claims and allowed claims to obtain a 
patent on the allowed claims, and continue prosecution of the rejected 
or other claims in a single continuation or continuation-in-part 
application.
    Proposed Sec.  1.78(d)(1) also provides that a continuing 
nonprovisional application that is filed to obtain consideration of an 
amendment, argument, or evidence that could not have been submitted 
during the prosecution of the prior-filed application may claim the 
benefit under 35 U.S.C. 120, 121, or 365(c) of such prior-filed 
application (proposed Sec.  1.78(d)(1)(iv)). Proposed Sec.  
1.78(d)(1)(iv) specifically provides that such a continuing 
nonprovisional

[[Page 54]]

application must have filed therein a petition accompanied by the fee 
set forth in Sec.  1.17(f) and a showing to the satisfaction of the 
Director that the amendment, argument, or evidence could not have been 
submitted during the prosecution of the prior-filed application. This 
will permit an applicant to continue prosecution of an application via 
a continuing application to obtain consideration of an amendment, 
argument, or evidence that could not have been submitted during the 
prosecution of the prior-filed application. Applicants are permitted to 
submit any desired amendment, argument, or evidence after the first 
Office action in the prior-filed application, and are further permitted 
to file either a single continuation or continuation-in-part 
application (proposed Sec. Sec.  1.78(d)(1)(i) and 1.78(d)(1)(iii)) or 
a single request for continued examination under Sec.  1.114 to submit 
any desired amendment, argument, or evidence before or after the first 
Office action in the continuation or continuation-in-part application 
or request for continued examination under Sec.  1.114. Since multiple 
opportunities are given to submit any desired amendment, argument, or 
evidence, that an amendment, argument, or evidence is refused entry 
because prosecution in the prior-filed application is again closed 
(after the filing of a continuation or continuation-in-part application 
(proposed Sec. Sec.  1.78(d)(1)(i) and 1.78(d)(1)(iii)) or a request 
for continued examination under Sec.  1.114) will not by itself be a 
sufficient reason to warrant the grant of a petition under Sec.  
1.78(d)(1)(iv). Rather, an applicant will be expected to demonstrate 
why the amendment, argument, or evidence could not have been submitted 
prior to the close of prosecution in the prior-filed application. 
Proposed Sec.  1.78(d)(1)(iv) also sets forth the time period within 
which such a petition must be provided: (1) If the later-filed 
continuing application is an application filed under 35 U.S.C. 111(a), 
within four months from the actual filing date of the later-filed 
application; and (2) if the later-filed continuing application is a 
nonprovisional application which entered the national stage from an 
international application after compliance with 35 U.S.C. 371, within 
four months from the date on which the national stage commenced under 
35 U.S.C. 371(b) or (f) in the later-filed international application.
    Proposed Sec.  1.78(d) also provides that the Office will refuse to 
enter, or will delete if present, any specific reference to a prior-
filed application that is not permitted by proposed Sec.  1.78(d) 
(proposed Sec.  1.78(d)(3)). If the claim for the benefit of a prior-
filed nonprovisional application or international application 
designating the United States of America is not permitted by Sec.  
1.78(d)(1), the Office will refuse any benefit under 35 U.S.C. 120, 
121, or 365(c) and Sec.  1.78 of the prior-filed nonprovisional 
application or international application designating the United States 
of America during proceedings before the Office. Proposed Sec.  1.78(d) 
also provides that the entry of or failure to delete a specific 
reference to a prior-filed application that is not permitted by Sec.  
1.78(d)(1) does not constitute a waiver of the provisions of Sec.  
1.78(d)(1). The grant of a petition under Sec.  1.78(d)(1)(iv) or 
waiver of a requirement of Sec.  1.78(d)(1) would be only by an 
explicit decision by the Office, and would not occur by implication due 
to the entry of or failure to delete a specific reference to a prior-
filed application that is not permitted by Sec.  1.78(d)(1).
    Proposed Sec.  1.78(d)(3) also includes the parenthetical ``(i.e., 
whether the later-filed application is a continuation, divisional, or 
continuation-in-part of the prior-filed nonprovisional application or 
international application)'' to clarify in the rules of practice what 
is meant by the requirement that an applicant identify (currently 
stated as indicate) the relationship of the applications. See MPEP 
Sec.  201.11. Proposed Sec.  1.78(d)(3) also provides that if an 
application is identified as a continuation-in-part application, the 
applicant must identify which claim or claims in the continuation-in-
part application are disclosed in the manner provided by 35 U.S.C. 112, 
] 1, in the prior-filed application. Any claim in the continuation-in-
part application that is not identified as being disclosed in the 
manner provided by 35 U.S.C. 112, ] 1, in the prior-filed application 
will be treated as entitled only to the filing date of the 
continuation-in-part application.
    Proposed Sec.  1.78(d) also does not contain the provision that the 
prior-filed application disclose the invention claimed in at least one 
claim of the later-filed application in the manner provided by 35 
U.S.C. 112, ] 1. It is necessary for the prior-filed application to 
disclose the invention claimed in at least one claim of the later-filed 
application in the manner provided by 35 U.S.C. 112, ] 1, for the 
later-filed application to actually receive the benefit of the filing 
date of the prior-filed application (35 U.S.C. 120), but the Office 
does not require such a disclosure as a condition of permitting an 
application to claim the benefit of the filing date of a prior-filed 
application. See MPEP Sec.  201.08 (``Unless the filing date of the 
earlier nonprovisional application is actually needed * * *, there is 
no need for the Office to make a determination as to whether the 
requirement of 35 U.S.C. 120, that the earlier nonprovisional 
application discloses the invention of the second application in the 
manner provided by 35 U.S.C. 112, ] 1, is met and whether a substantial 
portion of all of the earlier nonprovisional application is repeated in 
the second application in a continuation-in-part situation. 
Accordingly, an alleged continuation-in-part application should be 
permitted to claim the benefit of the filing date of an earlier 
nonprovisional application if the alleged continuation-in-part 
application complies with the * * * formal requirements of 35 U.S.C. 
120.'').
    Proposed Sec.  1.78(d) also provides that cross-references to 
applications for which a benefit is not claimed under title 35, United 
States Code, must be located in a separate paragraph from the 
references required by 35 U.S.C. 119(e) or 120 and Sec.  1.78 to 
applications for which a benefit is claimed under 35 U.S.C. 119(e), 
120, 121, or 365(c) (proposed Sec.  1.78(d)(6)).
    Proposed Sec.  1.78(d) otherwise contains the provisions of current 
Sec.  1.78(a)(1) and (a)(2).
    Proposed Sec.  1.78(e) contains provisions relating to delayed 
claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-
filed nonprovisional or international application. Proposed Sec.  
1.78(e) provides that a petition to accept an unintentionally delayed 
claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-
filed application will not be granted in an application in which a 
request for continued examination under Sec.  1.114 has been filed. 
Proposed Sec.  1.114(f) does not permit a request for continued 
examination in a continuing application (other than a divisional 
application in compliance with Sec.  1.78(d)(1)(ii)), without a 
petition showing to the satisfaction of the Director that the 
amendment, argument, or evidence could not have been submitted prior to 
the close of prosecution in the application. Thus, proposed Sec.  
1.78(e) provides that an applicant may not add a delayed claim under 35 
U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application 
in an application in which a request for continued examination under 
Sec.  1.114 has been filed. Proposed Sec.  1.78(e) otherwise contains 
the provisions of current Sec.  1.78(a)(3).

[[Page 55]]

    Proposed Sec.  1.78(f) contains provisions relating to applications 
naming at least one inventor in common and containing patentably 
indistinct claims. Proposed Sec.  1.78(f)(1) provides that if a 
nonprovisional application has a filing date that is the same as or 
within two months of the filing date of one or more other pending 
nonprovisional applications or patents, taking into account any filing 
date for which a benefit is sought under title 35, United States Code, 
names at least one inventor in common with the one or more other 
pending nonprovisional applications or patents, and is owned by the 
same person, or subject to an obligation of assignment to the same 
person, as the one or more other pending nonprovisional applications or 
patents, the applicant must identify each such other application or 
patent by application number (i.e., series code and serial number) and 
patent number (if applicable). This identification requirement would 
also apply to each identified application, because if the identifying 
application has a filing date that is the same as or within two months 
of the filing date of the identified application, the identified 
application has a filing date that is the same as or within two months 
of the filing date of the identifying application. The application or 
patent may be identified in the specification in the paragraph 
containing cross-references to applications for which a benefit is not 
claimed under title 35, United States Code (proposed Sec.  1.78(d)(6)), 
or may be identified in a separate paper. Proposed Sec.  1.78(f)(1) 
also provides that the identification of one or more other 
nonprovisional applications under this paragraph must be within four 
months from the actual filing date of a nonprovisional application 
filed under 35 U.S.C. 111(a), or within four months from the date on 
which the national stage commenced under 35 U.S.C. 371(b) or (f) in a 
nonprovisional application which entered the national stage from an 
international application after compliance with 35 U.S.C. 371.
    Proposed Sec.  1.78(f)(2) provides that if the circumstances set 
forth in proposed Sec.  1.78(f)(1) exist and the nonprovisional 
application has the same filing date as the one or more other pending 
nonprovisional applications or patents, taking into account any filing 
date for which a benefit is sought under title 35, United States Code, 
and contains substantial overlapping disclosure as the one or more 
other pending nonprovisional applications or patents, a rebuttable 
presumption shall exist that the nonprovisional application contains at 
least one claim that is not patentably distinct from at least one of 
the claims in the one or more other pending or patented nonprovisional 
applications. Proposed Sec.  1.78(f)(2) also provides that in such a 
situation, the applicant in the nonprovisional application must either: 
(1) rebut this presumption by explaining to the satisfaction of the 
Director how the application contains only claims that are patentably 
distinct from the claims in each of such other pending applications or 
patents; or (2) submit a terminal disclaimer in accordance with Sec.  
1.321(c). In addition, proposed Sec.  1.78(f)(2) provides that where 
one or more other pending nonprovisional applications containing 
patentably indistinct claims have been identified, the applicant must 
explain to the satisfaction of the Director why it is necessary that 
there are two or more pending nonprovisional applications naming at 
least one inventor in common and owned by the same person, or subject 
to an obligation of assignment to the same person, which contain 
patentably indistinct claims.
    As discussed previously, where an applicant chooses to file 
multiple applications that are substantially the same it will be the 
applicant's responsibility to assist the Office in resolving potential 
double patenting situations rather than taking no action until faced 
with a double patenting rejection. Thus, if an Office action must 
include a double patenting rejection, it is because the applicant has 
not yet met his or her responsibility to resolve the double patenting 
situation by filing the appropriate terminal disclaimer. Therefore, the 
inclusion of a new double patenting rejection in a second or subsequent 
Office action will not preclude the Office action from being made final 
(assuming that the conditions in MPEP Sec.  706.07(a) are otherwise 
met).
    Proposed Sec.  1.78(f)(3) provides that in the absence of good and 
sufficient reason for there being two or more pending nonprovisional 
applications naming at least one inventor in common and owned by the 
same person, or subject to an obligation of assignment to the same 
person, which contain patentably indistinct claims, the Office may 
require elimination of the patentably indistinct claims from all but 
one of the applications. The Office expects to apply this provision 
primarily in situations covered by proposed Sec.  1.78(f)(2)(ii), under 
which applicants must explain to the satisfaction of the Director why 
it is necessary that there are two or more pending nonprovisional 
applications naming at least one inventor in common and owned by the 
same person, or subject to an obligation of assignment to the same 
person, which contain patentably indistinct claims. The Office, 
however, may require that an applicant provide good and sufficient 
reason whenever there are two or more pending nonprovisional 
applications naming at least one inventor in common and owned by the 
same person, or subject to an obligation of assignment to the same 
person, which contain patentably indistinct claims (i.e., in situations 
other than those covered by Sec.  1.78(f)(2) or even Sec.  1.78(f)(1)).
    Proposed Sec.  1.78(g) contains provisions relating to applications 
or patents under reexamination naming different inventors and 
containing patentably indistinct claims. Proposed Sec.  1.78(g) 
contains the provisions of current Sec.  1.78(c), except that 
``conflicting claims'' is proposed to be changed to ``patentably 
indistinct claims'' for clarity and for consistency with the language 
of proposed Sec.  1.78(f).
    Proposed Sec.  1.78(h) covers the situation in which parties to a 
joint research agreement are treated (in essence) as a common owner for 
purposes of 35 U.S.C. 103 by virtue of the CREATE Act. Proposed Sec.  
1.78(h) provides that if an application discloses or is amended to 
disclose the names of parties to a joint research agreement (35 U.S.C. 
103(c)(2)(C)), the parties to the joint research agreement are 
considered to be the same person for purposes of Sec.  1.78. The CREATE 
Act amended 35 U.S.C. 103(c) to provide that subject matter developed 
by another person shall be treated as owned by the same person or 
subject to an obligation of assignment to the same person for purposes 
of determining obviousness if three conditions are met: (1) The claimed 
invention was made by or on behalf of parties to a joint research 
agreement that was in effect on or before the date the claimed 
invention was made; (2) the claimed invention was made as a result of 
activities undertaken within the scope of the joint research agreement; 
and (3) the application for patent for the claimed invention discloses 
or is amended to disclose the names of the parties to the joint 
research agreement. See Changes to Implement the Cooperative Research 
and Technology Enhancement Act of 2004, 70 FR 1818, 1818 (Jan. 11, 
2005), 1291 Off. Gaz. Pat. Office 58, 58-59 (Feb. 8, 2005). Proposed 
Sec.  1.78(h) also provides that if the application is amended to 
disclose the names of parties to a joint research agreement under 35 
U.S.C. 103(c)(2)(C), the identification of such one or more other 
nonprovisional applications as required by Sec.  1.78(f)(1)

[[Page 56]]

must be submitted with the amendment under 35 U.S.C. 103(c)(2)(C) 
unless such identification is or has been submitted within the four-
month period specified in Sec.  1.78(f)(1).
    The proposed changes to Sec.  1.78 (if adopted) would be applicable 
to any application filed on or after the effective date of the final 
rule. Thus, any application filed on or after the effective date of the 
final rule seeking to claim the benefit of more than a single prior-
filed nonprovisional application or international application under 35 
U.S.C. 120, 121, 365(c) and Sec.  1.78 would need to either meet the 
requirements specified in proposed Sec.  1.78(d)(1)(iii) or include a 
petition under proposed Sec.  1.78(d)(1)(iv). That is, an applicant may 
only file one continuation or continuation-in-part application (and not 
``one more'' continuation or continuation-in-part application) after 
the effective date of the final rule without meeting the requirements 
specified in proposed Sec.  1.78(d)(1)(iii) or including a petition 
under proposed Sec.  1.78(d)(1)(iv).
    Conforming changes: The proposed reorganization and revision of 
Sec.  1.78 would also require conforming changes to Sec. Sec.  1.17, 
1.52, 1.53, 1.76, and 1.110.
    Section 1.114: Proposed Sec.  1.114(a) adds the phrase ``subject to 
the conditions of this section'' to make clear that an applicant may 
not file an unrestricted number of requests for continued examination. 
Proposed Sec.  1.114(a) otherwise contains the provisions of current 
Sec.  1.114(a).
    Proposed Sec.  1.114(f) provides that an applicant may not file 
more than a single request for continued examination under Sec.  1.114 
in any application, and that an applicant may not file a request for 
continued examination under Sec.  1.114 in any continuing application 
(Sec.  1.78(a)(1)) other than a divisional application in compliance 
with Sec.  1.78(d)(1)(ii), unless the request for continued examination 
also includes a petition accompanied by the fee set forth in Sec.  
1.17(f) and a showing to the satisfaction of the Director that the 
amendment, argument, or evidence could not have been submitted prior to 
the close of prosecution in the application. Thus, an applicant may 
file a single request for continued examination in a non-continuing 
application, or in a divisional application in compliance with Sec.  
1.78(d)(1)(ii), without a showing to the satisfaction of the Director 
that the amendment, argument, or evidence could not have been submitted 
prior to the close of prosecution in the application. Otherwise, a 
request for continued examination must be accompanied by a petition 
accompanied by the fee set forth in Sec.  1.17(f) and a showing to the 
satisfaction of the Director that the amendment, argument, or evidence 
could not have been submitted prior to the close of prosecution in the 
application. Since multiple opportunities are given to submit any 
desired amendment, argument, or evidence, that an amendment, argument, 
or evidence is refused entry because prosecution in the application is 
again closed (after the filing of a continuation or continuation-in-
part application (Sec. Sec.  1.78(d)(1)(i) and 1.78(d)(1)(iii)) or a 
request for continued examination under Sec.  1.114) will not by itself 
be a sufficient reason to warrant the grant of a petition under Sec.  
1.114(f). Rather, an applicant will be expected to demonstrate why the 
amendment, argument, or evidence could not have been submitted prior to 
the close of prosecution in the application.
    Proposed Sec.  1.114(f) further provides that any other proffer of 
a request for continued examination in an application not on appeal 
will be treated as a submission under Sec.  1.116, and that any other 
proffer of a request for continued examination in an application on 
appeal will be treated only as a request to withdraw the appeal. Thus, 
a second or subsequent request for continued examination that does not 
include the required petition will not have the same effect as a first 
request for continued examination.
    The proposed changes to Sec.  1.114 (if adopted) would be 
applicable to any application in which a request for continued 
examination is filed on or after the effective date of the final rule. 
Thus, any request for continued examination filed on or after the 
effective date of the final rule in an application in which a request 
for continued examination has previously been filed must include a 
petition under proposed Sec.  1.114(f). That is, an applicant may only 
file one request for continued examination (and not ``one more'' 
request for continued examination) after the effective date of the 
final rule without a petition under proposed Sec.  1.114(f).
    Section 1.495: Proposed Sec.  1.495(g) provides that if the 
documents and fees contain conflicting indications as between an 
application under 35 U.S.C. 111 and a submission to enter the national 
stage under 35 U.S.C. 371, the documents and fees will be treated as a 
submission to enter the national stage under 35 U.S.C. 371. It is 
Office experience that, in the majority of cases, documents and fees 
that contain conflicting indications as between an application under 35 
U.S.C. 111 and a submission to enter the national stage under 35 U.S.C. 
371 were intended as a submission under 35 U.S.C. 371. In addition, the 
changes to Sec.  1.78 (if adopted) would render the option of filing of 
a ``bypass'' continuation application under 35 U.S.C. 111(a) less 
preferable to simply entering the national stage under 35 U.S.C. 371 in 
an international application. A ``bypass'' continuation application is 
an application for patent filed under 35 U.S.C. 111(a) that claims the 
benefit of the filing date of an earlier international application that 
did not enter the national stage under 35 U.S.C. 371.

Rule Making Considerations

    Regulatory Flexibility Act: For the reasons set forth herein, the 
Deputy General Counsel for General Law of the United States Patent and 
Trademark Office has certified to the Chief Counsel for Advocacy of the 
Small Business Administration that the changes proposed in this notice 
will not have a significant economic impact on a substantial number of 
small entities. See 5 U.S.C. 605(b).
    In Fiscal Year 2005, the Office received approximately 317,000 
nonprovisional applications. Of those, about 62,870 (about 19,700 small 
entity) were continuing applications. In addition, the Office received 
about 52,750 (about 8,970 small entity) requests for continued 
examination. This notice proposes to require that: (1) Any second or 
subsequent continuation or continuation-in-part application and any 
second or subsequent request for continued examination include a 
showing to the satisfaction of the Director as to why the amendment, 
argument, or evidence could not have been submitted prior to the close 
of prosecution after a single continuation or continuation-in-part 
application or request for continued examination; and (2) multiple