Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, 46716-46843 [E7-15565]
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Federal Register / Vol. 72, No. 161 / Tuesday, August 21, 2007 / Rules and Regulations
Patent and Trademark Office
37 CFR Part 1
[Docket Nos.: PTO–P–2005–0022; PTO–P–
2005–0023]
RINs 0651–AB93; 0651–AB94
Changes To Practice for Continued
Examination Filings, Patent
Applications Containing Patentably
Indistinct Claims, and Examination of
Claims in Patent Applications
United States Patent and
Trademark Office, Commerce.
ACTION: Final rule.
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AGENCY:
SUMMARY: The United States Patent and
Trademark Office (Office) is revising the
rules of practice in patent cases relating
to continuing applications and requests
for continued examination practices,
and for the examination of claims in
patent applications. The Office is
revising the rules of practice to require
that any third or subsequent continuing
application that is a continuation
application or a continuation-in-part
application, and any second or
subsequent request for continued
examination in an application family, be
filed to obtain consideration of an
amendment, argument, or evidence, and
be supported by a showing as to why
the amendment, argument, or evidence
sought to be entered could not have
been previously submitted. The Office is
also revising the rules of practice to
provide that an applicant must provide
an examination support document that
covers all of the claims in an application
if the application contains more than
five independent claims or more than
twenty-five total claims. The Office is
also revising the rules of practice with
respect to multiple applications that
have the same claimed filing or priority
date, substantial overlapping disclosure,
a common inventor, and common
ownership. These changes will allow
the Office to conduct a better and more
thorough and reliable examination of
patent applications.
DATES: Effective Date: November 1,
2007. For applicability and compliance
dates see SUPPLEMENTARY INFORMATION.
FOR FURTHER INFORMATION CONTACT: The
Office of Patent Legal Administration,
by telephone at (571) 272–7704, by mail
addressed to: Mail Stop Comments—
Patents, Commissioner for Patents, P.O.
Box 1450, Alexandria, VA 22313–1450,
or by facsimile to (571) 273–0100,
marked to the attention of the Office of
Patent Legal Administration.
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The Office
is revising the rules of practice in patent
cases relating to continued examination
filings (continuing applications and
requests for continued examination),
multiple applications containing
patentably indistinct claims, and the
examination of claims in applications.
The Office is revising the rules of
practice for continuation applications,
continuation-in-part applications and
requests for continued examination.
Under these revisions, an applicant may
file two continuation applications (or
continuation-in-part applications), plus
a request for continued examination in
the application family, without any
justification. An application family
includes the initial application and its
continuation or continuation-in-part
applications. Applicant may file any
additional continuation application,
continuation-in-part application, or
request for continued examination with
a justification. Specifically, the Office is
revising the rules of practice to require
a justification for any third or
subsequent continuing application that
is a continuation application or a
continuation-in-part application, and
any second or subsequent request for
continued examination in an
application family. The third or
subsequent continuing application or
request for continued examination must
be filed with a petition showing why the
amendment, argument, or evidence
sought to be entered could not have
been previously submitted.
The Office is also revising the rules of
practice for divisional applications.
Under these revisions, an applicant is
permitted to file a divisional application
of an application for the claims to a nonelected invention that has not been
examined if the application was subject
to a requirement for restriction. The
divisional application need not be filed
during the pendency of the application
subject to a requirement for restriction,
as long as the copendency requirement
of 35 U.S.C. 120 is met. Thus, applicant
may file the divisional application
during the pendency of the application
that was subject to a requirement for
restriction or the pendency of any
continuing application of such an
application. Applicant may also file two
continuation applications of the
divisional application plus a request for
continued examination in the divisional
application family, without any
justification. A divisional application
family includes the divisional
application and its continuation
applications. In addition, applicant may
file any additional continuation
application or request for continued
examination in the divisional
SUPPLEMENTARY INFORMATION:
DEPARTMENT OF COMMERCE
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application family with a petition and
adequate justification.
The Office is also revising the rules of
practice for the examination of claims in
an application to provide that if the
number of independent claims is greater
than five or the number of total claims
is greater than twenty-five, the Office
will require the applicant to help focus
examination by providing additional
information to the Office in an
examination support document covering
all of the claims (whether in
independent or dependent form) in the
application.
The Office is also revising the rules of
practice with respect to multiple
applications that have patentably
indistinct claims and a common
assignee by either requiring that all
patentably indistinct claims in such
applications be submitted in a single
application or effectively treating the
multiple applications as a single
application.
These changes will mean more
effective and efficient examination for
the typical applicant without any
additional work on the part of most
applicants. However, in the applications
that place an extensive burden on the
Office, the applicant will be required to
help focus examination by providing
additional information to the Office.
Applicability Dates: The changes to 37
CFR 1.75, 1.142(c), and 1.265 are
applicable to any nonprovisional
application filed under 35 U.S.C. 111(a)
on or after November 1, 2007, and to
any nonprovisional application entering
the national stage after compliance with
35 U.S.C. 371 on or after November 1,
2007. The changes to 37 CFR 1.75,
1.142(c), and 1.265 are also applicable
to any nonprovisional application filed
before November 1, 2007, in which a
first Office action on the merits was not
mailed before November 1, 2007.
The changes to 37 CFR 1.117 are
applicable to any nonprovisional
application filed before, on, or after
November 1, 2007, with respect to any
fee under 37 CFR 1.16(h), (i), or (j) or
1.492(d), (e), or (f) paid on or after
December 8, 2004.
The changes to 37 CFR 1.78(a),
1.78(d)(1), 1.495 and 1.704(c)(11) are
applicable only to any application,
including any continuing application,
filed under 35 U.S.C. 111(a) on or after
November 1, 2007, or any application
entering the national stage after
compliance with 35 U.S.C. 371 on or
after November 1, 2007. Except as
otherwise indicated in this final rule,
any application filed under 35 U.S.C.
111(a) on or after November 1, 2007, or
any application entering the national
stage after compliance with 35 U.S.C.
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Federal Register / Vol. 72, No. 161 / Tuesday, August 21, 2007 / Rules and Regulations
371 on or after November 1, 2007,
seeking to claim the benefit under 35
U.S.C. 120, 121, or 365(c) and 37 CFR
1.78 of a prior-filed nonprovisional
application or international application
must either: (1) Meet the requirements
specified in one of 37 CFR 1.78(d)(1)(i)
through (d)(1)(v); or (2) include a
grantable petition under 37 CFR
1.78(d)(1)(vi).
With respect to applications that
claim the benefit under 35 U.S.C. 120,
121, or 365(c) only of nonprovisional
applications or international
applications filed before August 21,
2007: an application is not required to
meet the requirements set forth in 37
CFR 1.78(d)(1) if: (1) The application
claims the benefit under 35 U.S.C. 120,
121, or 365(c) only of nonprovisional
applications filed before August 21,
2007 or applications entering the
national stage after compliance with 35
U.S.C. 371 before August 21, 2007; and
(2) there is no other application filed on
or after August 21, 2007 that also claims
the benefit under 35 U.S.C. 120, 121, or
365(c) of such prior-filed
nonprovisional applications or
international applications.
The changes to 37 CFR 1.114 are
applicable to any application in which
a request for continued examination is
filed on or after November 1, 2007.
Specifically, a petition under 37 CFR
1.114(g) must accompany any request
for continued examination filed on or
after November 1, 2007, in an
application in which a request for
continued examination has previously
been filed, or in a continuation
application or continuation-in-part
application of an application in which
a request for continued examination has
previously been filed, or in an
application whose benefit is claimed in
a continuation application or
continuation-in-part application in
which a request for continued
examination has previously been filed.
The changes to 37 CFR 1.17, 1.26,
1.52, 1.53, 1.76, 1.78 (except 1.78(a) and
1.78(d)(1)), 1.104, 1.105, 1.110, 1.136,
1.142(a), and 1.145 are applicable to any
nonprovisional application pending on
or after November 1, 2007.
Compliance Date: For applications
filed before November 1, 2007,
applicants must comply with the
requirements in 37 CFR 1.78(f)(1) within
the time periods specified in 37 CFR
1.78(f)(1)(ii), or by February 1, 2008,
whichever is later, and applicants must
comply with the requirements in 37
CFR 1.78(f)(2) within the time periods
specified in 37 CFR 1.78(f)(2)(iii), or by
February 1, 2008, whichever is later.
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Table of Contents
I. Background
A. Changes to Practice for Continued
Examination Filings
B. Changes to Practice for Examination of
Claims in Patent Applications
C. Changes to Practice for Patent
Applications Containing Patentably
Indistinct Claims
D. Retention of First Action Final Practice
and Changes in Second Action Final
Practice
II. Discussion of Specific Rules
This final rule amends the following
sections in title 37 of the Code of Federal
Regulations (CFR): §§ 1.17, 1.26, 1.52, 1.53,
1.75, 1.76, 1.78, 1.104, 1.105, 1.110, 1.114,
1.136, 1.142, 1.145, 1.495, and 1.704. This
final rule adds §§ 1.117, and 1.265 to title 37
of the CFR.
III. Response to Comments
A. Changes to Continuing Application
Practice
B. Treatment of Third and Subsequent
Continuation or Continuation-In-Part
Applications
C. Treatment of Second and Subsequent
Requests for Continued Examination
D. Petitions Related to Additional
Continuation Applications,
Continuation-In-Part Applications, and
Requests for Continued Examination
E. Treatment of Multiple Applications
F. Changes to Practice for Examination of
Claims
G. Number of Independent and Total
Claims Permitted Without an
Examination Support Document
H. Examination Support Document
Requirements
I. The Office’s Authority to Promulgate the
Changes in this Final Rule
J. Changes to Internal Practice
K. Suggestions Relating to Legislative
Changes
L. Effective Date of the Changes in this
Final Rule
M. Miscellaneous
IV. Rule Making Considerations
A. Administrative Procedure Act
B. Regulatory Flexibility Act
C. Executive Order 13132 (Federalism)
D. Executive Order 12866 (Regulatory
Planning and Review)
E. Executive Order 13175 (Tribal
Consultation)
F. Executive Order 13211 (Energy Effects)
G. Executive Order 12988 (Civil Justice
Reform)
H. Executive Order 13045 (Protection of
Children)
I. Executive Order 12630 (Taking of Private
Property)
J. Congressional Review Act
K. Unfunded Mandates Reform Act of 1995
L. National Environmental Policy Act
M. National Technology Transfer and
Advancement Act
N. Paperwork Reduction Act
I. Background
In view of the need for a better
focused and effective examination
process to reduce the large and growing
backlog of unexamined applications
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while maintaining or improving the
quality of issued patents, the Office
published two notices in January of
2006 proposing changes to the practice
for continuing applications, requests for
continued examination, multiple
applications containing patentably
indistinct claims, and the examination
of claims in applications. See Changes
to Practice for Continuing Applications,
Requests for Continued Examination
Practice, and Applications Containing
Patentably Indistinct Claims, 71 FR 48
(Jan. 3, 2006), 1302 Off. Gaz. Pat. Office
1318 (Jan. 24, 2006) (proposed rule)
(hereinafter ‘‘Continuing Applications
Proposed Rule’’) and Changes to
Practice for the Examination of Claims
in Patent Applications, 71 FR 61 (Jan. 3,
2006), 1302 Off. Gaz. Pat. Office 1329
(Jan. 24, 2006) (proposed rule)
(hereinafter ‘‘Claims Proposed Rule’’).
Both the Continuing Applications
Proposed Rule and the Claims Proposed
Rule requested public comments and
provided a comment period of four
months to give the public an
opportunity to submit written
comments. The Office provided this
extended comment period to ensure that
the public would have sufficient time to
submit written comments on the
proposed changes to the rules of
practice and to ensure that the Office
would receive comments from all
interested persons and organizations. In
addition to the notices and requests for
written comments, the Office conducted
public meetings including town hall
meetings and presentations at various
locations in the United States to discuss
the proposed changes and obtain
feedback from the public. The Office
received over five hundred written
comments from government agencies,
universities, intellectual property
organizations, industry, law firms,
individual patent practitioners, and the
general public. The Office has spent
nearly one year carefully analyzing and
considering all of the written comments
that were received. The comments and
the Office’s responses to the comments
are provided in Section III, Response to
Comments. In response to the
comments, the Office has made
appropriate modifications to the
proposed changes to balance the
interests of the public, patent owners,
applicants, practitioners, and other
interested parties with the need to
reduce the large and growing backlog of
unexamined patent applications,
improve the quality of issued patents,
and make the patent examination
process more effective.
Under the proposed changes,
applicants would have been permitted
to file one of the following without any
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justification: A continuation
application, a continuation-in-part
application, or a request for continued
examination. By contrast, this final rule
permits applicants to file two
continuation applications or
continuation-in-part applications, plus a
single request for continued
examination in an application family,
without any justification. Applicant
may file any additional continuing
application or request for continued
examination with a justification. Under
the proposed changes, about eleven
percent of the applications and requests
for continued examination filed in fiscal
year 2006 would have required a
justification, where under the changes
being adopted in this final rule less than
three percent of the applications and
requests for continued examination filed
in fiscal year 2006 would have required
a justification.
The proposed changes would have
permitted applicants to file a divisional
application of an application for the
claims to a non-elected invention if the
application is subject to a requirement
for restriction and the divisional
application is filed during the pendency
of that application. However, this final
rule permits applicant to file a
divisional application of an application
if the application is subject to a
requirement for restriction and the
divisional application meets the
copendency requirement of 35 U.S.C.
120. Thus, this final rule allows
applicants to file divisional applications
in series whereas the proposed rule
would have required applicants to file
divisional applications in parallel. This
final rule also permits applicant to file
two continuation applications of a
divisional application, plus a request for
continued examination in the divisional
application family, without any
justification. Under the proposed
changes, about thirteen percent of
divisional applications filed in fiscal
year 2006 would need to have been filed
earlier, where the changes being
adopted in this final rule would not
have required any of the divisional
applications filed in fiscal year 2006 to
have been filed earlier.
The proposed changes would have
required applicant to provide an
examination support document before
the first Office action on the merits if
applicant designated more than ten
representative claims including all of
the independent claims in the
application for initial examination. The
Office received a substantial number of
comments from the public opposing this
‘‘representative claims’’ examination
approach and suggesting that the Office
should simply adopt a threshold to
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invoking the examination support
document requirement based upon
whether an application contains more
than a given number of independent
and total claims. The Office took those
comments into consideration and
adopted a similar approach. This final
rule requires an applicant to submit an
examination support document before
the issuance of a first Office action on
the merits of an application to assist in
the patentability determination when
the applicant presents more than five
independent claims or more than
twenty-five total claims in an
application. This final rule also
encourages applicant to submit all of the
claims that are patentably indistinct in
one single application and requires
applicant to identify multiple
applications that contain patentably
indistinct claims (same as the proposed
rule). Therefore, for each invention, an
applicant is permitted to present up to
fifteen independent claims and seventyfive total claims via an initial
application and two continuation or
continuation-in-part applications
without providing either an
examination support document or
justification, as long as those
applications are either prosecuted
serially or contain patentably distinct
claims. An examination support
document must include a
preexamination search statement, a
listing of references deemed most
closely related to the subject matter of
each of the claims, an identification of
all of the claim limitations that are
disclosed in the references, a detailed
explanation particularly pointing out
how each of the independent claims is
patentable over the cited references, and
a showing of where each claim
limitation finds support under 35 U.S.C.
112, ¶ 1, in the application and any
prior-filed application. The examination
support document will assist the Office
in the examination process and the
determination of patentability of the
invention by providing the most
relevant prior art and other useful
information.
Under the proposed changes, about
one percent of the applications filed in
fiscal year 2006 would have required
either the cancellation of one or more
independent claims or an examination
support document. Furthermore, about
eighty percent of the applications filed
in fiscal year 2006 would have required
either a designation of dependent claims
for initial examination or an
examination support document. Under
the changes being adopted in this final
rule, less than eight percent of the
applications filed in fiscal year 2006
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would have required either the
cancellation of one or more independent
claims or an examination support
document. In addition, less than twentyfive percent of the applications filed in
fiscal year 2006 would have required
either the cancellation of one or more
dependent claims or an examination
support document. However, by
prosecuting an initial application and
two continuation applications serially,
about ninety-five percent of the
applications filed in fiscal year 2006
would not have required either the
cancellation of any claims or an
examination support document.
A. Changes to Practice for Continued
Examination Filings
The volume of continued examination
filings (including both continuing
applications and requests for continued
examination) and duplicative
applications that contain ‘‘conflicting’’
or patentably indistinct claims, is
having a crippling effect on the Office’s
ability to examine ‘‘new’’ (i.e., noncontinuing) applications. Continued
examination filings, other than
divisional applications, as a percentage
of overall filings, has increased from
about 11.4 percent in fiscal year 1980,
to about 18.9 percent in fiscal year 1990,
to 21.9 percent in fiscal year 2000, to
29.4 percent in fiscal year 2006. The
cumulative effect of these continued
examination filings is too often to divert
patent examining resources from the
examination of new applications
disclosing new technology and
innovations, to the examination of
applications that are a repetition of prior
applications that have already been
examined and have either issued as
patents or become 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 with an
uncertainty 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 an
applicant’s use of the unrestricted
continuing application and request for
continued examination practices may
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
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Continuations, 84 B.U. L. Rev. 63, 64
(2004). The burden 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 appropriate for the Office to clarify
the applicant’s duty to advance
applications to final action by placing
some conditions 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). The changes in this final
rule will permit the Office to apply the
patent examining resources otherwise
consumed by these applications to the
examination of new applications and
thereby reduce the backlog of
unexamined applications.
The Office also notes that not every
application as filed particularly points
out and distinctly claims what the
applicant regards as his or her
invention. For example, this may occur
where the applicant’s attorney or agent
has not adequately reviewed or revised
the application documents received
from the applicant. Applicants
frequently file literal translations of
foreign documents as applications,
resulting in problems with compliance
with U.S. patent law, such as the
written description requirement, as well
as problems with formatting and
presentation of the claims. 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 could have corrected
earlier. In addition, while only a small
minority of applications are a third or
subsequent continuing application, it
appears that some applicants and
practitioners have used multiple
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continued examination filings as a
strategy to delay the conclusion of
examination. The Office, however,
considers such a strategy to be a misuse
of continued examination practice.
Specifically, the Office considers such a
strategy to be inconsistent with an
applicant’s and practitioner’s duty
under 37 CFR 10.18(b)(2)(i) not to
submit an application or other filing to
cause unnecessary delay or needless
increase in the cost of prosecution
before the Office. This misuse of
continued examination practice also
prejudices the public by keeping
applications in pending status while
awaiting developments in similar or
parallel technology and then later
amending their applications to cover
these developments. The courts have
permitted the addition of claims, when
supported under 35 U.S.C. 112, ¶ 1, to
encompass products or processes later
discovered in the marketplace. See PIN/
NIP, Inc. v. Platt Chemical Co., 304 F.3d
1235, 1247, 64 U.S.P.Q.2d 1344, 1352
(Fed. Cir. 2002). However, the practice
of maintaining continuing applications
to delay the conclusion of examination
for the purpose of adding claims after
such discoveries is inconsistent with the
duty under 37 CFR 10.18(b)(2)(i) not to
submit filings to cause unnecessary
delay or needless increase in the cost of
prosecution before the Office.
The Office, in light of its backlog and
anticipated continued increase in
application filings, 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.
In the Continuing Applications
Proposed Rule, the Office proposed to
change the rules of practice to require
that: (1) Any second or subsequent
continued examination filing
(continuation or continuation-in-part
application or request for continued
examination) include a showing that 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 claimed
filing or priority date, substantial
overlapping disclosure, a common
inventor, and a common assignee
include either an explanation of how
the claims are patentably distinct, or a
terminal disclaimer and explanation of
why patentably indistinct claims have
been filed in multiple applications.
In response to the comments on the
proposed changes to the practices for
continued examination filings, the
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Office has modified these provisions
relative to proposed changes. Under this
final rules, an applicant may instead file
two continuation applications (or two
continuation-in-part applications, or
one continuation application and one
continuation-in-part application), plus a
request for continued examination in
any one of the initial application or two
continuation or continuation-in-part
applications, without any justification.
Any additional continuation
application, continuation-in-part
application, or request for continued
examination, however, must be filed to
obtain consideration of an amendment,
argument, or evidence, and be
supported by a showing as to why the
amendment, argument, or evidence
sought to be entered could not have
been previously submitted. This final
rule would also ease the burden of
examining multiple applications that
have the same claimed filing or priority
date, substantial 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.
As discussed previously, the
unrestricted 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 changes to the rules in title 37 of
the CFR are intended to ensure that
continued examination filings are used
efficiently to move applications
forward. The Office expects that the
changes to the rules of practice in this
final rule will: (1) 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 what the patent
claims cover; and (2) address the
growing practice of filing (by a common
applicant or assignee) multiple
applications containing patentably
indistinct claims.
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, to claim the benefit of a
prior-filed international application
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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 to claim the
benefit of a prior-filed international
application designating the United
States of America (under 35 U.S.C.
365(c)).
35 U.S.C. 120 is generally considered
the statutory basis for continuing
application practice. See Symbol Techs.,
Inc. v. Lemelson Med., 277 F.3d 1361,
1365, 161 U.S.P.Q.2d 1515, 1518 (Fed.
Cir. 2002) (35 U.S.C. 120 and 121 form
the backbone of modern continuation
and divisional application practice)
(Symbol I). Nothing in 35 U.S.C. 120 or
its legislative history suggests that the
Office must or even should permit an
applicant to file an unlimited number of
continuing applications without any
justification.
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 a rejection
and receive an examination of the
‘‘amended’’ (or new) application. See In
re Bogese, 22 U.S.P.Q.2d 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 U.S.P.Q.2d 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 U.S.P.Q. 527, 535 (C.C.P.A. 1977)).
An applicant should understand,
however, that he or she does not have
an unfettered right to file multiple
continuing applications without making
a good faith attempt to claim the
applicant’s invention. 35 U.S.C. 2(b)
gives the Director the inherent authority
to promulgate regulations to ensure that
applicants prosecute applications in
good faith. Moreover, by assuming that
an unlimited number of continuations
are available, applicants have slipped
into unfocused practices in prosecution
that impede the Office’s ability to
conduct effective examination. Such
practices likewise cause delays in
prosecution and increase the cost of
examination, both of which are contrary
to an applicant’s duties under the rules
of conduct before the Office set forth in
37 CFR Part 10.
The changes in this final rule do not
set a per se limit on the number of
continuing applications. Nor are the
changes intended to address extreme
cases of prosecution laches or to codify
In re Bogese, 303 F.3d 1362, 1369, 64
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U.S.P.Q.2d 1448, 1453 (Fed. Cir. 2002)
(Bogese II). Rather, the rules require that
applicants who file multiple continuing
applications from the same initial
application show that the third and
following applications, and any second
or subsequent request for continued
examination in an application family, be
filed to obtain consideration of an
amendment, argument, or evidence that
could not have been previously
submitted.
Likewise, the Office is putting
conditions on request for continued
examination practice. 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, United States Code, in
section 4403 of the American Inventors
Protection Act of 1999 (AIPA). See
Public Law 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, this final rule allows
applicants to file their first request for
continued examination in an
application family without any
justification, but requires 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
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 each additional continued
examination filing. The Office resources
absorbed by the examination of
additional continued examination
filings are diverted away from the
examination of new applications, thus
increasing the backlog of unexamined
applications.
The Office also appreciates that
applicants sometimes use continued
examination practice to obtain further
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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. First, the
Board of Patent Appeals and
Interferences (BPAI) has radically
reduced the inventory of pending
appeals and appeal pendency during the
last five fiscal years. Second, the Office
has adopted an appeal conference
program to review the rejections in
applications in which an appeal brief
has been filed. See Manual of Patent
Examining Procedure (MPEP) § 1207.01
(8th ed. 2001) (Rev. 5, August 2006).
Third, the Office has also adopted a preappeal brief 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),
and Extension of the Pilot Pre-Appeal
Brief Conference Program, 1303 Off.
Gaz. Pat. Office 21 (Feb. 7, 2006). These
changes 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, the appeal
process offers a more effective
resolution than seeking continued
examination before the examiner.
This final rule also provides that an
applicant may file a divisional
application directed to each non-elected
invention that has not been examined if
the prior-filed application is subject to
a requirement for restriction. The
divisional application need not be filed
during the pendency of the application
subject to a requirement for restriction,
as long as the copendency requirement
of 35 U.S.C. 120 is met. This final rule
also permits applicant to file two
continuation applications of a divisional
application plus a request for continued
examination in the divisional
application family, without any
justification. This final rule, however,
does not permit a ‘‘divisional’’
application to be filed if it is not the
result of a requirement for restriction in
the prior-filed application (a so-called
‘‘voluntary’’ divisional application).
Such a ‘‘voluntary’’ divisional
application would be a continuation
application, and subject to the
requirements for continuation
applications, under the changes in this
final rule.
B. Changes to Practice for Examination
of Claims in Patent Applications
A number of patent applications
contain a large number of claims, which
makes efficient and effective
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examination of such applications
problematic. The Office previously
requested comments in 1998 on a
proposal to limit the number of
independent and total claims that
would be examined in an application.
See Changes to Implement the Patent
Business Goals, 63 FR 53497, 53506–08
(Oct. 5, 1998), 1215 Off. Gaz. Pat. Office
87, 95–97 (Oct. 27, 1998). Specifically,
in 1998, the Office requested comments
on a proposal to change the rules of
practice to: (1) Limit the number of total
claims that will be examined (at one
time) in an application to forty; and (2)
limit the number of independent claims
that will be examined (at one time) in
an application to six. See Changes to
Implement the Patent Business Goals,
63 FR at 53506, 1215 Off. Gaz. Pat.
Office at 95. Under the 1998 proposal,
if the applicant presented more than
forty total claims or six independent
claims for examination at one time, the
Office would withdraw the excess
claims from consideration, and require
the applicant to cancel those claims. See
id. The Office, however, ultimately
decided not to proceed with a proposed
change to § 1.75 to place an absolute
limit on the number of total and
independent claims that would be
examined in an application. See
Changes to Implement the Patent
Business Goals, 64 FR 53771, 53774–75
(Oct. 4, 1999), 1228 Off. Gaz. Pat. Office
15, 17–18 (Nov. 2, 1999).
Applications which contain a large
number of claims, however, continue to
absorb an inordinate amount of patent
examining resources, as they are
extremely difficult to properly process
and examine. As a result, contrary to the
proposal under consideration in 1998,
the Claims Proposed Rule sought a
change to the practice for examination
of claims that would not place a limit
on the number of total or independent
claims that may be presented for
examination in an application. The
Office proposed in the Claims Proposed
Rule to revise the practice for the
examination of claims in an application
as follows: (1) The Office would give an
initial examination only to the
representative claims, namely, all of the
independent claims and only the
dependent claims that are expressly
designated for initial examination; and
(2) if the number of representative
claims is greater than ten, the Office
would require the applicant to help
focus examination by submitting an
examination support document covering
all of the representative claims. See
Changes to Practice for the Examination
of Claims in Patent Applications, 71 FR
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at 61–69, 1302 Off. Gaz. Pat. Office at
1329–35.
The Office received a substantial
number of comments from the public
opposing the proposed ‘‘representative
claims’’ examination approach and
suggesting that the Office should simply
adopt a strategy based upon whether an
application contains more than a given
number of independent and total
claims. As a result of the public
comments on the Claims Proposed Rule,
the Office is not adopting the
‘‘representative claims’’ examination
approach.
Instead, this final rule provides that if
the number of independent claims is
greater than five or the number of total
claims is greater than twenty-five, the
applicant must help focus examination
by providing an examination support
document covering all of the claims in
the application (whether in independent
or dependent form) before the issuance
of a first Office action on the merits of
an application. An applicant may
present up to five independent claims
and twenty-five total claims in an initial
application and each continuation or
continuation-in-part application
without providing either an
examination support document or
justification, as long as those
applications are either prosecuted
serially or contain patentably distinct
claims. Thus, an applicant may present
up to fifteen independent claims and
seventy-five total claims to a single
patentably distinct invention via an
initial application and two continuation
or continuation-in-part applications that
are filed and prosecuted serially without
providing either an examination support
document or a justification.
Furthermore, an applicant may present
up to fifteen independent claims and
seventy-five total claims via a divisional
application and its two continuation
applications without providing either an
examination support document or a
justification, if the Office issues a
restriction requirement in the prior-filed
application. Thus, the change to the
practice for examination of claims
adopted in this final rule avoids placing
a limit on the number of total or
independent claims that may be
presented for examination in an
application, but does require an
applicant who presents more than five
independent claims or more than
twenty-five total claims in an
application to help focus examination
by providing additional information to
the Office in an examination support
document.
If an applicant thinks fifteen
independent claims or seventy-five total
claims to an invention is not sufficient,
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46721
or if applicant wishes to present more
than five independent claims or twentyfive total claims in any one application,
then applicant has the option of
presenting as many independent and
total claims as desired by providing an
examination support document. The
examination support document will
assist the examiner in examining the
application and determining the
patentability of a claimed invention by
providing the most relevant prior art
and other useful information.
Specifically, the examination support
document will assist the examiner in
understanding the invention and
interpreting the claims before
conducting a prior art search. The
examination support document will also
assist the examiner in evaluating the
prior art cited by the applicant and in
determining whether a claim limitation
has support in the original disclosure
and in any prior-filed application. An
examination support document must be
filed before the issuance of a first Office
action on the merits of an application.
This is so that the information
concerning the invention will be
available when the Office begins the
examination process, and thus avoids
the piecemeal examination that would
result if the examination support
document were not provided until after
the first Office action on the merits in
the application.
C. Changes to Practice for Patent
Applications Containing Patentably
Indistinct Claims
The changes in this final rule also
require that applicants provide
additional information to the Office
when they file multiple applications
containing ‘‘conflicting’’ or patentably
indistinct claims. The rules of practice
provided 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 37 CFR
1.78(b) (2006).
This final rule provides that an
applicant must identify other pending
applications or patents that are
commonly owned, have a common
inventor, and have a claimed filing or
priority date within two months of the
claimed filing or priority date of the
application. This requirement does not
supplant an applicant’s duty to bring
other applications that are ‘‘material to
patentability’’ of an application (e.g.,
applications containing patentably
indistinct claims) to the attention of the
examiner. See Dayco Prod., Inc. v. Total
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Containment, Inc., 329 F.3d 1358, 1365–
69, 66 U.S.P.Q.2d 1801, 1806–08 (Fed.
Cir. 2003); see also MPEP § 2001.06(b).
Thus, applicants are cautioned against
intentionally filing related applications
outside of this two-month window in an
attempt to avoid the requirement to
identify other applications that are
material to the patentability of the
application at issue. See Cargill, Inc. v.
Canbra Foods, Ltd., 476 F.3d 1359,
1367–68, 81 U.S.P.Q.2d 1705, 1711
(Fed. Cir. 2007) (there is no such thing
as a good faith intent to deceive).
This final rule provides that if there
are other pending applications or
patents that are commonly owned and
have a common inventor, substantial
overlapping disclosures, and the same
claimed filing or priority date, the Office
will presume that the applications
contain patentably indistinct claims. In
such a situation, the applicant must
either rebut this presumption by
explaining how the applications contain
patentably distinct claims, or submit the
appropriate terminal disclaimers and
explain why two or more pending
applications containing ‘‘conflicting’’ or
patentably indistinct claims should be
maintained.
The Office proposed a provision that
if an application contains at least one
claim that is patentably indistinct from
at least one claim in one or more other
applications or patents, the Office
would (if certain conditions were met)
treat the independent claims and the
dependent claims designated for initial
examination in the first application and
in each of such other applications or
patents as present in each of the
applications for purposes of
determining whether the applicant
would be required to submit an
examination support document. See
Changes to Practice for the Examination
of Claims in Patent Applications, 71 FR
at 64, 68, 1302 Off. Gaz. Pat. Office at
1331, 1334. This final rule provides that
if multiple applications, including
applications having a continuity
relationship, contain patentably
indistinct claims, the Office will treat
the multiple applications as a single
application for purposes of determining
whether each of the multiple
applications exceeds the five
independent claim and twenty-five total
claim threshold. This provision is to
preclude an applicant from submitting
multiple applications with claims that
are patentably indistinct, each with five
or fewer independent claims or twentyfive or fewer total claims, for the
purposes of avoiding the requirement to
submit an examination support
document in compliance with § 1.265.
The Office, however, will not count the
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claims in issued patents that contain
patentably indistinct claims in
determining whether a pending
application exceeds the five
independent claim and twenty-five total
claim threshold. Nevertheless, those
patentably indistinct claims would still
be subject to a double patenting
rejection.
D. Retention of First Action Final
Practice and Changes in Second Action
Final Practice
The Office has a first action final
rejection practice under which the first
Office action in a continuing
application, or in the prosecution of a
request for continued examination, may
be made final under certain
circumstances. See MPEP § 706.07(b)
and 706.07(h), paragraph VIII. The
Office proposed to eliminate this
practice 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) as unnecessary
in view of the proposed changes to
continuing applications and requests for
continued examination practice that
would permit an applicant to file only
one continuing application or request
for continued examination without any
justification. See Changes to Practice for
Continuing Applications, Requests for
Continued Examination Practice, and
Applications Containing Patentably
Indistinct Claims, 71 FR at 51, 1302 Off.
Gaz. Pat. Office at 1321. This final rule,
however, provides that an applicant
may file a request for continued
examination in either the initial
application or either of the two
continuing applications without any
justification. Therefore, the Office is
retaining its first action final rejection
practice. Applicants, however, are
reminded that it would not be proper for
the Office to make a first Office action
final in a continuing application or after
a request for continued examination if
the application contains material which
was presented after final rejection or the
close of prosecution but was denied
entry because: (1) new issues were
raised that required further
consideration and/or search; or (2) the
issue of new matter was raised. See
MPEP § 706.07(b) and 706.07(h). Thus,
applicants may guard against first action
final rejection in a continuing
application or after a request for
continued examination by first seeking
entry of the amendment, argument, or
new evidence under § 1.116.
The Office is also not changing the
final action practice for the Office action
following a submission under § 1.129(a).
See Changes to the Transitional
Procedures for Limited Examination
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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)
(notice).
The Office is revising second action
final practice as it pertains to second or
subsequent Office actions that include a
new double patenting rejection (either
statutory or obviousness-type double
patenting). Double patenting can arise
when 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, when an applicant files
multiple applications that are
substantially the same, the applicant is
responsible for assisting 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 met his
or her responsibility to resolve the
double patenting situation. 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.
The Office is also revising second
action final practice as it pertains to
second or subsequent Office actions that
include a new ground of rejection
necessitated by a showing that a claim
element that does not use the phrase
‘‘means for’’ or ‘‘step for’’ is
nevertheless a means- (or step-) plusfunction claim element under 35 U.S.C.
112, ¶ 6. The Office revised the
examination guidelines for means- (or
step-) plus-function claim elements
under 35 U.S.C. 112, ¶ 6, in June of
2000. See Supplemental Examination
Guidelines for Determining the
Applicability of 35 U.S.C. 112, ¶ 6, 65
FR 38510 (June 21, 2000), 1236 Off. Gaz.
Pat. Office 98 (July 25, 2000) (2000
Examination Guidelines); see also
Interim Supplemental Examination
Guidelines for Determining the
Applicability of 35 U.S.C. 112, ¶ 6, 64
FR 41392 (July 30, 1999). The 2000
Examination Guidelines for means- (or
step-) plus-function claim elements
under 35 U.S.C. 112, ¶ 6, have been
incorporated into the MPEP. See MPEP
sections 2181–2184 (8th ed. 2001) (Rev.
5, August 2006). The 2000 Examination
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Guidelines set forth a three-prong
procedure for determining whether a
claim element is a means- (or step-)
plus-function claim element under 35
U.S.C. 112, ¶ 6. See Supplemental
Examination Guidelines for Determining
the Applicability of 35 U.S.C. 112, ¶ 6,
65 FR at 38514, 1236 Off. Gaz. Pat.
Office at 101. The 2000 Examination
Guidelines provide that if a claim
element does not include the phrase
‘‘means for’’ or ‘‘step for’’ as provided in
the first prong of the three-prong
procedure and the applicant wishes to
have the claim element treated under 35
U.S.C. 112, ¶ 6, in a proceeding before
the Office, the applicant has two
options: (1) Amend the claim to include
the phrase ‘‘means for’’ or ‘‘step for’’; or
(2) show that even though the phrase
‘‘means for’’ or ‘‘step for’’ is not used,
the claim element is written as a
function to be performed and does not
recite sufficient structure, material, or
acts which would preclude application
of 35 U.S.C. 112, ¶ 6. See Supplemental
Examination Guidelines for Determining
the Applicability of 35 U.S.C. 112, ¶ 6,
65 FR at 38514, 1236 Off. Gaz. Pat.
Office at 101. To avoid any unnecessary
delay in the prosecution of the
application, an applicant who wishes to
have a claim element treated under 35
U.S.C. 112, ¶ 6, should either use the
phrase ‘‘means for’’ or ‘‘step for’’ in the
claim element or provide the necessary
showing before the examination of the
application begins so that the examiner
can properly interpret the claims in the
application and make a patentability
determination. Furthermore, because
submitting a showing is tantamount to
an amendment of the claim to include
the phrase ‘‘means for’’ or ‘‘step for,’’ a
showing will be treated as an
amendment of the claim for second
action final purposes. Thus, the
inclusion of a new rejection in a second
or subsequent Office action necessitated
by a showing submitted by applicant
will not preclude the Office from
making the second or subsequent Office
action final.
This final rule requires applicant to
identify any claims in a continuation-inpart application for which the subject
matter is disclosed in the manner
provided by 35 U.S.C. 112, ¶ 1, in the
prior-filed application. See § 1.78(d)(3)
and the discussion of § 1.78(d)(3). Any
claim in the continuation-in-part
application for which the subject matter
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 actual
filing date of the continuation-in-part
application, and will be subject to prior
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art based on the actual filing date of the
continuation-in-part application. To
avoid any unnecessary delay in the
prosecution of the application,
applicant should provide the
identification before the examiner
begins to conduct a prior art search. If
the failure to identify the claims for
which the subject matter is disclosed in
the manner provided by 35 U.S.C. 112,
¶ 1, in the prior-filed application causes
the examiner to include a new prior art
rejection in a second or subsequent
Office action, the inclusion of the new
prior art rejection will not preclude the
Office action from being made final.
Therefore, the Office is revising
second action final practice to provide
that a second or any subsequent Office
action on the merits may be made final,
except when the Office action contains
a new ground of rejection that is not: (1)
Necessitated by applicant’s amendment
of the claims, including amendment of
a claim to eliminate unpatentable
alternatives; (2) necessitated by
applicant’s providing a showing that a
claim element that does not use the
phrase ‘‘means for’’ or ‘‘step for’’ is
written as a function to be performed
and does not otherwise preclude
application of 35 U.S.C. 112, ¶ 6; (3)
based on information submitted in an
information disclosure statement filed
during the period set forth in 37 CFR
1.97(c) with the fee set forth in 37 CFR
1.17(p); (4) based upon double patenting
(statutory or obviousness-type double
patenting); or (5) necessitated by
applicant’s identification of the claim or
claims in a continuation-in-part
application for which the subject matter
is disclosed in the manner provided by
35 U.S.C. 112, ¶ 1, in the prior-filed
application. The provision in MPEP
§ 904.02 that a search should cover the
claimed subject matter and should also
cover the disclosed features which
might reasonably be expected to be
claimed does not preclude an examiner
from making the second or any
subsequent Office action on the merits
final if the Office action contains a new
ground of rejection that was
necessitated solely by applicant’s
amendment of the claims to eliminate
an unpatentable alternative. An
examiner cannot be expected to foresee
whether or how an applicant will
amend a claim to overcome a rejection
except in very limited circumstances
(e.g., where the examiner suggests how
applicant can overcome a rejection
under 35 U.S.C. 112, ¶ 2).
II. Discussion of Specific Rules
Title 37 of the Code of Federal
Regulations, part 1, is amended as
follows:
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Section 1.17 (patent application and
reexamination processing fees): Section
1.17(f) is amended to include a
reference to: (1) Petitions under
§ 1.78(d)(1)(vi) for a continuing
application not provided for in
§§ 1.78(d)(1)(i) through (d)(1)(v); and (2)
petitions under § 1.114(g) for a request
for continued examination not provided
for in § 1.114(f). See discussion of
§§ 1.78 and 1.114.
Section 1.26 (refunds): Section 1.26(a)
is amended to add the phrase ‘‘[e]xcept
as provided in § 1.117 or § 1.138(d)’’ to
the sentence ‘‘[a] change of purpose
after the payment of a fee, such as when
a party desires to withdraw a patent
filing for which the fee was paid,
including an application, an appeal, or
a request for an oral hearing, will not
entitle a party to a refund of such fee.’’
The ‘‘change of purpose’’ provision of
§ 1.26(a) is directed to the provision in
35 U.S.C. 42(d) authorizing a refund of
‘‘any fee paid by mistake or any amount
paid in excess of that required.’’ 35
U.S.C. 42(d). Sections 1.117 and
1.138(d), however, are directed to the
provisions in 35 U.S.C. 41(a)(2) and
(d)(1)(D) as amended by the
Consolidated Appropriations Act, 2005
(Consolidated Appropriations Act) that
permit the Office to develop procedures
to refund search fees or excess claims
fees under certain limited conditions.
See Public Law 108–447, 118 Stat. 2809
(2004). Section 1.26(b) is amended to
change ‘‘except as otherwise provided
in this paragraph or in § 1.28(a)’’ to
‘‘except as otherwise provided in this
paragraph, or in § 1.28(a), § 1.117(b), or
§ 1.138(d)’’. This change is for
consistency with § 1.117(b) and
§ 1.138(d), which also specify time
periods within which certain refunds
must be requested.
Section 1.52 (language, paper, writing,
margins, compact disc specifications):
Section 1.52(d)(2) is amended to refer to
§ 1.78(b) concerning the requirements
for claiming the benefit of a provisional
application in a nonprovisional
application. Section 1.52(d)(2) is also
amended to provide that if a provisional
application is filed in a language other
than English and the benefit of such
provisional application is claimed in a
nonprovisional application, an English
language translation of the non-English
language provisional application will be
required in the provisional application.
This change conforms § 1.52(d)(2) to the
September 2005 revision to the
provisions in § 1.78 for claiming the
benefit of a provisional application. See
Provisions for Claiming the Benefit of a
Provisional Application With a NonEnglish Specification and Other
Miscellaneous Matters, 70 FR 56119,
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56121, 56128 (Sept. 26, 2005), 1299 Off.
Gaz. Pat. Office 142, 143–44, 150 (Oct.
25, 2005) (final rule). With respect to
claiming the benefit of a provisional
application that was filed in a language
other than English, § 1.78(b)(5) now
provides that: (1) If the prior-filed
provisional application was filed in a
language other than English and both an
English-language translation of the
prior-filed provisional application and a
statement that the translation is accurate
were not previously filed in the priorfiled provisional application, applicant
will be notified and given a period of
time within which to file the translation
and the statement in the prior-filed
provisional application; (2) 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; and (3) the translation and
statement may be filed in the
provisional application, even if the
provisional application has become
abandoned.
Section 1.53 (application number,
filing date, and completion of
application): Section 1.53(b) and (c)(4)
are amended to refer to § 1.78, rather
than specific paragraphs of § 1.78.
Section 1.53(b)(1) is also amended to
provide that continuation or divisional
applications naming an inventor not
named in the prior application must be
filed under § 1.53(b) (this provision was
formerly in § 1.53(b)(2)), and to
reference § 1.78(a)(2) for the definition
of a divisional application and
§ 1.78(a)(3) for the definition of a
continuation application. Section
1.53(b)(2) is amended to reference
§ 1.78(a)(4) for the definition of a
continuation-in-part application.
Section 1.75 (claims): Section 1.75(b)
is amended to provide for the revised
practice for the examination of claims in
an application. Section 1.75(b)
(introductory text) provides for the
requirements of a dependent claim.
Section 1.75(b)(1) provides for the five
independent claim and twenty-five total
claim threshold for invoking the
examination support document
requirement. Section 1.75(b)(2) provides
for claims in dependent form that are
effectively independent claims. Section
1.75(b)(3) provides for situations in
which an examination support
document has not been provided in an
application that exceeds the five
independent claim and twenty-five total
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claim threshold. Section 1.75(b)(4)
provides that the total number of claims
present in all of the copending
commonly owned applications that
contain patentably indistinct claims
may not exceed the five independent
claim and twenty-five total claim
threshold. Section 1.75(b)(5) provides
that claims withdrawn from
consideration will not, unless they are
reinstated or rejoined, be taken into
account in determining whether an
application exceeds the five
independent claim and twenty-five total
claim threshold. Section 1.75(c) is
amended to provide that multiple
dependent claims and claims depending
from a multiple dependent claim will be
considered to be that number of claims
to which direct reference is made in the
multiple dependent claim for claims
counting purposes.
Section 1.75(b) (introductory text) is
amended to set forth the existing
provisions concerning dependent claims
in § 1.75(c), namely, that ‘‘[o]ne or more
claims may be presented in dependent
form, referring back to and further
limiting another claim or claims in the
same application.’’ Section 1.75(b)
(introductory text) is also amended to
clarify that a dependent claim is
required to incorporate by reference all
the limitations of the previous claim to
which it refers and to specify a further
limitation of the subject matter of the
previous claim. See Pfizer Inc. v.
Ranbaxy Labs. Ltd., 437 F.3d 1284,
1292, 79 U.S.P.Q.2d 1583, 1589–90
(Fed. Cir. 2006) (a dependent claim is
required to include all the limitations of
the claim from which it depends and
the failure to incorporate by reference
all the limitations is a violation of 35
U.S.C. 112, ¶ 4, and renders the
dependent claim invalid).
Section 1.75(b)(1) provides that an
applicant must file an examination
support document in compliance with
§ 1.265 that covers each claim (whether
in independent or dependent form)
before the issuance of a first Office
action on the merits of the application
if the application contains or is
amended to contain more than five
independent claims or more than
twenty-five total claims. Section
1.75(b)(1) also provides that the
application may not contain or be
amended to contain more than five
independent claims or more than
twenty-five total claims if an
examination support document in
compliance with § 1.265 has not been
filed before the issuance of a first Office
action on the merits of an application.
The examination support document in
compliance with § 1.265 is required to
be filed before the issuance of the first
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Office action on the merits of the
application because the information
provided by the applicant in the
examination support document will
assist the examiner in understanding the
invention of the application,
determining the effective filing date of
each claim, interpreting the claims
before a prior art search, understanding
the state of the art and the most closely
related prior art cited by the applicant,
and determining the patentability of the
claims. Applicant is permitted to
present more than five independent
claims or more than twenty-five total
claims in a continuing application, if
the applicant files an examination
support document in compliance with
§ 1.265 before the first Office action on
the merits of the continuing application,
regardless of whether an examination
support document has been filed in the
prior-filed application.
Claims withdrawn from consideration
under §§ 1.141 through 1.146 or § 1.499
as drawn to a non-elected invention or
inventions are not taken into account in
determining whether an application
exceeds this five independent claim and
twenty-five total claim threshold. See
§ 1.75(b)(5) and discussion of
§ 1.75(b)(5).
Section 1.75(b)(2) concerns claims in
dependent form that are effectively
independent claims. Section 1.75(b)(2)
provides that a claim that refers to
another claim but does not incorporate
by reference all the limitations of the
claim to which such claim refers will be
treated as an independent claim for fee
calculation purposes under § 1.16 (or
§ 1.492) and for purposes of § 1.75(b).
The Office must treat such claims as
independent claims because 35 U.S.C.
112, ¶ 4, provides (inter alia) that a
dependent claim ‘‘shall be construed to
incorporate by reference all the
limitations of the claim to which it
refers.’’ See 35 U.S.C. 112, ¶ 4. For
examples of such claims, see: In re
Thorpe, 777 F.2d 695, 696, 227 U.S.P.Q.
964, 965 (Fed. Cir. 1985) (‘‘product by
process’’ claim 44); In re Kuehl, 475
F.2d 658, 659, 177 U.S.P.Q. 250, 251
(C.C.P.A. 1973) (claim 6); and Ex parte
Rao, 1995 WL 1747720, *1 (BPAI 1998)
(claim 8). Section 1.75(b)(2) also
provides that a claim that refers to a
claim of a different statutory class of
invention will be treated as an
independent claim for fee calculation
purposes under § 1.16 (or § 1.492) and
for purposes of § 1.75(b). For examples
of such claims, see: Thorpe, 777 F.2d at
696, 227 U.S.P.Q. at 965 (‘‘product by
process’’ claim 44); Ex parte Porter, 25
U.S.P.Q.2d 1144, 1145 (BPAI 1992)
(claim 6); and Ex parte Blattner, 2
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U.S.P.Q.2d 2047, 2047–48 (BPAI 1987)
(claim 14).
Section 1.75(b)(3) provides that the
applicant will be notified if the
application contains or is amended to
contain more than five independent
claims or more than twenty-five total
claims but the applicant has not
complied with the requirements set
forth in § 1.75(b)(1) or 1.75(b)(4) (e.g., an
examination support document in
compliance with § 1.265 has been
omitted). Section 1.75(b)(3) also
provides that if the non-compliance
appears to have been inadvertent, the
notice will set a two-month time period
that is not extendable under § 1.136(a)
within which, to avoid abandonment of
the application, the applicant must
comply with the requirements set forth
in § 1.75(b). Again, claims withdrawn
from consideration under §§ 1.141
through 1.146 or § 1.499 as drawn to a
non-elected invention or inventions are
not taken into account in determining
whether an application exceeds this five
independent claim and twenty-five total
claim threshold. See § 1.75(b)(5) and
discussion of § 1.75(b)(5).
If a notice under § 1.75(b)(3) is mailed
before the first Office action on the
merits of an application and it appears
that the omission of an examination
support document was inadvertent, the
notice will set a two-month time period
within which the applicant must: (1)
File an examination support document
in compliance with § 1.265 that covers
each claim (whether in independent or
dependent form); or (2) amend the
application such that it contains no
more than five independent claims and
no more than twenty-five total claims.
Section 1.75(b)(3) provides that this
two-month time period is not
extendable under § 1.136(a) and that the
failure to reply to such a notice will
result in abandonment of the
application. Due to the increase in
patent pendency that would result from
the routine granting of extensions in the
situation in which an application
contains or is amended to contain more
than five independent claims or more
than twenty-five total claims but the
applicant has not complied with the
requirements set forth in § 1.75(b)(1) or
1.75(b)(4) (e.g., an examination support
document in compliance with § 1.265
has been omitted), the Office is limiting
extensions of this two-month time
period in § 1.75(b)(3) to those for which
there is sufficient cause (§ 1.136(b)).
Once the Office issues a notice under
§ 1.75(b)(3), the applicant may not
simply submit a suggested alternative
requirement for restriction under
§ 1.142(c), but instead must: (1) File an
examination support document in
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compliance with § 1.265 that covers
each claim (whether in independent or
dependent form); or (2) amend the
application such that it contains no
more than five independent claims and
no more than twenty-five total claims.
If an examination support document
in compliance with § 1.265 as required
under § 1.75(b) was not filed before the
issuance of a first Office action on the
merits of an application, an amendment
that results in the application
containing more than five independent
claims or more than twenty-five total
claims will be treated as nonresponsive. Specifically, if the noncompliance with § 1.75(b) appears to
have been inadvertent, the Office would
give the applicant a two-month time
period that is not extendable under
§ 1.136(a) within which to provide an
amendment that does not result in the
application containing more than five
independent claims or more than
twenty-five total claims. See § 1.135(c)
(‘‘[w]hen reply by the applicant is a
bona fide attempt to advance the
application to final action, and is
substantially a complete reply to the
non-final Office action, but
consideration of some matter or
compliance with some requirement has
been inadvertently omitted, applicant
may be given a new time period for
reply under § 1.134 to supply the
omission.’’).
Section 1.75(b)(4) provides for the
situation in which: (1) A nonprovisional
application contains at least one claim
that is patentably indistinct from at least
one claim in one or more other pending
nonprovisional applications; and (2) the
nonprovisional application and the one
or more other pending nonprovisional
applications either are owned by the
same person or are subject to an
obligation of assignment to the same
person. In this situation, § 1.75(b)(4)
provides that the Office will treat the
claims in the first nonprovisional
application and in each of such other
pending nonprovisional applications as
being present in each of the pending
nonprovisional applications for
purposes of § 1.75(b). That is, if the
conditions specified in § 1.75(b)(4) are
present, the Office will treat each such
nonprovisional application as having
the total number of claims present in all
of such applications (and not just the
claim that is patentably indistinct) for
purposes of determining whether an
examination support document is
required by § 1.75(b). For example: If
application ‘‘A’’ contains only one claim
that is patentably indistinct from the
claims in application ‘‘B’’, application
‘‘A’’ and application ‘‘B’’ are owned by
the same company, and each
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application contains three independent
claims and twenty total claims, the
Office will treat each application as
having six independent claims and forty
total claims in determining whether
each application exceeds the five
independent claim and twenty-five total
claim threshold set forth in § 1.75(b). In
this example, an examination support
document would be required in each
application before the issuance of a first
Office action on the merits of the
application. To avoid the provisions of
§ 1.75(b)(4), applicant may present all of
the patentably indistinct claims in
application ‘‘B’’ by canceling the
patentably indistinct claim from
application ‘‘A’’. As discussed
previously, § 1.75(b)(4) is to preclude an
applicant from submitting multiple
applications to the same subject matter
(with claims that are patentably
indistinct), each with five or fewer
independent claims or twenty-five or
fewer total claims, for the purpose of
avoiding the requirement to submit an
examination support document in
compliance with § 1.265.
Under § 1.75(b)(4), the Office will
count the claims in the copending
nonprovisional applications containing
patentably indistinct claims (including
applications having a continuity
relationship) but not in issued patents
containing patentably indistinct claims,
in determining whether each such
application exceeds the five
independent claim or twenty-five total
claim threshold for invoking the
examination support document
requirement. An applicant may present
up to five independent claims and
twenty-five total claims in an initial
application and each continuing
application, provided that continuing
applications that contain patentably
indistinct claims are not prosecuted in
parallel with the initial application or
each other. Thus, an applicant may
present up to fifteen independent claims
and seventy-five total claims to a single
invention via an initial application and
two continuing applications that are
filed and prosecuted serially without
providing either an examination support
document or a justification. In addition,
an applicant may prosecute a divisional
application (an application containing
claims that are patentably distinct from
the claims to the invention prosecuted
in the initial application) in parallel
with the initial application or its
continuation or continuation-in-part
applications without the claims in the
divisional application being taken into
account in determining whether the
initial application or its continuation or
continuation-in-part applications
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exceed the five independent claim or
twenty-five total claim threshold for
invoking the examination support
document requirement.
Section 1.75(b)(4) also provides that
the total number of claims present in all
of such copending nonprovisional
applications containing patentably
indistinct claims may not exceed five
independent claims or twenty-five total
claims unless an examination support
document in compliance with § 1.265 is
filed before the issuance of a first Office
action on the merits of the application
containing patentably indistinct claims.
The provisions of § 1.75(b)(4) do not
depend upon the relative filing dates of
the nonprovisional application and the
one or more other nonprovisional
applications. The provisions of
§ 1.75(b)(4) apply regardless of whether
the filing dates of the applications are
the same, are within two months of each
other (cf. § 1.78(f)(1) and (f)(2)), or are
not within two months of each other. In
other words, the provision of
§ 1.75(b)(4) does not depend on the
filing dates of the respective
applications. In addition, the provisions
of § 1.75(b)(4) are applicable regardless
of any continuity relationship between
the applications (e.g., the provision
applies if a parent application is still
pending at the time the child
application is under examination). For
applications having a continuity
relationship, the prior application must
be pending at the time the continuing
application is filed. See 35 U.S.C. 120
(requires that a continuing application
be filed before the patenting or
abandonment of or termination of
proceedings on the prior application).
The Office, however, will treat the
application as no longer pending for
purposes of § 1.75(b)(4) if: (1) A notice
of allowance is issued, unless the
application is withdrawn from issue
(§ 1.313); (2) the Office recognizes the
application is abandoned; (3) a notice of
appeal to the U.S. Court of Appeals for
the Federal Circuit under 35 U.S.C. 141
is filed, unless the appeal is terminated;
or (4) a civil action under 35 U.S.C. 145
or 146 is commenced, unless the civil
action is terminated.
Section 1.75(b)(4) as adopted in this
final rule differs from proposed
§ 1.75(b)(4) in that it does not provide
that the Office may require elimination
of the patentably indistinct claims from
all but one of the applications. Such a
provision would be a substantial
duplicate of § 1.78(f)(3) as adopted in
this final rule, which provides that if the
conditions set forth in § 1.75(b)(4) exist,
the Office may require elimination of
the patentably indistinct claims from all
but one of the applications in the
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absence of good and sufficient reason
for there being two or more such
nonprovisional applications containing
patentably indistinct claims.
Section 1.75(b)(5) provides that
claims withdrawn from consideration
under §§ 1.141 through 1.146 or § 1.499
as drawn to a non-elected invention or
inventions will not, unless they are
reinstated or rejoined, be taken into
account in determining whether an
application exceeds the five
independent claim and twenty-five total
claim threshold set forth in
§§ 1.75(b)(1), (b)(3), and (b)(4). Thus,
claims withdrawn from consideration as
the result of an Office-initiated
requirement under § 1.142, 1.146, or
1.499 (regardless of whether the election
is with or without traverse), or as the
result of the acceptance of a suggested
restriction requirement under § 1.142(c),
are not taken into account in
determining whether an application
exceeds the five independent claim and
twenty-five total claim threshold. In
addition, claims withdrawn from
consideration in an application (e.g., the
initial application) as the result of either
an Office-initiated requirement under
§ 1.142, 1.146, or 1.499, or the
acceptance of a suggested restriction
requirement under § 1.142(c), are not
taken into account in determining
whether a copending application (e.g., a
continuation application of the initial
application) contains a claim that is
patentably indistinct from a claim in
such application for purposes of
§ 1.75(b)(4).
Section 1.142(c) as adopted in this
final rule provides that the applicant
may submit a suggested requirement for
restriction if two or more independent
and distinct inventions are claimed in
the application. Section 1.142(c) further
provides that any suggested requirement
for restriction must be filed before the
earlier of the first Office action on the
merits or any Office action that contains
a requirement to comply with the
requirement of unity of invention under
PCT Rule 13 or a requirement for
restriction (including an election of
species) under 35 U.S.C. 121 in the
application. Section 1.142(c) provides
that any suggested requirement for
restriction must also be accompanied by
an election without traverse of an
invention to which there are no more
than five independent claims and no
more than twenty-five total claims, and
identify the claims to the elected
invention. If the applicant submits a
suggested restriction requirement, the
suggested restriction requirement is
accepted, and there are five or fewer
independent claims and twenty-five or
fewer total claims to the elected
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invention (as required by § 1.142(c)), the
Office will simply treat the non-elected
claims as withdrawn from consideration
and proceed to act on the application
(assuming the application is otherwise
in condition for action). The Office
action will set out the requirement for
restriction under § 1.141(a), e.g., in the
manner that an Office action on the
merits would contain a written record of
a requirement for restriction previously
made by telephone. See MPEP section
810. Applicants are reminded, however,
that the Office may refund excess claims
fees only for claims that are canceled
prior to the issuance of a first Office
action on the merits of the application.
See 35 U.S.C. 41(a)(2) (‘‘[t]he Director
may, by regulation, provide for a refund
of any part of the fee specified in [35
U.S.C. 41(a)(2)] for any claim that is
canceled before an examination on the
merits, as prescribed by the Director,
has been made of the application under
[35 U.S.C.] 131’’).
If the applicant files a suggested
requirement for restriction in an
application containing more than five
independent claims or more than
twenty-five total claims, the applicant
will also be notified if the suggested
restriction requirement is not accepted.
The refusal to accept a suggested
requirement for restriction may result in
the examiner making a different
restriction requirement or making no
restriction requirement.
If the examiner makes a restriction
requirement (which includes an election
of species requirement) different from
the suggested restriction requirement,
the applicant will be notified of the
restriction requirement. The applicant
will be given a two-month time period
that is not extendable under § 1.136(a)
within which the applicant must make
an election consistent with the Officeissued restriction requirement in order
to avoid abandonment of the
application. Once the Office issues a
requirement for restriction, the
applicant may not simply submit a
suggested alternative requirement for
restriction under § 1.142(c). Instead, the
applicant must make an election (with
or without traverse) responsive to the
Office-issued requirement for
restriction. If an application subject to
an Office-issued requirement for
restriction contains more than five
independent claims or more than
twenty-five total claims, the reply must
also either: (1) Amend the application to
contain no more than five independent
claims and no more than twenty-five
total claims to the elected invention
and/or species; or (2) include an
examination support document in
compliance with § 1.265 that covers
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each claim (whether in independent or
dependent form) pending in the
application.
If the examiner does not make a
restriction requirement, the applicant
will simply be given a notice under
§ 1.75(b)(3). That notice will set a twomonth time period that is not
extendable under § 1.136(a) within
which, to avoid abandonment of the
application, the applicant must: (1)
Amend the application to contain no
more than five independent claims and
no more than twenty-five total claims;
or (2) file an examination support
document in compliance with § 1.265
that covers each claim (whether in
independent or dependent form)
pending in the application. See
§ 1.75(b)(3).
Section 1.75(b)(5) also provides that
claims reinstated (e.g., as a result of a
request for reconsideration of the
requirement) or rejoined (e.g., upon
allowance of a generic claim) in the
application are taken into account in
determining whether an application
exceeds the five independent claim and
twenty-five total claim threshold. As
discussed previously, unless an
examination support document in
compliance with § 1.265 was filed
before the issuance of a first Office
action on the merits of an application,
the application must remain at or under
the five independent claim and twentyfive total claim threshold. Therefore, if
an examination support document was
not filed before the issuance of a first
Office action on the merits of the
application, and the reinstatement or
rejoinder of non-elected claims results
in the application containing more than
five independent claims or more than
twenty-five total claims, the Office will
give the applicant a two-month time
period within which to amend the
application to contain five or fewer
independent claims and twenty-five or
fewer total claims. See § 1.75(b)(3). This
two-month time period is not
extendable under § 1.136(a). The failure
to file such an amendment will result in
abandonment of the application.
Since claims reinstated or rejoined in
the application are taken into account in
determining whether an application
exceeds the five independent claim and
twenty-five total claim threshold,
applicants cannot rely upon a
requirement for restriction to avoid
submitting an examination support
document before the issuance of a first
Office action on the merits of an
application. This is especially true
where: (1) The applicant traverses the
requirement for restriction; (2) the
requirement for restriction may be
conditional, such as a requirement for
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election of species in an application that
contains a claim that is generic to all of
the claimed species (hereafter ‘‘generic
claim’’) (see MPEP section 809), or a
requirement for restriction in an
application that contains a linking claim
(e.g., a subcombination claim linking
plural combinations); or (3) the
applicant plans to request rejoinder of
the claims to the non-elected invention
(see MPEP § 821.04 et seq.). Thus,
applicants are advised to file an
examination support document in the
application before the first Office action
on the merits if they anticipate the
occurrence of any of the aforementioned
three situations. Furthermore,
applicants cannot rely upon the
requirement for restriction to file a
divisional application because the
Office will withdraw the requirement
for restriction, including an election of
species, if the non-elected claims are
reinstated or rejoined.
Applicant is not permitted to file a
divisional application of a prior-filed
application that is no longer subject to
a restriction requirement. Under
§ 1.78(a)(2) and 1.78(d)(1)(ii), the priorfiled application to which a divisional
application claims the benefit must be
subject to a requirement to comply with
the requirement of unity of invention
under PCT Rule 13 or a requirement for
restriction under 35 U.S.C. 121. Sections
1.78(a)(2) and 1.78(d)(1)(ii) also require
a divisional application to contain only
claims directed to a non-elected
invention that has not been examined.
For an application that contains a
generic claim in which a requirement
for an election of species has been
made, applicants should conclude
prosecution (in the initial application
and its continuation or continuation-inpart applications), including exhaustion
of any available appeals, as to the
generic claim before ever filing a
divisional application to a non-elected
species. If applicant no longer wants to
pursue the generic claim, applicant may
file a divisional application directed to
a non-elected species. If an applicant
files a divisional application directed to
a non-elected species, applicant should:
(1) Cancel the claims to the non-elected
species and the generic claim in the
prior-filed application before rejoinder
or reinstatement occurs; (2) not present
the non-elected claims and the generic
claim in any continuation or
continuation-in-part application of the
initial application; and (3) not present
the generic claim in the divisional
application or any other continuation
application of the divisional application
(because the generic claim has been
examined in the initial application and
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it is patentably indistinct from the
claims of the non-elected species).
When an application contains a
generic claim and the examiner makes
a provisional restriction requirement,
requiring an election of species for
initial search and examination
purposes, the applicant must elect a
single species. (The requirement is
provisional because the restriction will
be withdrawn upon allowance of the
generic claim.) The examiner will
determine the patentability of the
elected species and generic claim. Upon
the allowance of the generic claim, the
provisional restriction requirement will
be withdrawn, as explained above. The
claims of the non-elected species then
will be rejoined. The Office will count
the rejoined claims together with the
other pending claims to determine
whether the application exceeds the five
independent claim and twenty-five total
claim threshold set forth § 1.75(b)(1).
See § 1.75(b)(5). If the application
contains more than five independent
claims and twenty-five total claims
(counting the rejoined claims) and the
applicant did not file an examination
support document in compliance with
§ 1.265 before the issuance of a first
Office action on the merits in the
application, then the applicant must
amend the application to contain no
more than five independent claims and
no more than twenty-five total claims.
See § 1.75(b)(1). Therefore, applicants
cannot rely upon a provisional
requirement for restriction to avoid
submitting an examination support
document before the issuance of the first
Office action on the merits in the
application.
Furthermore, upon the allowance of a
claim that is generic to all of the
claimed species (either in the initial
application or any continuing
application), the application is no
longer subject to a requirement to
comply with the requirement of unity of
invention under PCT Rule 13 or a
requirement for restriction under 35
U.S.C. 121. In such a situation, if
applicant had filed a ‘‘divisional’’
application to the non-elected species
following the provisional restriction in
the prior-filed application, that
‘‘divisional’’ application would no
longer be proper under §§ 1.78(a)(2) and
1.78(d)(1)(ii). This is because the
‘‘divisional’’ application would not
meet the conditions set forth in
§§ 1.78(a)(2) and 1.78(d)(1)(ii). If
applicant wishes to maintain the
application, then applicant must delete
or correct the benefit claim to indicate
that the application is a continuation
application, provided the requirements
set forth in § 1.78(d)(1)(i) can be
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satisfied. In such case, the Office will
treat the application as one of the two
continuation applications of the priorfiled application permitted under
§ 1.78(d)(1)(i). But, if the prior-filed
application already has its benefit
claimed in two other nonprovisional
applications, applicant must delete the
benefit claim in the application. See
§ 1.78(d)(1)(i). Therefore, applicant is
cautioned not file a divisional
application drawn to a non-elected
species if a generic claim is pending in
the initial application or any continuing
application of the initial application and
could be found allowable.
When an application subject to an
election of species is allowed with no
claim that is generic to all of the
claimed species being found to have
been allowable, the applicant will be
notified that the Office considers the
requirement that the application be
restricted to a single species to be final.
At that point, the applicant may cancel
the claims to the non-elected species
and the generic claim in the prior-filed
application and file a divisional
application in accordance with
§ 1.78(d)(1)(ii) to the non-elected
species. However, if the applicant later
files a continuing application of the
initial application or the divisional
application presenting one or more
generic claims in such later application,
the Office will consider the requirement
that the initial application be restricted
to a single species to no longer be final.
Should that occur, the ‘‘divisional’’
application directed to the non-elected
species would not be proper under
§§ 1.78(a)(2) and 1.78(d)(1)(ii) for the
reasons explained above. Thus,
applicants should conclude
prosecution, including exhaustion of
any available appeals, as to the generic
claim before ever filing a divisional
application to a non-elected species. In
other words, applicants cannot rely
upon a requirement that an application
containing a generic claim will be
restricted to a single species to permit
filing one or more divisional
applications until the applicant has
concluded prosecution with respect to
any generic claims.
Under the Office’s rejoinder practice,
an applicant may request rejoinder of
claims to a non-elected invention that
depend from or otherwise require all the
limitations of an allowable claim. See
MPEP § 821.04 et seq. This ‘‘rejoinder’’
practice was developed in light of the
Federal Circuit’s decisions in In re
Ochiai, 71 F.3d 1565, 37 U.S.P.Q.2d
1127 (Fed. Cir. 1995), and In re Brouwer,
77 F.3d 422, 37 U.S.P.Q.2d 1663 (Fed.
Cir. 1996), and the enactment of 35
U.S.C. 103(b) in The Biotechnology
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Process Act of 1995 (Pub. L. 104–41, 109
Stat. 351 (1995)). See Guidance on
Treatment of Product and Process
Claims in light of In re Ochiai, In re
Brouwer, and 35 U.S.C. 103(b), 1184 Off.
Gaz. Pat. Office 86 (Mar. 26, 1996).
Applicants may retain claims to a nonelected invention in an application for
possible rejoinder in the event of the
allowance of a claim to the elected
invention. However, as discussed
previously, the Office will count
rejoined claims towards the five
independent claim and twenty-five total
claim threshold in § 1.75(b)(1). See
§ 1.75(b)(5). If applicant cancels all of
the claims directed to a non-elected
invention before rejoinder occurs and
files a divisional application, the
restriction requirement will not be
withdrawn and the non-elected process
claims that are now canceled will not be
rejoined. This will preserve applicant’s
rights under 35 U.S.C. 121 and
§ 1.78(d)(1)(ii). See MPEP § 821.04(b).
Section 1.75(c) is amended to provide
for multiple dependent claims only.
Dependent claims are now provided for
in § 1.75(b). Section 1.75(c) further
provides that multiple dependent
claims and claims that depend from a
multiple dependent claim will be
considered to be that number of claims
to which direct reference is made in the
multiple dependent claim for purposes
of § 1.75(b) (as well as § 1.16 or 1.492).
The changes to § 1.75 are applicable
to any application (including any
reissue application) filed under 35
U.S.C. 111(a) on or after November 1,
2007, and to any nonprovisional
application entering the national stage
after compliance with 35 U.S.C. 371 on
or after November 1, 2007, as well as to
any application (including any reissue
application) in which a first Office
action on the merits (§ 1.104) was not
mailed before November 1, 2007. The
Office will provide an applicant who
filed a nonprovisional application under
35 U.S.C. 111(a) before November 1,
2007, or a nonprovisional application
that entered the national stage after
compliance with 35 U.S.C. 371 before
November 1, 2007, and who would be
affected by the changes in the final rule,
with an opportunity to submit: (1) An
examination support document under
§ 1.265; (2) a new set of claims such that
the application contains five or fewer
independent claims and twenty-five or
fewer total claims; or (3) a suggested
restriction requirement under § 1.142(c).
Specifically, the Office will issue a
notice setting a two-month time period
that is extendable under § 1.136(a) or (b)
within which the applicant must
exercise one of these options in order to
avoid abandonment of the application.
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The Office, however, may combine such
a notice with a requirement for
restriction, in which case the applicant
must make an election responsive to the
restriction requirement and, if there are
more than five independent claims or
more than twenty-five total claims
drawn to the elected invention, the
applicant must also: (1) File an
examination support document in
compliance with § 1.265; or (2) amend
the application such that it contains five
or fewer independent claims and
twenty-five or fewer total claims drawn
to the elected invention. Thus, if such
a notice is combined with a requirement
for restriction, the applicant does not
have the option of replying to such
notice with a suggested restriction
requirement under § 1.142(c).
With respect to the application of the
changes to § 1.75 in this final rule to a
reissue application, an examination
support document under § 1.265 will
not be required pursuant to § 1.75(b) in
a reissue application if the reissue
application does not seek to change the
claims in the patent being reissued. A
change in the claims in the patent being
reissued is sought either by an
amendment to or addition of a claim or
claims, or by an amendment to the
specification which changes a claim or
claims.
Section 1.76 (application data sheet):
Section 1.76(b)(5) is amended to refer to
§§ 1.78(b)(3) and (d)(3) for consistency
with the changes to § 1.78. Section
1.76(b)(5) is also amended to clarify that
the relationship of the applications is
not required for a benefit claim under 35
U.S.C. 119(e) and to delete ‘‘the status
(including patent number if available)’’.
Such information is not necessary for
claiming the benefit of a prior-filed
application under 35 U.S.C. 119(e), 120,
121, or 365(c).
Section 1.78 (claiming benefit of
earlier filing date and cross-references
to other applications): Section 1.78 is
reorganized as follows: (1) § 1.78(a)
defines ‘‘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 priorfiled provisional application; (3)
§ 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; (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
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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; (8) § 1.78(h) contains
provisions pertaining to the treatment of
parties to a joint research agreement
under the CREATE Act; and § 1.78(i)
provides that the time periods set forth
in § 1.78 are not extendable.
Section 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. Section 1.78(a)(1) 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 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.’’).
Section 1.78(a)(2) defines a
‘‘divisional application’’ as a continuing
application that discloses and claims
only an invention or inventions that
were disclosed and claimed in a priorfiled application, but were subject to a
requirement to comply with the
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, and were not
elected for examination and were not
examined in any prior-filed application.
This definition is more precise than the
definition of ‘‘divisional application’’
currently found in MPEP § 201.06.
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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 priorfiled nonprovisional application.
Section 1.78(a)(2), however, limits the
definition of ‘‘divisional application’’ to
an application that claims only an
invention or inventions that were
subject to a requirement to comply with
the 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 and not elected
for examination and not examined in
any 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 * * *.’’). The Office
will revise the definition of divisional
application in MPEP § 201.06 in the
next revision of the MPEP. An
application that claims the benefit of a
prior-filed divisional application as
defined in § 1.78(a)(2), and claims the
same patentable invention as the priorfiled divisional application, would not
be a divisional application as defined by
§ 1.78(a)(2). Instead, such an application
would be a continuation application.
Section 1.78(a)(3) 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
and claims) only subject matter that was
disclosed in the prior-filed
nonprovisional application).
Section 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).
Section 1.78(b) addresses claims
under 35 U.S.C. 119(e) for the benefit of
a prior-filed provisional application.
Under 35 U.S.C. 119(e)(1), a provisional
application must 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 receive the
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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 U.S.P.Q.2d
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’’). Section
1.78(b), however, does not also state (as
did former § 1.78(a)(4)) that the
provisional application must 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,
because it is not necessary for the rules
of practice to restate provisions of a
statute.
Section 1.78(b)(1) 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, and that this
twelve-month period is subject to 35
U.S.C. 21(b) and § 1.7(a). 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. Section 1.78(b) otherwise contains
the provisions of former § 1.78(a)(4) and
(a)(5).
Sections 1.78(b)(2) through (b)(5)
contain the provisions of former
1.78(a)(4) and (a)(5). Section 1.78(c)
contains provisions relating to delayed
claims under 35 U.S.C. 119(e) for benefit
of prior-filed provisional applications.
Section 1.78(c) contains the provisions
of former § 1.78(a)(6).
Section 1.78(d) contains provisions
relating to claims under 35 U.S.C. 120,
121, or 365(c) for the benefit of a priorfiled nonprovisional or international
application.
Section 1.78(d)(1) provides conditions
under which an application may claim
the benefit under 35 U.S.C. 120, 121, or
365(c) and § 1.78 of a prior-filed
nonprovisional application or
international application designating
the United States of America. Section
1.78(d)(1) also provides that the Office
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will refuse to enter, or will delete if
present, any specific reference to a
prior-filed application that is not
permitted by § 1.78(d)(1). 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 benefit. Section 1.78(d) also
provides that the entry of or failure to
delete a specific reference to a priorfiled 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)(vi)
or waiver of a requirement of
§ 1.78(d)(1) would be only by an explicit
decision by an official who has been
delegated the authority to decide such a
petition or waiver. It 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).
These provisions of § 1.78(d)(1) were
included in the proposed changes to
§ 1.78(d)(3). See Changes to Practice for
Continuing Applications, Requests for
Continued Examination Practice, and
Applications Containing Patentably
Indistinct Claims, 71 FR at 54, 60, 1302
Off. Gaz. Pat. Office at 1323, 1328.
Section 1.78(d)(1)(i) provides for
continuation applications or
continuation-in-part applications that
do not claim the benefit of a divisional
application (either directly or
indirectly). Section 1.78(d)(1)(i) permits
such a continuation application or
continuation-in-part application of a
prior-filed nonprovisional application
or international application designating
the United States of America if: (1) The
application is a continuation
application as defined in § 1.78(a)(3) or
a continuation-in-part application as
defined in § 1.78(a)(4) that claims the
benefit under 35 U.S.C. 120, 121, or
365(c) of no more than two prior-filed
applications; and (2) any application
whose benefit is claimed under 35
U.S.C. 120, 121, or 365(c) in such
nonprovisional application has its
benefit claimed in no more than one
other nonprovisional application. This
does not include any nonprovisional
application that satisfies the conditions
set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
(d)(1)(vi).
Section 1.78(d)(1)(i) permits an
applicant to continue prosecution of an
application via two continuation
applications (in parallel or serially), a
continuation application and a
continuation-in-part application (in
parallel or serially), or two
continuation-in-part applications (in
parallel or serially). Applicants
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choosing to file applications (whether
continuing or non-continuing) in
parallel are reminded that § 1.75(b)(4)
provides that, if certain conditions are
met, the Office will treat each such
application as having the total number
of claims present in all of such
applications for purposes of
determining whether an examination
support document is required by
§ 1.75(b). See also § 1.78(f) concerning
additional provisions that are applicable
if there are multiple applications that
have the same claimed filing or priority
date, substantial overlapping disclosure,
a common inventor, and common
assignee.
If an application is identified as a
continuation-in-part application,
however, § 1.78(d)(3) provides that the
applicant must identify the claim or
claims in the continuation-in-part
application for which the subject matter
is disclosed in the manner provided by
35 U.S.C. 112, ¶ 1, in the prior-filed
application. See discussion of
§ 1.78(d)(3). Any claims in the
continuation-in-part application that are
not identified under § 1.78(d)(3) as
supported by the prior-filed application
will be subject to prior art based on the
actual filing date of the continuation-inpart application.
For a continuation-in-part application
that contains one or more claims for
which the subject matter is not
disclosed in the manner provided by 35
U.S.C. 112, ¶ 1, in the prior-filed
application, § 1.78(d)(1)(i) will permit
an applicant to continue prosecution of
the claims that are directed solely to
subject matter added in such
continuation-in-part application via two
continuation applications (or a
continuation application and a
continuation-in-part application, or two
continuation-in-part applications).
However, the ‘‘additional’’ continuation
or continuation-in-part applications
cannot claim the benefit of the priorfiled application relative to the first
continuation-in-part application. The
subject matter of 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 under 35
U.S.C. 120. See Studiengesellschaft
Kohle m.b.H. v. Shell Oil Co., 112 F.3d
1561, 1564–65, 42 U.S.P.Q.2d 1674,
1677–78 (Fed. Cir. 1997). In addition,
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
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Abbott Labs. v. Novopharm Ltd., 104
F.3d 1305, 1309, 41 U.S.P.Q.2d 1535,
1537 (Fed. Cir. 1997) (rejecting
patentee’s argument that it should not
be bound by the filing date of the priorfiled application because the later-filed
application never received any actual
benefit from the prior-filed application).
Thus, the Office will not require that
such ‘‘additional’’ continuation or
continuation-in-part applications
contain a showing that all of the claims
are directed solely to subject matter
added in the first continuation-in-part
application. Rather, § 1.78(d)(1)(i)
permits the ‘‘additional’’ continuation
or continuation-in-part application to
claim the benefit of the first
continuation-in-part application, but
does not permit the ‘‘additional’’
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 first continuation-in-part application
‘‘B’’ that claims the benefit of
application ‘‘A’’; (3) a second
continuation (or continuation-in-part)
application ‘‘C’’ that claims the benefit
of applications ‘‘B’’ and ‘‘A’’; and (4) an
additional continuation (or
continuation-in-part) application ‘‘D’’
that claims the benefit of applications
‘‘C’’ and ‘‘B’’. Under § 1.78(d)(1)(i),
application ‘‘D’’ may claim the benefit
of application ‘‘C’’ and continuation-inpart application ‘‘B’’, but may not claim
any benefit of application ‘‘A’’ (except
as permitted under § 1.78(d)(1)(vi)).
Applicants are permitted to file two
continuation or continuation-in-part
applications (§ 1.78(d)(1)) and one
request for continued examination
(§ 1.114) without any justification. The
provisions of § 1.78(d)(1) are
independent of the provisions of
§ 1.114. Therefore, the filing of a request
for continued examination does not
preclude an applicant from filing two
continuation or continuation-in-part
applications. In addition, an applicant
may not agree to forgo a continuation
application (or continuation-in-part
application) to obtain a second or third
request for continued examination, nor
can an applicant agree to forgo a request
for continued examination in exchange
for a third continuation or continuationin-part application. For example, an
applicant cannot file a second request
for continued examination without any
justification instead of filing one of the
two permitted continuation
applications; and an applicant cannot
file three continuation applications
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instead of filing a request for continued
examination. Of course, applicant may
seek by petition a third or subsequent
continuation or continuation-in-part
application or a second or subsequent
request for continued examination.
The Office, however, is implementing
an optional streamlined continuation
application procedure under which an
applicant may request to have a
continuation application filed on or
after November 1, 2007, placed on an
examiner’s amended (Regular
Amended) docket. The examiner will
normally pick up for action a
continuation application that has been
placed on the examiner’s amended
(Regular Amended) docket faster (e.g.,
within a few months from the date the
application is docketed) than an
application placed on the examiner’s
new continuing application (New
Special) docket. The following
conditions must be met for the
continuation application to be placed on
an examiner’s amended (Regular
Amended) docket rather than on the
new continuing application (New
Special) docket: (1) The application
must disclose and claim only an
invention or inventions that were
disclosed and claimed in the prior-filed
application; (2) the applicant must agree
that any election in response to a
requirement to comply with the
requirement of unity of invention under
PCT Rule 13 or a requirement for
restriction under 35 U.S.C. 121,
including an election of species
requirement, in the prior-filed
application carries over to the
continuation application; (3) the priorfiled application must be under a final
Office action (§ 1.113) or under appeal
at the time of filing the continuation
application; (4) the prior-filed
application must be expressly
abandoned upon filing of the
continuation application, with a letter of
express abandonment under § 1.138
being concurrently filed in the priorfiled application; and (5) applicant must
request that the continuation
application be placed on an examiner’s
amended (Regular Amended) docket.
This procedure is not applicable to
design applications because the
continued prosecution application
procedures of § 1.53(d) currently
provide design applicants with an
optional streamlined continuation
application procedure.
The optional streamlined
continuation application procedure,
however, does require that the applicant
provide a continuation application filed
under 35 U.S.C. 111(a) and § 1.53(b)
(and not a request for continued
examination under 35 U.S.C. 132(b) and
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§ 1.114 or a continued prosecution
application under § 1.53(d)). Thus, the
applicant must file a continuation
application that meets the conditions set
forth in 35 U.S.C. 111(a) and § 1.53(b) to
be accorded a filing date. The
continuation application must also be
complete under § 1.51(b) or completed
under § 1.53(f). The Office will not
docket an application for examination
until the application is complete
(§§ 1.51(b) and 1.53(f)) and in condition
for publication (§ 1.211). See § 1.53(h).
Thus, any delay in submitting the filing
fee and oath or declaration (or copy of
the oath or declaration from the priorfiled application under § 1.63(d)) will
delay the docketing of a continuation
application even if the applicant has
requested that the continuation
application be given streamlined
docketing.
This optional streamlined
continuation application procedure
concerns only the placement of the
continuation application on an
examiner’s amended (Regular
Amended) docket. The continuation
application is otherwise treated as a
new application for patent. For
example, (1) the application filing fees
including the basic filing fee, search and
examination fees, and any required
excess claims fees (and not the request
for continued examination fee set forth
in § 1.17(e)) are required; (2) the
continuation application will be
assigned a new application number; and
(3) the continuation application is
subject to the patent term provisions of
35 U.S.C. 154(b) and § 1.702 et seq. as
a new continuation application (and not
a request for continued examination in
the prior-filed application).
Section 1.78(d)(1)(ii) provides for
divisional applications of an application
for the claims to a non-elected invention
that has not been examined if the
application was subject to a requirement
to comply with the requirement of unity
of invention under PCT Rule 13 or a
requirement for restriction under 35
U.S.C. 121. The divisional application
need not be filed during the pendency
of the application subject to a
requirement for restriction, as long as
the copendency requirement of 35
U.S.C. 120 is met. This final rule also
permits applicant to file two
continuation applications of a divisional
application plus a request for continued
examination in the divisional
application family, without any
justification. See §§ 1.78(d)(1)(iii) and
1.114(f).
Specifically, § 1.78(d)(1)(ii) permits a
divisional application of a prior-filed
nonprovisional application or
international application designating
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the United States of America under the
following conditions. First, the
divisional application must be a
divisional application as defined in
§ 1.78(a)(2) that claims the benefit under
35 U.S.C. 120, 121, or 365(c) of a priorfiled application that was subject to a
requirement to comply with the
requirement of unity of invention under
PCT Rule 13 or a requirement for
restriction under 35 U.S.C. 121. Second,
the divisional application must contain
only claims directed to an invention or
inventions that were identified in the
requirement to comply with the
requirement of unity of invention or
requirement for restriction but were not
elected for examination and were not
examined in the prior-filed application
or in any other nonprovisional
application. The ‘‘not elected for
examination and were not examined in
any other nonprovisional application’’
requirement does not apply to any
continuation application that claims the
benefit under 35 U.S.C. 120, 121, or
365(c) of the divisional application and
satisfies the conditions set forth in
§ 1.78(d)(1)(iii) or (d)(1)(vi).
Section 1.78(d)(1)(ii)(A) permits an
applicant to obtain examination of
claims that were withdrawn from
consideration in the prior-filed
application due to a requirement to
comply with the requirement of unity of
invention under PCT Rule 13 or a
requirement for restriction under 35
U.S.C. 121. Thus, § 1.78(d)(1)(ii)(A)
permits a divisional application filed as
a result of a requirement to comply with
the requirement of unity of invention
under PCT Rule 13 or requirement for
restriction under 35 U.S.C. 121 in the
prior-filed application. Section
1.78(d)(1)(ii)(A), however, does not
permit a divisional application not filed
as a result of such a requirement in the
prior-filed application. Thus,
§ 1.78(d)(1)(ii)(A) permits so-called
‘‘involuntary’’ divisional applications
but does not permit so-called
‘‘voluntary’’ divisional applications.
Section 1.78(d)(1)(ii)(B) does not
permit the filing of a set of parallel
divisional applications containing
claims to the same invention. Applicant,
however, may serially prosecute up to
two continuation applications that
contain claims to the same invention as
is claimed in a prior-filed divisional
application if the continuation
application satisfies the conditions of
§ 1.78(d)(1)(iii).
As discussed previously, applicants
cannot rely upon a requirement for
restriction including an election of
species to file a divisional application in
situations where: (1) The applicant
traverses the requirement for restriction;
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(2) the requirement for restriction may
be conditional, such as a requirement
for election of species in an application
that contains a claim that is generic to
all of the claimed species (see MPEP
section 809); and (3) the claims to the
non-elected invention may be rejoined
at the request of the applicant (see
MPEP § 821.04 et seq.). See the
discussion of § 1.75(b)(5). This is
because when the requirement for
restriction is withdrawn in the priorfiled application, any divisional
application that has been filed as the
result of the restriction requirement of
the prior-filed application will not be
proper under §§ 1.78(a)(2) and
1.78(d)(1)(ii). Applicant is not permitted
to file a divisional application of a priorfiled application that is no longer
subject to a restriction requirement.
Under §§ 1.78(a)(2) and 1.78(d)(1)(ii),
the prior-filed application to which a
divisional application claims the benefit
must be subject to a requirement to
comply with the requirement of unity of
invention under PCT Rule 13 or a
requirement for restriction under 35
U.S.C. 121. Sections 1.78(a)(2) and
1.78(d)(1)(ii) also require a divisional
application to contain only claims
directed to a non-elected invention that
has not been examined.
For an application that contains a
generic claim in which a requirement
for an election of species has been
made, applicants should conclude
prosecution of the generic claim in the
initial application and its continuation
or continuation-in-part applications,
including exhaustion of any available
appeals, before even filing a divisional
application to a non-elected species. If
applicant no longer wants to pursue the
generic claim, applicant may file a
divisional application directed to a nonelected species. If applicant files a
divisional application directed to a nonelected species, applicant must: (1)
Cancel the claims to the non-elected
species and the generic claim in the
prior-filed application before a rejoinder
or reinstatement occurs; (2) not present
the non-elected claims and the generic
claim in any continuation or
continuation-in-part application of the
initial application; and (3) not present
the generic claim in the divisional
application or any continuation
application of the divisional
application.
Under the Office’s rejoinder practice,
an applicant may request rejoinder of
claims to a non-elected invention that
depend from or otherwise require all the
limitations of an allowable claim. See
MPEP § 821.04 et seq. Applicants may
retain claims to a non-elected invention
in an application for possible rejoinder
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in the event of the allowance of a claim
to the elected invention. If applicant
cancels all of the claims directed to a
non-elected invention before rejoinder
occurs and files a divisional application,
the restriction requirement will not be
withdrawn and the non-elected claims
that are now canceled will not be
rejoined. This will preserve applicant’s
rights under 35 U.S.C. 121 and
§ 1.78(d)(1)(ii). See MPEP § 821.04(b).
Section 1.78(d)(1)(iii) provides for
continuation applications that claim the
benefit of a divisional application
(either directly or indirectly). Section
1.78(d)(1)(iii) permits such a
continuation application of a prior-filed
nonprovisional application or
international application designating
the United States of America if: (1) The
application is a continuation
application as defined in § 1.78(a)(3)
that claims the benefit under 35 U.S.C.
120, 121, or 365(c) of a divisional
application that satisfies the conditions
set forth in § 1.78(d)(1)(ii); (2) the
application discloses and claims only an
invention or inventions that were
disclosed and claimed in the divisional
application; (3) the application claims
the benefit of only the divisional
application, any application to which
such divisional application claims
benefit under 35 U.S.C. 120, 121, or
365(c) in compliance with the
conditions set forth in § 1.78(d)(1)(ii),
and no more than one intervening priorfiled nonprovisional application (i.e.,
only one continuation application of the
divisional application filed between the
divisional application and the second
continuation application of the
divisional application); and (4) no more
than one other nonprovisional
application claims the benefit of the
divisional application. This does not
include any other divisional application
that satisfies the conditions set forth in
§ 1.78(d)(1)(ii) or any nonprovisional
application that claims the benefit of
such divisional application and satisfies
the conditions set forth in
§ 1.78(d)(1)(iii) or (d)(1)(vi). Section
1.78(d)(1)(iii) permits an applicant to
continue prosecution of a divisional
application via two continuation
applications (in parallel or serially). The
Office, however, will treat each
application prosecuted in parallel as
having the total number of claims
present in all of such applications for
purposes of determining whether an
examination support document is
required by § 1.75(b) provided that the
continuation application contains at
least one claim that is patentably
indistinct from at least one claim in the
divisional application.
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Section 1.78(d)(1)(iii) does not permit
a continuation-in-part of a divisional
application. Section 1.78(d)(1)(iii) is
designed to permit an applicant to
complete prosecution with respect to an
invention or inventions that were
disclosed and claimed in a divisional
application, and not to permit an
applicant to seek patent protection for a
new invention that merely bears some
relationship to an invention or
inventions that were disclosed and
claimed in a divisional application.
Section 1.78(d)(1)(i) provides a
mechanism for applicants to seek patent
protection for a new invention that is an
improvement of an invention or
inventions that were disclosed and
claimed in an initial or continuing
(including a divisional) application.
The provisions of §§ 1.78(d)(1)(i)
through (d)(1)(iii) are illustrated with
the following example: (1) There is an
initial application ‘‘A’’ that is subject to
a restriction requirement under 35
U.S.C. 121 and § 1.141 et seq.; (2) a
continuation application ‘‘B’’ of
application ‘‘A’’; (3) a further
continuation application ‘‘C’’ which
claims the benefit of continuation
application ‘‘B’’ and initial application
‘‘A’’; (4) a divisional application ‘‘D’’
(based upon the restriction requirement
under 35 U.S.C. 121 and § 1.141 et seq.
in application ‘‘A’’), which claims the
benefit of continuation application ‘‘C’’,
continuation application ‘‘B’’, and
initial application ‘‘A’’; (5) a
continuation application ‘‘E’’ of
divisional application ‘‘D’’, which
claims the benefit of divisional
application ‘‘D’’, continuation
application ‘‘C’’, continuation
application ‘‘B’’, and initial application
‘‘A’’; and (6) a further continuation
application ‘‘F’’ of continuation
application ‘‘E’’, which claims the
benefit of continuation application ‘‘E’’,
divisional application ‘‘D’’, continuation
application ‘‘C’’, continuation
application ‘‘B’’, and initial application
‘‘A’’.
Under § 1.78(d)(1)(i), application ‘‘C’’
is either a continuation application
under § 1.78(a)(3) or a continuation-inpart application under § 1.78(a)(4) that
claims the benefit of no more than two
prior-filed applications ‘‘B’’ and ‘‘A’’. In
addition, applications ‘‘B’’ and ‘‘A’’
whose benefit is claimed in application
‘‘C’’ have their benefit claimed in no
more than one other application (not
including divisional application ‘‘D’’ or
continuation applications ‘‘E’’ and ‘‘F’’
of the divisional application ‘‘D’’). That
is, the benefit of application ‘‘A’’ is
claimed in only one other application
‘‘B’’ (not including divisional
application ‘‘D’’ or continuation
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applications ‘‘E’’ and ‘‘F’’ of the
divisional application ‘‘D’’), and the
benefit of application ‘‘B’’ is claimed in
only one other application ‘‘C’’ (not
including divisional application ‘‘D’’ or
continuation applications ‘‘E’’ and ‘‘F’’
of the divisional application ‘‘D’’).
Under § 1.78(d)(1)(ii), nonprovisional
application ‘‘D’’ is a divisional
application under § 1.78(a)(2) since it
claims the benefit of prior-filed
application ‘‘A’’ that was subject to a
requirement to comply with the
requirement of unity of invention under
PCT Rule 13 or a requirement for
restriction under 35 U.S.C. 121.
Divisional application ‘‘D’’ may contain
only claims directed to an invention
identified in the requirement to comply
with the requirement of unity of
invention or requirement for restriction
but were not elected for examination in
prior-filed application ‘‘A’’ or in any
other nonprovisional application
(applications ‘‘B and ‘‘C’’), except for a
nonprovisional application
(applications ‘‘E’’ and ‘‘F’’) that claims
the benefit of divisional application ‘‘D’’
and satisfies the conditions of
§ 1.78(d)(1)(iii). That is, divisional
application ‘‘D’’ may contain only
claims directed to an invention or
inventions that were identified in such
requirement to comply with the
requirement of unity of invention or
requirement for restriction but were not
elected for examination in any other
application except for its continuation
applications ‘‘E’’ and ‘‘F’’. Finally, the
divisional application ‘‘D’’ claims the
benefit of the prior-filed applications
(applications ‘‘A’’, ‘‘B’’, and ‘‘C’’).
Under § 1.78(d)(1)(iii), nonprovisional
application ‘‘F’’ is a continuation
application under § 1.78(a)(3) that
claims the benefit of divisional
application ‘‘D’’. Application ‘‘D’’ is a
divisional application that satisfies the
conditions set forth in § 1.78(d)(1)(ii).
The nonprovisional application ‘‘F’’
may disclose and claim only an
invention that was disclosed and
claimed in divisional application ‘‘D’’.
The nonprovisional application ‘‘F’’
claims the benefit of only divisional
application ‘‘D’’, the applications to
which divisional application ‘‘D’’ claims
benefit in compliance with the
conditions of § 1.78(d)(1)(ii)
(applications ‘‘A’’, ‘‘B’’, and ‘‘C’’), and
no more than one intervening prior-filed
nonprovisional application (application
‘‘E’’). Divisional application ‘‘D’’ whose
benefit is claimed in nonprovisional
application ‘‘E’’ and in nonprovisional
application ‘‘F’’ has its benefit claimed
in no more than one other
nonprovisional application. That is,
with respect to application ‘‘F’’,
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divisional application ‘‘D’’ has its
benefit claimed in no more than one
other nonprovisional application
(application ‘‘E’’), and with respect to
application ‘‘E’’, divisional application
‘‘D’’ has its benefit claimed in no more
than one other nonprovisional
application (application ‘‘F’’).
Section 1.78(d)(1)(iv) pertains to the
situation in which an applicant files a
bypass continuation (or continuation-inpart) application rather than paying the
basic national fee (entering the national
stage) in an international application in
which a Demand for international
preliminary examination (PCT Article
31) has not been filed, and the
international application does not claim
the benefit of any other nonprovisional
application or international application
designating the United States of
America. Section 1.78(d)(1)(iv) provides
that in this situation the applicant may
file ‘‘one more’’ continuation
application (or continuation-in-part
application) without there being a
requirement for a petition and showing
under § 1.78(d)(1)(vi). A ‘‘bypass’’
continuation (or continuation-in-part)
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 designating
the United States of America that did
not enter the national stage under 35
U.S.C. 371. See H.R. Rep. No. 107–685,
at 222 (2002).
Specifically, § 1.78(d)(1)(iv) provides
that a continuation application or
continuation-in-part application is
permitted if the following conditions are
met: (1) The application claims benefit
under 35 U.S.C. 120 or 365(c) of a priorfiled international application
designating the United States of
America, and a Demand has not been
filed and the basic national fee
(§ 1.492(a)) has not been paid in the
prior-filed international application and
the prior-filed international application
does not claim the benefit of any other
nonprovisional application or
international application designating
the United States of America; (2) the
application is a continuation
application as defined in § 1.78(a)(3) or
a continuation-in-part application as
defined in § 1.78(a)(4) that claims the
benefit under 35 U.S.C. 120, 121, or
365(c) of no more than three prior-filed
applications; and (3) any application
whose benefit is claimed under 35
U.S.C. 120, 121, or 365(c) in such
nonprovisional application has its
benefit claimed in no more than two
other nonprovisional applications. This
does not include any nonprovisional
application that satisfies the conditions
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set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
(d)(1)(vi).
Section 1.78(d)(1)(v) pertains to the
situation in which an applicant files a
continuation (or continuation-in-part)
application to correct informalities
rather than completing an application
for examination under § 1.53 (i.e., the
prior-filed application became
abandoned due to the failure to timely
reply to an Office notice issued under
§ 1.53(f)). The prior-filed nonprovisional
application, however, must be entitled
to a filing date and have paid therein the
basic filing fee within the pendency of
the application. See § 1.78(d)(2). Section
1.78(d)(1)(v) provides that in this
situation the applicant may file ‘‘one
more’’ continuation application (or
continuation-in-part application)
without there being a requirement for a
petition and showing under
§ 1.78(d)(1)(vi). Specifically,
§ 1.78(d)(1)(v) provides that a
continuation application or
continuation-in-part application is
permitted if the following conditions are
met: (1) The application claims benefit
under 35 U.S.C. 120 or 365(c) of a priorfiled nonprovisional application filed
under 35 U.S.C. 111(a), and the priorfiled nonprovisional application became
abandoned due to the failure to timely
reply to an Office notice issued under
§ 1.53(f) and does not claim the benefit
of any other nonprovisional application
or international application designating
the United States of America; (2) the
application is a continuation
application as defined in § 1.78(a)(3) or
a continuation-in-part application as
defined in § 1.78(a)(4) that claims the
benefit under 35 U.S.C. 120, 121, or
365(c) of no more than three prior-filed
applications; and (3) any application
whose benefit is claimed under 35
U.S.C. 120, 121, or 365(c) in such
nonprovisional application has its
benefit claimed in no more than two
other nonprovisional applications. This
does not include any nonprovisional
application that satisfies the conditions
set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
(d)(1)(vi).
Section 1.78(d)(1)(vi) 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, and does not satisfy the
conditions set forth in § 1.78(d)(1)(i),
(ii), (iii), (iv) or (v), may claim the
benefit under 35 U.S.C. 120, 121, or
365(c) of such prior-filed application.
Under § 1.78(d)(1)(vi), a petition must
be filed in such nonprovisional
application that is accompanied by the
fee set forth in § 1.17(f) and a showing
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that the amendment, argument, or
evidence sought to be entered 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. Section 1.78(d)(1)(vi) 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 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 international
application.
With respect to the application of the
changes to § 1.78 in this final rule to a
reissue application, benefit claims
under 35 U.S.C. 120, 121, or 365(c) in
the application for patent that is being
reissued will not be taken into account
in determining whether a continuing
reissue application claiming the benefit
under 35 U.S.C. 120, 121, or 365(c) of
the reissue application satisfies one or
more of the conditions set forth in
§§ 1.78(d)(1)(i) through 1.78(d)(1)(vi).
However, an applicant may not use the
reissue process to add to the original
patent benefit claims under 35 U.S.C.
120, 121, or 365(c) that do not satisfy
one or more of the conditions set forth
in §§ 1.78(d)(1)(i) through 1.78(d)(1)(vi),
if the application for the original patent
was filed on or after November 1, 2007.
Section 1.78(d)(2) provides that each
prior-filed application must name as an
inventor at least one inventor named in
the later-filed application. In addition,
each prior-filed application must either
be: (1) An international application
entitled to a filing date in accordance
with PCT Article 11 and designating the
United States of America; or (2) 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)
for which the basic filing fee set forth in
§ 1.16 has been paid within the
pendency of the application (provisions
from former § 1.78(a)(1)).
Section 1.78(d)(3) is amended to
include the parenthetical ‘‘(i.e., whether
the later-filed application is a
continuation, divisional, or
continuation-in-part of the prior-filed
nonprovisional application or
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international application)’’ to clarify in
the rules of practice what is meant by
the requirement that an applicant
identify the relationship of the
applications. See MPEP § 201.11.
Section 1.78(d)(3) also provides that if
an application is identified as a
continuation-in-part application, the
applicant must identify the claim or
claims in the continuation-in-part
application for which the subject matter
is 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 for
which the subject matter 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 actual
filing date of the continuation-in-part
application, and will be subject to prior
art based on the actual filing date of the
continuation-in-part application. As
discussed previously, to avoid any
unnecessary delay in the prosecution of
the application, applicant should
provide the identification before the
examiner begins to conduct a prior art
search. If the failure to identify the
claims for which the subject matter is
disclosed in the manner provided by 35
U.S.C. 112, ¶ 1, in the prior-filed
application causes the examiner to
include a new prior art rejection in a
second or subsequent Office action, the
inclusion of the new prior art rejection
will not preclude the Office action from
being made final.
This final rule eliminates from
§ 1.78(d) the provision that the priorfiled 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 a
later-filed application to receive the
benefit of the filing date of a prior-filed
application, 35 U.S.C. 120 requires that
the prior-filed application must 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.
The Office, however, does not make a
determination as to whether a priorfiled application discloses the invention
claimed in a claim of the later-filed
application in the manner provided by
35 U.S.C. 112, ¶ 1, unless that
determination is necessary to determine
the patentability of such claim. 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
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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.’’).
Section 1.78(d)(4) and (d)(5) contain
the provisions of former § 1.78(a)(2).
Section 1.78(d)(6) provides that crossreferences to applications for which a
benefit is not claimed must be located
in a paragraph separate from the
paragraph containing the references to
applications for which a benefit is
claimed. Including cross-references to
applications for which a benefit is not
claimed in the same paragraph as the
paragraph containing the references to
applications for which a benefit is
claimed may lead to the Office
inadvertently scheduling the
application for publication under 35
U.S.C. 122(b) and § 1.211 et seq. on the
basis of the cross-referenced
applications having the earliest filing
date.
Section 1.78(e) contains provisions
relating to delayed claims under 35
U.S.C. 120, 121, or 365(c) for benefit of
prior-filed nonprovisional or
international applications. Section
1.78(e) contains the provisions of former
§ 1.78(a)(3).
Section 1.78(f) contains provisions
relating to applications and patents
naming at least one inventor in
common.
Section 1.78(f)(1)(i) provides that the
applicant in a nonprovisional
application that has not been allowed
(§ 1.311) must identify by application
number (i.e., series code and serial
number) and patent number (if
applicable) each other pending or
patented nonprovisional application, in
a separate paper, for which the
following conditions are met: (1) The
application has a filing date that is the
same as or within two months of the
filing date of the other pending or
patented application, taking into
account any filing date for which a
benefit is sought under title 35, United
States Code; (2) the application names at
least one inventor in common with the
other pending or patented application;
and (3) the application is owned by the
same person, or subject to an obligation
of assignment to the same person, as the
other pending or patented application.
This identification requirement would
also apply to each identified application
because the identifying application has
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a filing date that is the same as or within
two months of the filing date of the
identified application and vice versa.
The phrase ‘‘taking into account any
filing date for which a benefit is sought
under title 35, United States Code’’ in
§ 1.78(f)(1)(i)(A) means any filing date
for which a benefit (or priority) is
sought or claimed under 35 U.S.C. 111,
119, 120, 121, 363, or 365. Cf. 35 U.S.C.
122(b)(1)(A) (requires publication of
patent applications ‘‘promptly after the
expiration of a period of 18 months from
the earliest filing date for which a
benefit is sought under this title’’
(emphasis added), meaning eighteen
months from the earliest filing date for
which a benefit or priority is sought or
claimed under 35 U.S.C. 111, 119, 120,
121, 363, or 365). Thus, if an application
claims the benefit of or priority to other
applications, ‘‘the filing date of [the
application], taking into account any
filing date for which a benefit is sought
under title 35, United States Code,’’ is
the actual filing date of the application
as well as the filing date of each
application to which the application
claims a benefit or priority. For
example, if an application has a filing
date of December 1, 2006, and claims
the benefit of a nonprovisional
application that was filed on June 1,
2004, and claims the priority of a
foreign application that was filed on
June 1, 2003, for purposes of
§§ 1.78(f)(1) and (f)(2) the filing date of
the application ‘‘taking into account any
filing date for which a benefit is sought
under title 35, United States Code,’’ is
December 1, 2006, June 1, 2004, and
June 1, 2003.
The phrase ‘‘owned by the same
person, or subject to an obligation of
assignment to the same person’’ in
§ 1.78(f)(1)(i)(C) (and in § 1.78(f)(2)(i)(C)
and 1.78(f)(3)) has the same meaning as
it does in 35 U.S.C. 103(c). See MPEP
§ 706.02(l)(2) for a discussion of the
definition of this phrase as it is used in
35 U.S.C. 103(c).
The phrase ‘‘has not been allowed’’ in
§ 1.78(f)(1)(i) (and in § 1.78(f)(2)(ii) and
(iii)) means a notice of allowance under
§ 1.311 has not been mailed in the
application, or a notice of allowance
under § 1.311 has been mailed in the
application but the application has been
withdrawn from issue. Thus, the
identification of such one or more other
pending or patented nonprovisional
applications under § 1.78(f)(1)(i) is not
required in an application in which a
notice of allowance has been mailed,
unless the application is withdrawn
from issue.
Section 1.78(f)(1)(ii) also provides that
one or more other nonprovisional
applications under § 1.78(f)(1)(i) must
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be identified within the later of: (1) Four
months from the actual filing date of a
nonprovisional application filed under
35 U.S.C. 111(a); (2) four months from
the date on which the national stage
commenced under 35 U.S.C. 371(b) or
(f) in a nonprovisional application
entering the national stage from an
international application under 35
U.S.C. 371; or (3) two months from the
mailing date of the initial filing receipt
in the other nonprovisional application
that is required to be identified under
§ 1.78(f)(1)(i).
Section 1.78(f)(2)(i) provides that a
rebuttable presumption shall exist that a
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 if:
(1) The application has a filing date that
is the same as the filing date of another
pending application or patent, taking
into account any filing date for which a
benefit is sought; (2) the application
names at least one inventor in common
with the other pending application or
patent; (3) the application is owned by
the same person, or subject to an
obligation of assignment to the same
person, as the other pending application
or patent; and (4) the application
contains substantially overlapping
disclosure as the other pending
application or patent. Section
1.78(f)(2)(i) further provides that
substantial overlapping disclosure exists
if the other pending or patented
nonprovisional application has written
description support under 35 U.S.C.
112, ¶ 1, for at least one claim in the
nonprovisional application.
If these conditions exist, the applicant
must under § 1.78(f)(2)(ii) in the
nonprovisional application, unless the
nonprovisional application has been
allowed (§ 1.311), within the time
period specified in § 1.78(f)(2)(iii)
either: (1) Rebut this presumption by
explaining 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,
§ 1.78(f)(2)(ii)(B) provides that where
one or more other pending
nonprovisional applications containing
patentably indistinct claims have been
identified, the applicant must explain
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. Unless applicant
presents good and sufficient reasons for
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such multiple applications, the Office
may require elimination of the
patentably indistinct claims from all but
one of the applications. See § 1.78(f)(3).
As discussed previously, for
applications having a continuity
relationship, the prior application must
be pending at the time the continuing
application is filed. See 35 U.S.C. 120
(requires that a continuing application
be filed before the patenting or
abandonment of or termination of
proceedings on the prior application).
An applicant is not required to provide
an explanation under § 1.78(f)(2)(ii)(B)
for a continuation application or
continuation-in-part application of a
prior-filed application that has been
allowed, provided that the prior-filed
application is not withdrawn from
issue. Furthermore, where the other
nonprovisional application containing
patentably indistinct claims is allowed,
the Office will not count the claims of
the allowed application in determining
whether the total number of claims
present in all of the copending
nonprovisional applications containing
patentably indistinct claims exceeds the
five independent claim and twenty-five
total claim threshold under § 1.75(b)(4).
See the discussion of § 1.75(b)(4). A
terminal disclaimer in accordance with
§ 1.321(c) will, however, be required in
each nonprovisional application
containing patentably indistinct claims
to overcome any obviousness-type
double patenting rejection.
Under § 1.78(f)(2)(iii), the actions
specified in § 1.78(f)(2)(ii) (if required)
must be taken within the later of: (1)
Four months from the actual filing date
of a nonprovisional application filed
under 35 U.S.C. 111(a); (2) four months
from the date on which the national
stage commenced under 35 U.S.C.
371(b) or (f) in a nonprovisional
application entering the national stage
from an international application under
35 U.S.C. 371; (3) the date on which a
claim that is not patentably distinct
from a claim in one or more other
pending or patented applications is
presented; or (4) two months from the
mailing date of the initial filing receipt
in the one or more other pending or
patented applications.
The requirement under § 1.78(f)(2)(ii)
for taking one of the actions specified in
§ 1.78(f)(2)(ii) does not apply to the
applicant in the application in which a
notice of allowance has been mailed,
unless the application is withdrawn
from issue (§ 1.313). For example, if an
applicant filed a continuation
application after a notice of allowance
has been mailed in the prior-filed
application, the applicant must either
rebut the presumption under
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§ 1.78(f)(2)(i) or submit a terminal
disclaimer in accordance with § 1.321(c)
within the time period set forth in
§ 1.78(f)(2)(iii) in the continuation
application. Under § 1.78(f)(2)(ii), the
applicant, however, is not required to
rebut the presumption or submit a
terminal disclaimer in the allowed
prior-filed application. Nevertheless, a
terminal disclaimer in accordance with
§ 1.321(c) will be required in each
nonprovisional application containing
patentably indistinct claims to
overcome any obviousness-type double
patenting rejection.
As discussed previously, when an
applicant files multiple applications
that are substantially the same, the
applicant is responsible for assisting 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 (either statutory or
obviousness-type double patenting), it is
because the applicant has not met his or
her responsibility to resolve the double
patenting situation. 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.
Section 1.78(f)(3) applies when there
are two or more commonly owned
(owned by the same person, or are
subject to an obligation of assignment to
the same person) nonprovisional
applications containing patentably
indistinct claims. Under § 1.78(f)(3),
unless applicant presents good and
sufficient reasons for such multiple
applications, the Office may require
elimination of the patentably indistinct
claims from all but one of the
applications. Section 1.78(f)(3) contains
provisions similar to former § 1.78(b).
The Office expects to apply this
provision primarily in situations
covered by § 1.78(f)(2)(ii), under which
applicants must explain 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 with such
common ownership or assignment
obligation and patentably indistinct
claims, regardless of the relative filing
dates of the applications. Section
1.78(f)(3) does not apply to the claims
in a patent.
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The following are two examples
where an applicant may have a good
and sufficient reason under § 1.78(f)(3)
for there being two or more pending
nonprovisional applications that
contain patentably indistinct claims: (1)
An applicant filed a continuation
application after the mailing of a notice
of allowance in the prior-filed
application, but the allowance of the
prior-filed application was subsequently
withdrawn by the Office; or (2) an
interference was declared in an
application that contains both claims
corresponding to the count and claims
not corresponding to the count, the
BPAI suggests that the claims not
corresponding to the count be canceled
from the application in interference and
pursued in a separate application, and
the applicant filed a continuation
application to present the claims not
corresponding to the count. These
examples are merely illustrative and not
exhaustive.
Section 1.78(g) addresses applications
or patents under reexamination that
name different inventors and contain
patentably indistinct claims. Section
1.78(g) contains the provisions of former
§ 1.78(c), except that ‘‘conflicting
claims’’ is changed to ‘‘patentably
indistinct claims’’ for clarity and for
consistency with the language of
§ 1.78(f).
Section 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.
Section 1.78(h) provides that if an
application discloses or is amended to
disclose the names of parties to a joint
research agreement under 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 under a joint research
agreement 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,
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70 FR 1818, 1818 (Jan. 11, 2005), 1291
Off. Gaz. Pat. Office 58, 58–59 (Feb. 8,
2005) (final rule). Section 1.78(h) also
provides that if the application is
amended to disclose the names of
parties to a joint research agreement, the
applicant must identify the one or more
other nonprovisional applications as
required by § 1.78(f)(1) with the
amendment unless the applications
have been identified within the fourmonth period specified in § 1.78(f)(1).
Section 1.78(i) provides that the time
periods set forth in § 1.78 are not
extendable.
The changes to § 1.78 (except
§§ 1.78(a) and 1.78(d)(1)) are applicable
to any nonprovisional application
pending on or after November 1, 2007.
The changes to §§ 1.78(a) and 1.78(d)(1)
are applicable to any application filed
on or after November 1, 2007, or any
application entering the national stage
after compliance with 35 U.S.C. 371 on
or after November 1, 2007. Except as
otherwise indicated in this final rule,
any application filed under 35 U.S.C.
111(a) on or after November 1, 2007, or
any application entering the national
stage after compliance with 35 U.S.C.
371 on or after November 1, 2007,
seeking to claim the benefit under 35
U.S.C. 120, 121, or 365(c) and § 1.78 of
a prior-filed nonprovisional application
or international application must either:
(1) Meet the requirements specified in
one of §§ 1.78(d)(1)(i) through (d)(1)(v);
or (2) include a grantable petition under
§ 1.78(d)(1)(vi).
With respect to applications that
claim the benefit under 35 U.S.C. 120,
121, or 365(c) only of nonprovisional
applications or international
applications filed before August 21,
2007: An application is not required to
meet the requirements set forth in
§ 1.78(d)(1) if: (1) The application
claims the benefit under 35 U.S.C. 120,
121, or 365(c) only of prior-filed
nonprovisional applications filed before
August 21, 2007 or prior-filed
applications entering the national stage
after compliance with 35 U.S.C. 371
before August 21, 2007; and (2) there is
no other application filed on or after the
publication date of this final rule in the
Federal Register that also claims the
benefit under 35 U.S.C. 120, 121, or
365(c) of such prior-filed
nonprovisional applications or
international applications. This
provision will provide applicants with
‘‘one more’’ continuation application or
continuation-in-part application of a
second or subsequent continuing
application (continuation application or
continuation-in-part application) that
was filed prior to the publication date
of this final rule in the Federal Register
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without a petition under § 1.78(d)(1)(vi).
Thus, an applicant may file a single
continuation application or
continuation-in-part application on or
after November 1, 2007, without
meeting the requirements specified in
§ 1.78(d)(1)(i) through (d)(1)(v), or
including a petition under
§ 1.78(d)(1)(vi), even if the prior-filed
application was a second or subsequent
continuation or continuation-in-part
application. It should be noted that the
purpose of this provision is to ensure
that an applicant may file ‘‘one more’’
continuation application or
continuation-in-part application of an
application that was filed prior to the
publication date of this final rule in the
Federal Register without a petition and
showing, and not to provide an ‘‘extra’’
continuation application or
continuation-in-part application for
applications filed prior to the
publication date of this final rule in the
Federal Register. If an application filed
before the publication date of this final
rule in the Federal Register is not a
continuing application or is only the
first continuing application, this
provision will not entitle an applicant to
file a third or subsequent continuation
or continuation-in-part application
without a petition under § 1.78(d)(1)(vi)
showing that the amendment, argument,
or evidence sought to be entered could
not have been submitted during the
prosecution of the prior-filed
application.
Section 1.104 (nature of examination):
The Office proposed a number of
changes to § 1.104 to implement the
‘‘representative claims’’ examination
approach. See Changes to Practice for
the Examination of Claims in Patent
Applications, 71 FR at 64, 68, 1302 Off.
Gaz. Pat. Office at 1131, 1332. The
Office is not proceeding with the
changes to § 1.104 to implement the
‘‘representative claims’’ examination
approach, but is revising § 1.104 for
consistency with current examination
practices.
Section 1.104(a)(1) is amended to add
the phrase ‘‘and other requirements’’ to
the phrase ‘‘the examination shall be
complete with respect both to
compliance of the application or patent
under reexamination with the
applicable statutes and rules’’ to address
situations in which the requirement is
based upon Office practice as set forth
in the MPEP or in the case law. For
example, the phrase ‘‘other
requirements’’ would address the
situation in which a claim did not
comply with the requirement in MPEP
§ 608.01(m) that each claim be the object
of a single sentence starting with ‘‘I (or
we) claim,’’ ‘‘The invention claimed is,’’
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or the equivalent. See Fressola v.
Manbeck, 36 U.S.P.Q.2d 1211, 1212
(D.D.C. 1995). In addition, in the event
that there is a requirement for restriction
including election of species, or both,
the provision in § 1.104(a)(1) for a
‘‘thorough study [and] investigation of
the available prior art relating to the
subject matter of the claimed invention’’
will continue to apply only with respect
to the invention and species elected for
examination on the merits. This
provision of § 1.104 does not apply with
respect to an invention or species that
has been withdrawn from consideration
as a result of a requirement for
restriction, including an election of
species.
Section 1.104(b) is also amended to
delete the sentence ‘‘[h]owever, matters
of form need not be raised by the
examiner until a claim is found
allowable.’’ The Office would prefer that
all matters of form be resolved at the
earliest time during the patent
examination process. Nevertheless, an
Office action would not be considered
improper simply because the Office
action did not raise every applicable
issue of form present in the application.
Section 1.105 (requirements for
information): Section 1.105(a)(1) is
amended to provide that an applicant
may be required to set forth where (by
page and line or paragraph number) in
the specification of the application, or
any application the benefit of whose
filing date is sought under title 35,
United States Code, there is written
description support for the invention as
defined in the claims (whether in
independent or dependent form), and of
the manner and process of making and
using it, in such full, clear, concise, and
exact terms as to enable any person
skilled in the art to which it pertains, or
with which it is most nearly connected,
to make and use the invention, under 35
U.S.C. 112, ¶ 1. Therefore, in situations
in which it is not readily apparent
where the specification of the
application, or an application for which
a benefit is claimed, provides written
description support and enablement
under 35 U.S.C. 112, ¶ 1, for a claim or
a limitation of a claim, the examiner
may require the applicant to provide
such information. The Office considers
this authority to be inherent under the
patent statute and existing rules
(including § 1.105), but is revising
§ 1.105 to make the authority explicit.
Section 1.110 (inventorship and date
of invention of the subject matter of
individual claims): Section 1.110 is
amended to refer to § 1.78, rather than
a specific paragraph (paragraph (c)) of
§ 1.78. The first sentence of § 1.110 is
also amended to relocate the phrase
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‘‘when necessary for purposes of an
Office proceeding’’ to the end of the
sentence for clarity.
Section 1.114 (request for continued
examination): Under § 1.114, an
applicant is permitted to file a single
request for continued examination
without a petition and showing in a
single application family. See
§ 1.114(f)(1). An application family
includes the initial application and its
continuation or continuation-in-part
applications. An applicant is also
permitted to file a single request for
continued examination without a
petition and showing in a divisional
application family. See §§ 1.114(f)(2)
and (f)(3). A divisional application
family includes the divisional
application and its continuation
applications. An applicant may file a
second or subsequent request for
continued examination if the applicant
files a petition and a showing that the
amendment, argument, or evidence
sought to be entered could not have
been submitted earlier. See § 1.114(g).
Section 1.114(a) is amended to make
clear that an applicant may not file an
unrestricted number of requests for
continued examination, that a request
for continued examination must include
a petition under § 1.114(g) unless the
conditions set forth in § 1.114(f)(1),
(f)(2), or (f)(3) are satisfied, and that a
request for continued examination must
be identified as a request for continued
examination. Section 1.114(a) otherwise
contains the provisions of former
§ 1.114(a).
Section 1.114(d) is revised to
eliminate the sentence ‘‘[i]f an applicant
timely files a submission and fee set
forth in § 1.17(e), the Office will
withdraw the finality of any Office
action and the submission will be
entered and considered.’’ This change is
to avoid misleading applicants into
believing that the Office will pro forma
withdraw the finality of any Office
action and the submission will be pro
forma entered and considered upon
timely filing of a submission and fee set
forth in § 1.17(e). Under revised § 1.114,
a second or subsequent request for
continued examination must also
include a petition accompanied by the
fee set forth in § 1.17(f) except under the
conditions set forth in § 1.114(f).
Section 1.114(f) provides the
conditions under which an applicant
may file a request for continued
examination under § 1.114 without a
petition under § 1.114(g).
Section 1.114(f)(1) permits an
applicant to file a single request for
continued examination in any one (but
only one) of an initial application or its
continuation applications or
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continuation-in-part applications.
Section 1.114(f)(1) provides that an
applicant may file a request for
continued examination under § 1.114
without a petition under § 1.114(g) if a
request for continued examination has
not been previously been filed in any of:
(1) The application; (2) any application
whose benefit is claimed in the
application under 35 U.S.C. 120, 121, or
365(c); and (3) any application that
claims the benefit under 35 U.S.C. 120,
121, or 365(c) of the application, not
including any nonprovisional
application that satisfies the conditions
set forth in § 1.78(d)(1)(ii), 1.78(d)(1)(iii)
or 1.78(d)(1)(vi). For example, if
applicant filed one request for
continued examination in an initial
application, applicant is precluded from
filing a second request for continued
examination in the initial application
and in any continuation applications or
continuation-in-part applications that
claim the benefit of the initial
application (not including any
nonprovisional application that satisfies
the conditions set forth in
§ 1.78(d)(1)(ii), 1.78(d)(1)(iii) or
1.78(d)(1)(vi)), without a petition under
§ 1.114(g).
Section 1.114(f)(2) permits an
applicant to file a single request for
continued examination under § 1.114 in
a divisional application meeting the
conditions set forth in § 1.78(d)(1)(ii)
provided that no request for continued
examination has been filed in any
continuation application of the
divisional application. Section
1.114(f)(2) provides that an applicant
may file a request for continued
examination under § 1.114 in a
divisional application without a petition
under § 1.114(g) if a request for
continued examination has not
previously been filed in any of: (1) The
divisional application; and (2) any
application that claims the benefit
under 35 U.S.C. 120, 121, or 365(c) of
that divisional application, not
including any nonprovisional
application that satisfies the conditions
set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
(d)(1)(vi).
Section 1.114(f)(3) permits an
applicant to file a single request for
continued examination in a
continuation application of a divisional
application meeting the conditions set
forth in § 1.78(d)(1)(ii) provided that no
request for continued examination has
been filed in the divisional application
or any other continuation application of
the divisional application. Section
1.114(f)(3) provides that an applicant
may file a request for continued
examination under § 1.114 in a
continuation application of a divisional
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application without a petition under
§ 1.114(g) if a request for continued
examination has not previously been
filed in any of: (1) The continuation
application; (2) the divisional
application; and (3) any other
application that claims the benefit
under 35 U.S.C. 120, 121, or 365(c) of
that divisional application, not
including any nonprovisional
application that satisfies the conditions
set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
(d)(1)(vi).
The provisions of § 1.114(f) are
illustrated with the following example
(the example used to illustrate the
provisions of §§ 1.78(d)(1)(i) through
(d)(1)(iii)): (1) There is an initial
application ‘‘A’’ that is subject to a
restriction requirement under 35 U.S.C.
121 and § 1.141 et seq.; (2) a
continuation application ‘‘B’’ of
application ‘‘A’’; (3) a further
continuation application ‘‘C’’ which
claims the benefit of continuation
application ‘‘B’’ and initial application
‘‘A’’; (4) a divisional application ‘‘D’’
(based upon the restriction requirement
under 35 U.S.C. 121 and § 1.141 et seq.
in application ‘‘A’’), which claims the
benefit of continuation application ‘‘C’’,
continuation application ‘‘B’’, and
initial application ‘‘A’’; (5) a
continuation application ‘‘E’’ of
divisional application ‘‘D’’, which
claims the benefit of divisional
application ‘‘D’’, continuation
application ‘‘C’’, continuation
application ‘‘B’’, and initial application
‘‘A’’; and (6) a further continuation
application ‘‘F’’ of continuation
application ‘‘E’’, which claims the
benefit of continuation application ‘‘E’’,
divisional application ‘‘D’’, continuation
application ‘‘C’’, continuation
application ‘‘B’’, and initial application
‘‘A’’.
Section 1.114(f)(1) permits the filing
of a single request for continued
examination without a petition under
§ 1.114(g) in any one of applications
‘‘A’’, ‘‘B’’, or ‘‘C’’. Specifically, a request
for continued examination may be filed
in application ‘‘A’’, if a request for
continued examination has not
previously been filed in any of: (1)
application ‘‘A’’; (2) any application
(none) whose benefit is claimed in
application ‘‘A’’; and (3) any application
(applications ‘‘B’’ and ‘‘C’’) that claims
the benefit of application ‘‘A’’, not
including divisional application ‘‘D’’
and its continuation applications ‘‘E’’
and ‘‘F’’. In addition, a request for
continued examination may be filed in
application ‘‘B’’, if a request for
continued examination has not
previously been filed in any of: (1)
Application ‘‘B’’; (2) any application
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(application ‘‘A’’) whose benefit is
claimed in application ‘‘B’’; and (3) any
application (application ‘‘C’’) that
claims the benefit of application ‘‘B’’,
not including divisional application
‘‘D’’ and its continuation applications
‘‘E’’ and ‘‘F’’. Finally, a request for
continued examination may be filed in
application ‘‘C’’, if a request for
continued examination has not
previously been filed in any of: (1)
Application ‘‘C’’; (2) any application
(applications ‘‘A’’ and ‘‘B’’) whose
benefit is claimed in application ‘‘C’’;
and (3) any application (none) that
claims the benefit of application ‘‘C’’,
not including divisional application
‘‘D’’ and its continuation applications
‘‘E’’ and ‘‘F’’.
Section 1.114(f)(2) permits the filing
of a single request for continued
examination without a petition under
§ 1.114(g) in application ‘‘D’’, if a
request for continued examination has
not previously been filed in application
‘‘E’’ or application ‘‘F’’. Specifically, a
request for continued examination may
be filed in application ‘‘D’’, if a request
for continued examination has not
previously been filed in any of: (1)
Divisional application ‘‘D’’; and (2) any
application (applications ‘‘E’’ and ‘‘F’’)
that claims the benefit of divisional
application ‘‘D’’.
Section 1.114(f)(3) permits the filing
of a single request for continued
examination without a petition under
§ 1.114(g) in any one of applications ‘‘E’’
or ‘‘F’’, if a request for continued
examination has not previously been
filed in application ‘‘D’’. Specifically, a
request for continued examination may
be filed in continuation application ‘‘E’’,
if a request for continued examination
has not previously been filed in any of:
(1) Continuation application ‘‘E’’; (2)
divisional application ‘‘D’’; and (3) any
other application (application ‘‘F’’) that
claims the benefit of divisional
application ‘‘D’’. In addition, a request
for continued examination may be filed
in continuation application ‘‘F’’, if a
request for continued examination has
not previously been filed in any of: (1)
continuation application ‘‘F’’; (2)
divisional application ‘‘D’’; and (3) any
other application (application ‘‘E’’) that
claims the benefit of divisional
application ‘‘D’’.
Section 1.114(g) provides that a
request for continued examination must
include a petition accompanied by the
fee set forth in § 1.17(f) and a showing
that the amendment, argument, or
evidence sought to be entered could not
have been submitted before the close of
prosecution in the application. A
petition under § 1.114(g) and the fee set
forth in § 1.17(f) are not required if the
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conditions set forth in § 1.114(f) are
satisfied. Since a petition under
§ 1.114(g) requires a showing that there
is an amendment, argument, or evidence
that could not have been submitted
prior to the close of prosecution in the
application, a petition under § 1.114(g)
for a request for continued examination
including only an information
disclosure statement as the submission
required by § 1.114(c) (i.e., not
including an amendment, argument, or
evidence) would not be granted.
Thus, an applicant may file a single
request for continued examination
without a petition under § 1.114(g) in
any one (but only one) of an initial
application or its continuation
applications or continuation-in-part
applications. An applicant may also file
a single request for continued
examination without a petition under
§ 1.114(g) in any one (but only one) of
a divisional application (meeting the
conditions set forth in § 1.78(d)(1)(ii)) or
its continuation applications. Any
second or subsequent request for
continued examination in an
application or application family must
include a petition, accompanied by the
fee set forth in § 1.17(f), and a showing
that the amendment, argument, or
evidence sought to be entered could not
have been submitted prior to the close
of prosecution in the application.
Section 1.114(h) provides that the
filing of an improper request for
continued examination, including a
request for continued examination with
a petition under § 1.114(g) that is not
grantable, will not stay any period for
reply or other proceedings. This is
consistent with the current practice for
requests for continued examination. See
MPEP § 706.07(h), subsection V (the
mere request for continued examination
and fee will not operate to toll the
running of any time period set in the
previous Office action for reply to avoid
abandonment of the application).
The Office proposed § 1.114(f) to
include: ‘‘[a]ny 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.’’ See Changes to
Practice for Continuing Applications,
Requests for Continued Examination
Practice, and Applications Containing
Patentably Indistinct Claims, 71 FR at
61, 1302 Off. Gaz. Pat. Office 1329. This
final rule does not adopt that proposed
change because it is unnecessary.
Section 1.116 applies only to
amendments, affidavits, and other
evidence filed after the mailing of a final
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Office action but prior to an appeal.
However, applicants are permitted to
file a request for continued examination
under § 1.114 after the mailing of a
notice of allowance or an action that
otherwise closes prosecution in the
application (e.g., an Office action under
Ex parte Quayle, 1935 Dec. Comm’r Pat.
11 (1935)). See § 1.114(b). Furthermore,
§ 1.114(d) already provides for the
situation in which a request for
continued examination is filed in an
application on appeal.
As discussed previously, applicants
are permitted to file two continuation or
continuation-in-part applications and a
single request for continued
examination without any justification.
The provisions of § 1.78(d)(1) are
independent of the provisions of
§ 1.114. Thus, filing a request for
continued examination does not
preclude an applicant from filing a first
or second continuation application (or
continuation-in-part application). In
addition, an applicant may not agree to
forgo a first or second continuation
application (or continuation-in-part
application) to obtain a second or third
request for continued examination, nor
can applicant forgo a request for
continued examination to obtain a third
continuation or continuation-in-part
application. For example, an applicant
cannot file two requests for continued
examination without a petition and
showing in an application instead of
filing one of the two permitted
continuation applications.
The Office is implementing an
optional streamlined continuation
application procedure under which an
applicant may have a continuation
application placed on an examiner’s
amended (Regular Amended) docket
(see discussion of § 1.78(d)(1)(i)). Thus,
an applicant may effectively obtain the
docketing benefit (i.e., being placed on
an examiner’s amended (Regular
Amended) docket) of a second and third
request for continued examination
without a petition under § 1.114(g) by
requesting that the two continuation
applications permitted under
§ 1.78(d)(1)(i) be treated under the
optional streamlined continuation
application procedure.
The changes to § 1.114 apply to any
application in which a request for
continued examination is filed on or
after November 1, 2007. Thus, a request
for continued examination filed on or
after November 1, 2007, in an
application in which a request for
continued examination has previously
been filed, in a continuation or
continuation-in-part application of an
application in which a request for
continued examination has previously
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46739
been filed, or in an application whose
benefit is claimed in any other
nonprovisional application in which a
request for continued examination has
previously been filed, must include a
petition under § 1.114(g). That is, an
applicant may file a request for
continued examination (and not ‘‘one
more’’ request for continued
examination) on or after November 1,
2007, without a petition under
§ 1.114(g) only if the conditions set forth
in § 1.114(f)(1), (f)(2), or (f)(3) are met.
Section 1.117 (refund due to
cancellation of claim): The Consolidated
Appropriations Act provides that 35
U.S.C. 41(a), (b), and (d) shall be
administered in a manner that revises
patent application fees (35 U.S.C. 41(a))
and patent maintenance fees (35 U.S.C.
41(b)), and provides for a separate filing
fee (35 U.S.C. 41(a)), search fee (35
U.S.C. 41(d)(1)), and examination fee
(35 U.S.C. 41(a)(3)) during fiscal years
2005 and 2006. See Public Law 108–
447, 118 Stat. 2809 (2004). The
Consolidated Appropriations Act also
provides that the Office may, by
regulation, provide for a refund of any
part of the excess claim fee specified in
35 U.S.C. 41(a)(2) for any claim that is
canceled before an examination on the
merits has been made of the application
under 35 U.S.C. 131. See 35 U.S.C.
41(a)(2) (as administered during fiscal
years 2005 and 2006 pursuant to the
Consolidated Appropriations Act). The
Revised Continuing Appropriations
Resolution, 2007 (Pub. L. 110–5, 121
Stat. 8 (2007)), keeps the patent fee and
fee structure provisions of the
Consolidated Appropriations Act, 2005,
in effect during fiscal year 2007 (until
September 30, 2007).
Section 1.117 is added to implement
this provision of the Consolidated
Appropriations Act. Section 1.117(a)
provides that if an amendment
canceling a claim is filed before an
examination on the merits has been
made of the application, the applicant
may request a refund of any fee under
§ 1.16(h), (i), or (j) or under § 1.492(d),
(e), or (f) paid on or after December 8,
2004, for such claim. Thus, if an
applicant decides to cancel the claims
in excess of five independent claims
and in excess of twenty-five total claims
rather than provide an examination
support document in compliance with
§ 1.265, the applicant may request a
refund of any fee for such claim that is
paid on or after December 8, 2004.
Section 1.117(a) as adopted, however,
does not require that the amendment
have been filed in reply to a notice
under § 1.75(b)(3). Section 1.117(a)
requires only that the amendment have
been filed before an examination on the
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merits has been made of the application.
The Consolidated Appropriations Act
authorizes a refund only for a claim that
has been canceled before an
examination on the merits has been
made of the application under 35 U.S.C.
131. The Office thus lacks authority to
grant a refund either on the basis of: (1)
The withdrawal from consideration of a
claim directed to a non-elected
invention or species; or (2) the
cancellation of a claim after an
examination on the merits has been
made of the application under 35 U.S.C.
131. Section 1.117(a) also provides that
if an amendment adding one or more
claims is also filed before the
application has been taken up for
examination on the merits, the Office
may apply any refund under § 1.117 to
any excess claims fees due as a result of
such an amendment. The date indicated
on any certificate of mailing or
transmission under § 1.8 will not be
taken into account in determining
whether an amendment canceling a
claim was filed before an examination
on the merits has been made of the
application.
•‘‘[A]n examination on the merits has
been made of the application’’ for
purposes of § 1.117(a) once a first Office
action on the merits, notice of
allowability or allowance, or action
under Ex parte Quayle is shown in the
Patent Application Locating and
Monitoring (PALM) system as having
been counted. For purposes of
§ 1.117(a), ‘‘before’’ means at least one
day before. If an amendment canceling
a claim is filed and an Office action is
counted on the same day, the
amendment canceling a claim was not
filed before an examination on the
merits has been made of the application.
The Patent Application Information
Retrieval (PAIR) system is a system that
provides public access to PALM for
patents and applications that have been
published. The PAIR system does not
provide public access to information
concerning applications that are
maintained in confidence under 35
U.S.C. 122(a). Applicants, however, may
use the private side of PAIR to access
confidential information about their
pending application. To access the
private side of PAIR, a customer number
must be associated with the
correspondence address for the
application, and the user of the system
must have a digital certificate. For
further information, contact the
Customer Support Center of the
Electronic Business Center at (571) 272–
4100 or toll free at (866) 217–9197.
Section 1.117(b) (§ 1.117(c) as
proposed) provides that if a request for
refund under this section is not filed
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within two months from the date on
which the claim was canceled, the
Office may retain the excess claims fee
paid in the application. This two-month
period is not extendable. If an
amendment canceling a claim is not
filed before an examination on the
merits, the Office will not refund any
part of the excess claims fee paid in the
application except as provided in § 1.26.
The provisions of § 1.117(b) as
proposed are duplicative of the
provisions of § 1.138(d) and have not
been adopted as unnecessary.
The patent fee provisions of the
Consolidated Appropriations Act expire
(in the absence of additional legislation)
on September 30, 2007 (at the end of
fiscal year 2007). Therefore, in the
absence of subsequent legislation, the
refund provision in § 1.117 will likewise
expire on September 30, 2007 (at the
end of fiscal year 2007), regardless of
the date on which the excess claims fee
was paid.
Section 1.136 (extensions of time):
Section 1.136(a)(1) is amended to add
‘‘[t]he reply is to a notice requiring
compliance with § 1.75(b) or § 1.265’’ to
the enumerated list of replies to which
the extension of time provision of
§ 1.136(a) is not applicable. A notice
under § 1.75(b)(3) is a ‘‘notice requiring
compliance with § 1.75(b).’’ A ‘‘notice
requiring compliance with § 1.75(b)’’
would include a notice mailed before
the issuance of a first Office action on
the merits setting a two-month time
period within which the applicant must:
(1) File an examination support
document in compliance with § 1.265;
or (2) amend the application such that
it contains no more than five
independent claims and no more than
twenty-five total claims. A ‘‘notice
requiring compliance with § 1.75(b)’’
would also include a notice issued after
a first Office action on the merits in an
application in which the applicant is
given a time period within which the
applicant must amend the application
such that it contains no more than five
independent claims and no more than
twenty-five total claims. For example, if
a reply to a non-final Office action on
the merits seeks to amend an
application such that it contains more
than five independent claims and more
than twenty-five total claims, the reply
would be held non-responsive and (if
the non-compliance with § 1.75(b)
appears to have been inadvertent) the
Office would give the applicant a twomonth time period that was not
extendable under § 1.136(a) within
which to provide an amendment that
does not result in the application
containing more than five independent
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claims or more than twenty-five total
claims. See § 1.135(c).
Section 1.142 (requirement for
restriction): Section 1.142(a) is amended
to state that an examiner ‘‘may’’ (rather
than ‘‘will’’) require restriction if two or
more independent and distinct
inventions are claimed in a single
application. The change is for
consistency with current Office practice
under which a requirement that an
application containing claims to two or
more independent and distinct
inventions be restricted to a single
invention is discretionary (see 35 U.S.C.
121 and MPEP § 803.01). An application
containing claims to two or more
independent and distinct inventions
typically is not restricted to a single
invention if the search and examination
of all of the claims in the application
can be made without serious burden
(see MPEP section 803).
Section 1.142(c) is added to permit
applicants to suggest requirements for
restriction. Specifically, § 1.142(c)
provides that if two or more
independent and distinct inventions are
claimed in a single application, the
applicant may file a suggested
requirement for restriction under
§ 1.142(c). Any suggested requirement
for restriction must be filed before the
earlier of the first Office action on the
merits or an Office action that contains
a requirement to comply with the
requirement of unity of invention under
PCT Rule 13 or a requirement for
restriction under 35 U.S.C. 121 in the
application. It must also be
accompanied by an election without
traverse of an invention to which there
are no more than five independent
claims and no more than twenty-five
total claims, and must identify the
claims to the elected invention. Claims
to the non-elected invention, if not
canceled, will be withdrawn from
further consideration by the examiner. If
the examiner accepts the suggested
restriction, then the claims to the nonelected invention, if not canceled by the
applicant, will be withdrawn from
further consideration by the examiner.
See the discussion of §§ 1.75(b)(5) and
1.78(d)(1)(ii).
Section 1.75(b)(3)(iii) as proposed
would have permitted applicants to
reply to a notice from the Office that an
application contains more than ten
representative claims (under certain
conditions) by submitting a suggested
requirement for restriction accompanied
by an election without traverse of an
invention to which there are no more
than five independent claims and no
more than twenty-five total claims. See
Changes to Practice for the Examination
of Claims in Patent Applications, 71 FR
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at 64, 67–68, 1302 Off. Gaz. Pat. Office
1331, 1334. However, because the
‘‘representative claims’’ examination
approach is not adopted in this final
rule, this proposed provision of
§ 1.75(b)(3)(iii) is unnecessary. In this
final rule, applicants may file a
suggested requirement for restriction
accompanied by an election without
traverse (§ 1.142(c)) of an invention to
which there are no more than five
independent claims and no more than
twenty-five total claims without first
awaiting a notice from the Office under
§ 1.75(b)(3).
Section 1.142(c) further provides that
if the applicant’s suggested requirement
for restriction is accepted, the restriction
requirement will be set forth in a
subsequent Office action. Any claim to
the non-elected invention or inventions,
if not canceled, is by the election
withdrawn from further consideration.
If the suggested requirement for
restriction is refused, the applicant will
be notified in an Office action. That
Office action may include, a notice
under § 1.75(b)(3) requiring applicant to
file an examination support document
or amend the application to contain no
more than five independent claims or
no more than twenty-five total claims. If
an applicant’s suggested restriction
requirement is refused, the examiner
may make a different restriction
requirement or make no restriction
requirement. 35 U.S.C. 121 authorizes,
but does not compel, the Director to
require that an application containing
two or more independent and distinct
inventions be restricted to one of the
inventions. A decision not to restrict an
application to a single invention is not
an action or requirement within the
meaning of § 1.181(a). Thus, any review
of an examiner’s requirement for
restriction that differs from a suggested
restriction requirement will only
concern the appropriateness of the
examiner’s restriction requirement and
will not address the appropriateness of
the applicant’s suggested restriction
requirement or compare the examiner’s
restriction requirement and the
suggested restriction requirement.
Section 1.145 (subsequent
presentation of claims for different
invention): Section 1.145 is amended to
state that an applicant ‘‘may’’ (rather
than ‘‘will’’) be required to restrict the
claims to the invention previously
claimed if, after an Office action on an
application, the applicant presents
claims directed to an invention distinct
from and independent of the invention
previously claimed (see discussion of
§ 1.142(a)). Section 1.145 is amended to
add ‘‘on the merits’’ to clarify that
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§ 1.145 applies only after a first Office
action on the merits.
Section 1.265 (examination support
document): Section 1.265 is added to set
forth what an ‘‘examination support
document’’ entails. An examination
support document is required under
§ 1.75(b)(1) when an applicant presents
more than five independent claims or
more than twenty-five total claims in an
application. See § 1.75(b)(1) and the
discussion of § 1.75(b)(1). Section
1.265(a) sets forth the requirements for
an examination support document.
Section 1.265(b) provides for the
requirements of the preexamination
search required under § 1.265(a)(1).
Section 1.265(c) provides for the
requirements of the listing of references
required under § 1.265(a)(2). Section
1.265(d) provides for certain situations
in which a supplemental examination
support document is required when
applicant files an information disclosure
statement citing additional references.
Section 1.265(e) provides for situations
in which the examination support
document is insufficient. Section
1.265(f) provides an exemption to
applications filed by a small entity as
defined by the Regulatory Flexibility
Act (5 U.S.C. 601 et seq.). The
exemption is for the requirement in
§ 1.265(a)(3) that an examination
support document must include an
identification of all of the claim
limitations (whether in independent or
dependent form) that are disclosed by
the cited references.
Section 1.265 contains fewer
requirements than an accelerated
examination support document under
the revised procedures for certain
petitions to make special (see Changes
to Practice for Petitions in Patent
Applications To Make Special and for
Accelerated Examination, 71 FR 36232
(June 26, 2006), 1308 Off. Gaz. Pat.
Office 106 (July 18, 2006) (notice)). For
example, § 1.265 does not require that
the examination support document
identify any cited references that may be
disqualified as prior art under 35 U.S.C.
103(c) as amended by the Cooperative
Research and Technology Act (although
applicants are encouraged to identify
any cited references that may be so
disqualified). Thus, the Office’s
guidelines concerning the accelerated
examination support document may be
helpful to applicants who are preparing
an examination support document
under § 1.265. The guidelines under the
revised accelerated examination
procedure, search templates, and
samples of a preexamination search
document and an examination support
document can be found on the Office’s
Internet Web site at https://
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www.uspto.gov/web/patents/
accelerated/. The Office will provide
similar guidelines for examination
support document under § 1.265 and
will post such guidelines on the Office’s
Internet Web site.
Section 1.265(a)(1) provides that an
examination support document must
include a statement that a
preexamination search in compliance
with § 1.265(b) was conducted. The
examination support document must
identify (in the manner set forth in
MPEP § 719.05) the field of search by
class and subclass and the date of the
search, where applicable. For database
searches, the examination support
document must identify the search logic
or chemical structure or sequence used
as a query, the name of the file or files
searched and the database service, and
the date of the search.
Section 1.265(a)(2) provides that an
examination support document must
include a listing in compliance with
§ 1.265(c) of the reference or references
deemed most closely related to the
subject matter of each of the claims
(whether in independent or dependent
form). The references that would be
most closely related to the subject
matter of each of the claims include: (1)
A reference that discloses the most
number of limitations in an
independent claim; (2) a reference that
discloses a limitation of an independent
claim that is not shown in any other
reference in the listing of references
required under § 1.265(a)(2); and (3) a
reference that discloses a limitation of a
dependent claim that is not shown in
any other reference in the listing of
references required under § 1.265(a)(2).
References that are only relevant to the
general subject matter of the claims
would not be most closely related to the
subject matter of each of the claims if
there are other references that are
deemed to be more closely related to the
subject matter of the claims.
It is envisioned that the reference or
references presented as being most
closely related to the subject matter of
the claims will generally be references
that result from the preexamination
search provided for in § 1.265(a)(1). The
preexamination search provided for in
§ 1.265(a)(1) should result in the
reference or references that are most
closely related to the subject matter of
the claims. However, an applicant may
not exclude a reference from an
examination support document simply
because the reference was not the result
of the preexamination search provided
for in § 1.265(a)(1). The reference, for
instance, may have been brought to
applicant’s attention via a foreign or
PCT search report. References that have
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been brought to the applicant’s attention
regardless of the source of those
references must be considered in
identifying the reference or references
most closely related to the subject
matter of each of the claims.
Section 1.265(a)(3) provides that an
examination support document must,
for each reference in the listing of
references required under § 1.265(a)(2),
identify all of the limitations of each of
the claims (whether in independent or
dependent form) that are disclosed by
the reference. Applicant may satisfy this
requirement either by mapping the
limitations of each of the claims to the
references or by mapping the references
to the limitations of the claims.
Applicants may map the limitations of
each of the claims to the references by,
for each claim, identifying where the
cited references disclose features,
showings, or teachings that are relevant
to each limitation of such claim.
Applicants may map the references to
the limitations of the claims by, for each
cited reference, identifying where the
reference discloses features, showings,
or teachings that are relevant to the
limitations of each of the claims.
Section 1.265(a)(3) requires the
applicant to identify at least one
appearance in the reference (a
representative portion) of a specific
feature, showing, or teaching for which
the reference is being cited. If the
feature, showing, or teaching appears in
more than one portion of the reference,
applicant would not need to specifically
point out more than one occurrence.
Applicant, however, should do so where
the additional appearance may not be
apparent to the examiner and may have
some additional significance over its
first identified appearance. If an
applicant recognizes that a document is
relevant for more than one feature,
showing, or teaching, the applicant
would need to specifically identify each
additional feature, showing, or teaching
and the portion where the feature,
showing, or teaching appears in the
document. A mere statement indicating
that the entire reference, or substantially
the entire reference, is relevant would
not comply with § 1.265(a)(3).
Section 1.265(a)(4) provides that an
examination support document must
include a detailed explanation
particularly pointing out how each of
the independent claims is patentable
over the references cited in the listing of
references required under § 1.265(a)(2).
The explanation required by
§ 1.265(a)(4) may be set forth together
with the identification required by
§ 1.265(a)(3) or may be provided
separately. For example, the
identification required by § 1.265(a)(3)
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and the explanation required by
§ 1.265(a)(4) may be set out in a single
spreadsheet with two columns, or may
be set out in two spreadsheets. A
general statement that all of the claim
limitations are not described in a single
reference does not satisfy the
requirements of § 1.265(a)(4). Section
1.265(a)(4) requires that the examination
support document set out with
particularity, by reference to one or
more specific claim limitations, why the
claimed subject matter is not described
in the references, taken as a whole. The
applicant must explain why a person of
ordinary skill in the art would not have
combined the features disclosed in one
reference with features disclosed in
another reference to arrive at the
claimed subject matter. The applicant
must also explain why the claim
limitations referenced render the
claimed subject matter novel and nonobvious over the cited prior art.
Section 1.265(a)(5) provides that an
examination support document must
include a showing of where each
limitation of the claims (whether in
independent or dependent form) finds
support under 35 U.S.C. 112, ¶ 1, in the
written description of the specification.
If the application claims the benefit of
one or more applications under title 35,
United States Code, the showing must
also include where each limitation of
the claims finds support under 35
U.S.C. 112, ¶ 1, in each such application
in which such support exists. For
means- (or step-) plus-function claim
elements under 35 U.S.C. 112, ¶ 6, this
requires: (1) That the claim limitation be
identified as means- (or step-) plusfunction claim element under 35 U.S.C.
112, ¶ 6; and (2) that the structure,
material, or acts in the specification that
correspond to each means- (or step-)
plus-function claim element under 35
U.S.C. 112, ¶ 6, be identified. See
Changes to Practice for Petitions in
Patent Applications To Make Special
and for Accelerated Examination, 71 FR
at 36325, 1308 Off. Gaz. Pat. Office at
107.
If the examiner, after considering the
application and any examination
support document, still has questions
concerning the invention or how the
claims define over the prior art or are
patentable, the examiner may request an
interview before the first Office action.
If the applicant declines such a request
for an interview or if the interview does
not result in the examiner obtaining the
necessary information, the examiner
may issue a requirement for information
under § 1.105 to obtain such
information. Section 1.133(a)(2) was
amended in November of 2005 to permit
an interview before the first Office
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action if the examiner determines that
such an interview would advance
prosecution. See Provisions for Claiming
the Benefit of a Provisional Application
With a Non-English Specification and
Other Miscellaneous Matters, 70 FR at
56121, 56128, 1299 Off. Gaz. Pat. Office
at 144, 150. Applicant may request an
interview before the first Office action.
Such a request is ordinarily granted in
a continuing application or if the
examiner determines that the interview
would advance prosecution. See
§ 1.133(a)(2) and MPEP § 713.02.
Section 1.265(b) provides that the
preexamination search must involve
U.S. patents and patent application
publications, foreign patent documents,
and non-patent literature, unless the
applicant can justify with reasonable
certainty that no references more
pertinent than those already identified
are likely to be found in the eliminated
source. That justification must be
included in the statement required by
§ 1.265(a)(1). Section 1.265(b) also
provides that the preexamination search
must encompass all of the limitations of
the independent claims. It must also
encompass all of the limitations of the
dependent claims separately from the
claim or claims from which they
depend. The claims must be given the
broadest reasonable interpretation. A
search report from a foreign patent
office will not automatically satisfy the
requirement in § 1.265(a)(1) for a
preexamination search unless it
includes the information required by
§ 1.265.
Section 1.265(c) provides for the
content requirements of the listing of
references required under § 1.265(a)(2)
as part of an examination support
document. Section 1.265(c) provides the
same content requirements as those that
are currently provided in §§ 1.98(a) and
(b). Specifically, § 1.265(c) provides that
the listing of references required under
§ 1.265(a)(2) as part of an examination
support document must include a list
identifying each of the cited references
(§§ 1.265(c)(1) and (c)(2)), a copy of each
reference except for references that are
U.S. patents or U.S. patent application
publications (§ 1.265(c)(3)), and each
English language translation if required
by § 1.265(c)(4). Applicant may use the
USPTO form, ‘‘Examination Support
Document Listing of References,’’ to
submit the listing of references. The
form will be available on the Office’s
Internet Web site at https://
www.uspto.gov/web/forms/
index.html#patent.
Section 1.265(c)(1) provides that the
list of cited references must group U.S.
patents and U.S. patent application
publications (including international
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applications designating the United
States) in a section separate from other
references. Section 1.265(c)(1) also
provides that each page of the list of the
cited references must include: (1) The
application number, if known, of the
application in which the examination
support document is being filed; (2) a
column that provides a space next to
each cited reference for the examiner’s
initials; and (3) a heading that clearly
indicates that the list is part of an
examination support document listing
of references.
Section 1.265(c)(2) provides that the
list of cited references must identify
each cited reference as follows: (1) Each
U.S. patent must be identified by first
named patentee, patent number, and
issue date; (2) each U.S. patent
application publication must be
identified by applicant, patent
application publication number, and
publication date; (3) each U.S.
application must be identified by the
applicant, application number, and
filing date; (4) each foreign patent or
published foreign patent application
must be identified by the country or
patent office which issued the patent or
published the application, an
appropriate document number, and the
publication date indicated on the patent
or published application; and (5) each
publication must be identified by
publisher (e.g., name of journal), author
(if any), title, relevant pages of the
publication, publication date, and place
of publication.
Section 1.265(c)(4) provides that if a
non-English language document is being
cited, any existing English language
translation of the non-English language
document must be submitted if the
translation is within the possession,
custody, or control of, or is readily
available to any individual identified in
§ 1.56(c).
Section 1.265(d) provides for a
supplemental examination support
document. If an information disclosure
statement is filed in an application in
which an examination support
document is required and has been
filed, the applicant must also file a
supplemental examination support
document addressing the references
cited in the information disclosure
statement in the manner required under
§§ 1.265(a)(3) and (a)(4), unless the
information disclosure statement cites
only references that are less closely
related to the subject matter of one or
more claims than the references cited in
the examination support document
listing of references required under
§ 1.265(a)(2).
Section 1.265(e) provides that the
applicant will be notified if: (1) The
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examination support document or
preexamination search is deemed to be
insufficient; or (2) the claims have been
amended such that the examination
support document no longer covers each
claim. The notice will give the applicant
a two-month time period within which
the applicant must either file a corrected
or supplemental examination support
document or amend the application
such that it contains no more than five
independent claims and no more than
twenty-five total claims in order to
avoid abandonment. Section 1.265(e)
further provides that this two-month
period is not extendable under
§ 1.136(a).
Section 1.265(f) provides an
exemption from the requirement in
§ 1.265(a)(3) that an examination
support document must, for each
reference cited in the listing of
references required under § 1.265(a)(2),
include an identification of all of the
limitations of each of the claims
(whether in independent or dependent
form) that are disclosed by the reference
that applies to applications by a small
entity as defined by the Regulatory
Flexibility Act (5 U.S.C. 601 et seq.).
The Regulatory Flexibility Act defines a
‘‘small entity’’ as a ‘‘small business’’ as
defined in 5 U.S.C. 601(3), a ‘‘small
organization’’ as defined in 5 U.S.C.
601(4), and a ‘‘small governmental
jurisdiction’’ as defined 5 U.S.C. 601(5).
See 5 U.S.C. 601(6). Section 1.265(f)
specifically provides that an
examination support document, or a
corrected or supplemental examination
support document, is not required to
comply with the requirements set forth
in § 1.265(a)(3) if the examination
support document is accompanied by a
certification that any rights in the
application have not been assigned,
granted, conveyed, or licensed, and
there is no obligation under contract or
law to assign, grant, convey, or license
any rights in the application, other than
a security interest that has not been
defaulted upon, to any entity other than
a business or other concern as defined
in § 1.265(f)(1), a not-for-profit
enterprise as defined in § 1.265(f)(2), or
a government as defined in § 1.265(f)(3).
A business or other concern which
meets the definition set forth in
§ 1.265(f)(1), a not-for-profit enterprise
that meets the definition set forth in
§ 1.265(f)(2), or a government that meets
the definition set forth in § 1.265(f)(3)
may make the certification provided for
in § 1.265(f) regardless of whether the
business or other concern, not-for-profit
enterprise, or government is located in
or operates primarily in the United
States.
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46743
With respect to the business or other
concerns defined in § 1.265(f)(1), the
Regulatory Flexibility Act provides that
‘‘the term ‘small business’ has the same
meaning as the term ‘small business
concern’ under section 3 of the Small
Business Act, unless an agency, after
consultation with the Office of
Advocacy of the Small Business
Administration and after opportunity
for public comment, establishes one or
more definitions of such term which are
appropriate to the activities of the
agency and publishes such definition(s)
in the Federal Register.’’ See 5 U.S.C.
601(3). The Office has established the
standard set forth in 13 CFR 121.802 for
paying reduced patent fees as the
definition of ‘‘small business’’ for
Regulatory Flexibility Act purposes
with respect to patent-related
regulations. Therefore, a ‘‘small
business’’ for Regulatory Flexibility Act
purposes with respect to patent-related
regulations is a business or other
concern: (1) Whose number of
employees, including affiliates, does not
exceed 500 persons; and (2) which has
not assigned, granted, conveyed, or
licensed (and is under no obligation to
do so) any rights in the invention to any
person who made it and could not be
classified as an independent inventor,
or to any concern which would not
qualify as a non-profit organization or a
small business concern under this
definition.
With respect to the not-for-profit
enterprises defined in § 1.265(f)(2), the
Regulatory Flexibility Act provides that
‘‘the term ‘small organization’ means
any not-for-profit enterprise which is
independently owned and operated and
is not dominant in its field, unless an
agency establishes, after opportunity for
public comment, one or more
definitions of such term which are
appropriate to the activities of the
agency and publishes such definition(s)
in the Federal Register.’’ See 5 U.S.C.
601(4). The Office has not established
any definition of ‘‘small organization’’
for Regulatory Flexibility Act purposes
with respect to patent-related
regulations. Therefore, a ‘‘small
organization’’ for Regulatory Flexibility
Act purposes with respect to patentrelated regulations is a not-for-profit
enterprise which is independently
owned and operated and is not
dominant in its field.
With respect to the governments
defined in § 1.265(f)(3), the Regulatory
Flexibility Act provides that ‘‘the term
‘small governmental jurisdiction’ means
governments of cities, counties, towns,
townships, villages, school districts, or
special districts, with a population of
less than fifty thousand, unless an
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agency establishes, after opportunity for
public comment, one or more
definitions of such term which are
appropriate to the activities of the
agency and which are based on such
factors as location in rural or sparsely
populated areas or limited revenues due
to the population of such jurisdiction,
and publishes such definition(s) in the
Federal Register.’’ See 5 U.S.C. 601(5).
The Office has not established any
definition of ‘‘small governmental
jurisdiction’’ for Regulatory Flexibility
Act purposes with respect to patentrelated regulations. Therefore, a ‘‘small
governmental jurisdiction’’ for
Regulatory Flexibility Act purposes
with respect to patent-related
regulations is a government of a city,
county, town, township, village, school
district, or special district, with a
population of less than fifty thousand.
An entity that meets the definition of
a small entity set forth in § 1.27 for
paying reduced patent fees may or may
not meet one of the definitions under
§§ 1.265(f)(1) through (f)(3) to make a
certification under § 1.265(f). The Office
will not give advisory opinions as to
whether or not a specific individual or
entity meets the definitions under
§§ 1.265(f)(1) through (f)(3) to make a
certification under § 1.265(f). Questions
related to standards for small business
concerns, not-for-profit enterprises, or
governments may be directed to: Small
Business Administration, Size
Standards Staff, 409 Third Street, SW.,
Washington, DC 20416.
Section 1.495 (entering the national
stage in the United States of America):
Section 1.495(g) provides that if the
documents and fees contain conflicting
indications as to whether the
submission is an application under 35
U.S.C. 111 or 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 most cases,
documents and fees that contain such
conflicting indications were intended as
submissions under 35 U.S.C. 371.
Section 1.704 (reduction of period of
adjustment of patent term): Section
1.704(c) is amended to provide the
patent term adjustment consequences of
a failure to comply with § 1.75(b) (e.g.,
a failure to file an examination support
document in compliance with § 1.265
when necessary under § 1.75(b)). Such a
failure will be considered a
circumstance that constitutes a failure of
an applicant to engage in reasonable
efforts to conclude processing or
examination of an application under 35
U.S.C. 154(b)(2)(C). The failure to
comply with § 1.75(b) will delay
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processing or examination of an
application because the Office must
issue a notice and await the applicant’s
reply before examination of the
application may begin. Therefore,
§ 1.704(c) provides for a reduction of
any patent term adjustment when there
is a failure to comply with § 1.75(b).
Specifically, any patent term adjustment
will be reduced by the number of days
in the period between the following
beginning and ending dates. The
beginning date of the period is the day
after the date that is the later of: (1) The
filing date of the amendment resulting
in the noncompliance with § 1.75(b); (2)
four months from the filing date of the
application in an application under 35
U.S.C. 111(a); or (3) four months from
the date on which the national stage
commenced under 35 U.S.C. 371(b) or
(f) in an application which entered the
national stage from an international
application after compliance with 35
U.S.C. 371. The ending date of the
period is the filing date of: (1) An
examination support document in
compliance with § 1.265; (2) an election
responsive to an Office-issued
requirement for restriction including an
election of species that places the
application in compliance with § 1.75(b)
(e.g., the election of an invention that is
drawn to five or fewer independent
claims and twenty-five or fewer total
claims that would obviate the need for
an examination support document
under § 1.265); (3) an amendment
resulting in compliance with § 1.75(b)
(e.g., amending the application to
contain five or fewer independent
claims and twenty-five or fewer total
claims); (4) a suggested requirement for
restriction under § 1.142(c)
accompanied by an election without
traverse of an invention to which there
are no more than five independent
claims and no more than twenty-five
total claims.
The examiner’s acceptance of a
suggested requirement for restriction
accompanied by an election without
traverse of an invention to which there
are no more than five independent
claims and no more than twenty-five
total claims would be sufficient to
obviate the need for an examination
support document under § 1.265. If the
suggested requirement for restriction is
not accepted, the applicant will be
notified and given a time period within
which the applicant must either file an
examination support document or
amend the application such that it
contains no more than five independent
claims and no more than twenty-five
total claims. Failure to timely reply to
such a notice would result in the
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abandonment of the application. The
abandonment of an application results
in the period of adjustment set forth in
§ 1.703 (if any) being reduced under
§ 1.704(c)(3).
III. Response to Comments
As discussed previously, the Office
published notices in January of 2006
proposing: (1) Changes to practice for
continuing applications, requests for
continued examination, and
applications containing patentably
indistinct claims; and (2) changes to the
practice for the examination of claims in
patent applications. See Changes to
Practice for Continuing Applications,
Requests for Continued Examination
Practice, and Applications Containing
Patentably Indistinct Claims, 71 FR at
48–61, 1302 Off. Gaz. Pat. Office 1318–
29, and Changes to Practice for the
Examination of Claims in Patent
Applications, 71 FR 61–69, 1302 Off.
Gaz. Pat. Office 1329–35. The Office
received over five hundred written
comments (from government agencies,
universities, intellectual property
organizations, industry, law firms,
individual patent practitioners, and the
general public) in response to this
notice. The comments and the Office’s
responses to the comments follow:
A. Changes to Continuing Application
Practice
Comment 1: A number of comments
stated that the changes in the definitions
of continuation, divisional, and
continuation-in-part applications set
forth in § 1.78(a) are likely to confuse
the public and examiners and that the
Office has not identified any value that
would result from these changes.
Several comments suggested that further
guidance was needed to resolve
ambiguities as to whether an application
is a divisional or continuation
application. One comment argued that
the requirement to identify the
relationship of the applications could
create hardship when it is unclear
whether the changes to the specification
or claims make the application a
continuation, divisional, or
continuation-in-part application.
Response: The definitional changes
are necessary in order to clearly define
the conditions for claiming benefit of
prior-filed applications under
§ 1.78(d)(1). This final rule further
clarifies the definition of a divisional
application set forth in § 1.78(a)(2).
Under this final rule, an applicant may
file a divisional application directed to
a non-elected invention if the prior-filed
application is subject to a requirement
for restriction. The divisional
application need not be filed during the
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pendency of the application subject to a
requirement for restriction, as long as
the copendency requirement of 35
U.S.C. 120 is met. Thus, applicant may
file a divisional application claiming the
benefit of the initial application that
was subject to the requirement for
restriction and any intermediate
continuing applications.
Furthermore, the definitions of
continuation, divisional, and
continuation-in-part application set
forth in § 1.78(a) are substantially the
same as the previous definitions set
forth in the MPEP, except that a
divisional application is now defined
more narrowly. See the discussion of
§ 1.78(a). The former practice permitted
an applicant to file a continuing
application and identify the application
as a ‘‘divisional’’ application even when
the prior-filed application was not
subject to a requirement for restriction.
Such a continuing application was
called a ‘‘voluntary’’ divisional
application. Under this final rule, a
‘‘voluntary’’ divisional application
would instead fall under the definition
of a continuation application. Therefore,
a continuing application would be a
continuation application and not a
divisional (‘‘voluntary’’ divisional)
application if the prior-filed application
was not subject to a requirement for
restriction. If the prior-filed application
was subject to a requirement for
restriction, a continuing application
claiming only a non-elected invention
or inventions would be a divisional
application. It is noted that although the
definition of continuation application
set forth in § 1.78(a)(2) uses the phrase
‘‘invention or inventions’’ rather than
‘‘subject matter’’ (as used in the
definition of continuation application
set forth in MPEP § 201.07), no
substantive difference between these
terms is intended. The requirement to
identify the relationship (i.e.,
continuation, divisional, or
continuation-in-part) between the priorfiled application and the continuing
application is not a new requirement
under this final rule. This requirement
has been provided in the former
§ 1.78(a)(2)(i). Accordingly, the
definitions of continuation, divisional,
and continuation-in-part application set
forth in § 1.78(a) are not likely to
confuse the public or examiners for any
extended period.
Comment 2: A number of comments
observed the proposed requirement that
a divisional application may claim the
benefit of only a single application
would require that all divisional
applications filed as a result of a
restriction requirement in a prior-filed
application be filed before the patenting
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or abandonment of that application. A
number of comments suggested that the
rule changes limiting divisional
applications to claim benefit to only a
single prior-filed application would
result in an overall increase in
application filings and pendency,
contrary to their intended purpose. The
comments contended the changes being
adopted in this final rule effectively
force applicants to claim all patentably
distinct inventions in the prior-filed
application or file related applications
in parallel in order to preserve potential
patent rights in those inventions. The
comments suggested that since a
divisional application must be filed
during the pendency of the prior-filed
application, many more divisional
applications would be filed than would
be filed under the current system, as
applicants will not have sufficient time
and information to determine whether
the invention is worth pursuing. The
comments stated that, consequently, the
Office will be forced to examine more
inventions than it would under current
practice, wasting both applicants’ and
the Office’s resources. A number of
comments also suggested that the
inability to prosecute divisional
applications sequentially, thus allowing
applicants to spread filing and
prosecution costs over time and to file
only those divisional applications that
are commercially valuable in view of
subsequent market development, will
have a particularly negative impact on
the biotechnology and pharmaceutical
industries and on small entities. The
comments suggested that patent rights
will be lost due to a lack of funding and
that the increased costs will be
particularly onerous in certain
technologies, e.g., biotechnology and
chemical arts, where the Office
routinely issues complex restriction
requirements, sometimes alleging
hundreds or thousands of independent
and distinct inventions. Several
comments also suggested that the rules
should be modified to account for the
economic impossibility, in many cases,
of pursuing numerous divisional
applications simultaneously. One
comment also suggested that the need to
file multiple stand alone applications or
divisional applications at an early stage
in prosecution to cover all embodiments
of the invention will cause small
companies to cut back funding on
research in favor of patent prosecution,
thus hindering innovation. One
comment also suggested that the rules
be revised, consistent with European
Patent Office divisional practice, to
permit the serial filing of divisional
applications with the limitation that
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claims pursued in a continuation of any
serial divisional application must be of
the same scope as, or of a narrower
scope than, the claims presented in that
serial divisional application. One
comment also suggested that prior to
implementing the rule changes, the
Office should conduct a study to assess
the scope of potential divisional filing
problems by studying the divisional
filing habits of large and small entity
applicants.
Response: The Office notes the
concerns expressed in the public
comment regarding the proposed
requirement in § 1.78(d)(1)(ii) that a
divisional application be filed during
the pendency of the initial application.
In response to those concerns and
suggestions, § 1.78(d)(ii) as adopted in
this final rule does not require that a
divisional application be filed during
the pendency of the initial application.
This final rule permits applicants to file
a divisional application for the claims to
a non-elected invention if the initial
application is subject to a requirement
for restriction, the claims to the nonelected invention are cancelled in the
initial application, and the divisional
application meets the copendency
requirement of 35 U.S.C. 120. That is, an
applicant may file a divisional
application during the pendency of the
application that was subject to a
restriction requirement or the pendency
of any continuing application of such
application. This final rule also permits
applicant to file two continuation
applications of a divisional application,
plus a request for continued
examination in the divisional
application family, without any
justification.
Comment 3: A number of comments
suggested that the rule changes would
encourage applicants to file more
petitions challenging restriction
requirements, thus further burdening
the Office.
Response: The criteria for making a
restriction requirement remain the
same. Applicant may still seek review of
any restriction requirements, if
appropriate. The Office, however, does
not anticipate any substantial increase
in the number of petitions seeking
review of restriction requirements. As
discussed previously, § 1.78(d)(1)(ii) as
adopted in this final rule does not
require that a divisional application be
filed during the pendency of a single
prior-filed application. This final rule
permits applicant to file a divisional
application of an application if the
application is subject to a requirement
for restriction, claims to the non-elected
invention are cancelled in the priorfiled application, and the divisional
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application meets the copendency
requirement of 35 U.S.C. 120. That is,
applicant may file a divisional
application during the pendency of the
application that was subject to a
requirement for restriction or the
pendency of any continuing application
of such application. Applicant will have
sufficient time to determine whether to
file a divisional application directed to
a non-elected invention.
Comment 4: Several comments stated
that the rule changes do not adequately
address the situation where a restriction
requirement is made by the examiner in
a continuing application. The comments
expressed concern that the rule changes
appear to require applicant to forego all
but one invention. One comment stated
that the applicant’s prior application, if
published, may constitute prior art if
benefit to the prior application is not
permitted. Another comment suggested
that concerns over prolonging patent
term, abuse or bad faith are not raised
where a divisional application is filed as
a result of a restriction requirement
made in the continuing application, and
that such filings may actually improve
quality, as the searches performed in the
initial and first continuing application
often provide significant information
and guidance to the examiner in the
second continuing application.
Response: As discussed previously,
the Office has modified the proposed
§ 1.78(d)(1)(ii) in this final rule such
that it does not require a divisional
application to be filed during the
pendency of a single prior-filed
application. Instead, this final rule
permits an applicant to file a divisional
application for the claims to a nonelected invention that was not examined
if the application was subject to a
requirement for restriction, the claims to
the non-elected invention are cancelled
in the prior-filed application, and the
divisional application meets the
copending requirement of 35 U.S.C. 120.
Therefore, applicant may file a
divisional application of a continuing
application for the claims to a nonelected invention that has not been
examined if the continuing application
was subject to a requirement for
restriction. Such a divisional
application may claim the benefit of the
continuing application that was subject
to a requirement for restriction and the
initial application whose benefit is
claimed in the continuing application.
Comment 5: One comment requested
clarification as to whether a divisional
application can be filed if a request for
continued examination was filed in the
initial application.
Response: The filing of a request for
continued examination in the initial
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application does not preclude an
applicant from filing a divisional
application under the proposed rule as
well as under this final rule. The
condition that ‘‘no request for continued
examination under § 1.114 has been
filed in the prior-filed application’’ as
proposed applied only to the filing of
continuation and continuation-in-part
applications under proposed
§ 1.78(d)(1)(i). Compare proposed
§§ 1.78(d)(1)(i) and 1.78(d)(1)(ii).
Furthermore, § 1.78(d)(1) as adopted in
this final rule contains no conditions
with respect to continuation
applications, divisional applications, or
continuation-in-part applications
concerning whether a request for
continued examination was filed in the
initial application or a prior-filed
continuing application. Therefore, the
filing of a request for continued
examination does not preclude an
applicant from filing two continuation
or continuation-in-part applications,
and any divisional application directed
to a non-elected invention that has not
been examined if the prior-filed
application was subject to a requirement
for restriction.
Comment 6: A number of comments
requested that the Office not limit
‘‘voluntary’’ divisional applications. In
addition, several comments noted the
importance of ‘‘voluntary’’ divisional
applications in protecting important
inventions the significance of which
could not reasonably be anticipated
when the application was filed. Another
comment indicated the importance of
‘‘voluntary’’ divisional applications for
obtaining quick patents to protect
applicants’ products from competitors
while preserving the opportunity to
obtain patent protection on other
aspects of the invention. Several
comments stated that the standard
under § 1.78(d)(1) makes little sense
when the objective of filing the
continuing application is to obtain
patents on distinct inventions. One of
the comments expressed concern that
each patent is, both by law and
regulation, to be directed to a single
invention and that patent applications
directed to multiple inventions are
subject to restriction under 35 U.S.C.
121.
Response: This final rule permits
applicants to file a so-called
‘‘voluntary’’ divisional application as a
continuation application in compliance
with § 1.78(d)(1)(i) when the prior-filed
application was not subject to a
requirement for restriction. Under
§ 1.78(d)(1)(i), applicant may file two
such continuation applications without
a petition and showing of why the
amendment, argument, or evidence
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sought to be entered could not have
been previously submitted. Applicant
likewise may file a third or subsequent
continuation application with a petition
and showing pursuant to
§ 1.78(d)(1)(vi).
Furthermore, applicant may suggest a
requirement for restriction under
§ 1.142(c) if the applicant believes that
two or more independent and distinct
inventions are claimed in the
application. See § 1.142(c) and the
discussion of § 1.142(c). In such case,
§ 1.78(d)(1)(ii) provides that an
applicant may file a divisional
application directed to a non-elected
invention that has not been examined if
the prior-filed application is subject to
a requirement for restriction. The
divisional application is not required to
be filed during the pendency of the
application subject to a requirement for
restriction, as long as the copendency
requirement of 35 U.S.C. 120 is met.
Section § 1.78(d)(1)(iii) also permits an
applicant to file, without a petition and
showing, two continuation applications
of a divisional application plus a
request for continued examination in
the divisional application family.
Therefore, applicants have sufficient
opportunity to obtain patent protection
on other aspects of the invention.
35 U.S.C. 121 provides that ‘‘[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.’’ (Emphasis added.)
Thus, 35 U.S.C. 121 authorizes, but does
not compel, the Director to require that
an application containing two or more
independent and distinct inventions be
restricted to one of the inventions. The
Office typically decides whether to
issue a restriction requirement when an
application contains two or more
independent and distinct inventions
based upon, inter alia, the burden on
the Office to search and examine more
than one invention. See MPEP § 803.
Comment 7: Several comments
suggested that the restriction on a socalled ‘‘voluntary’’ divisional
application would be a major
divergence from other countries and
would not be favorable from the
viewpoint of promoting global
harmonization of patent practices. One
comment noted that the Japan Patent
Office (JPO) and the European Patent
Office (EPO) have liberal ‘‘voluntary’’
divisional application rules and have
not reported any evidence of abuse.
Response: Under this final rule,
applicant still has the opportunity to file
a so-called ‘‘voluntary’’ divisional
application except that such an
application is defined in this final rule
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as a continuation application. That is, as
discussed previously, applicant may file
a ‘‘voluntary’’ divisional application as
a continuation application in
compliance with § 1.78(d)(1)(i) when
the prior-filed application was not
subject to a requirement for restriction.
Specifically, under § 1.78(d)(1)(i),
applicant may file two continuing
applications of an initial application
without a petition and showing and
then may file a third or subsequent
continuation with a petition and
showing under § 1.78(d)(1)(vi).
Accordingly, this final rule is not a
major divergence from the ‘‘voluntary’’
divisional practice available in other
countries.
Moreover, under the PCT and the
Paris Convention, the determination of
the conditions and effect of internal
(domestic) priority claims is a matter for
the authority concerned. See, e.g., PCT
Article 8(2)(b) and Article 4(G)(2) of the
Paris Convention. Efforts in recent years
to harmonize substantive patent law
have not focused on achieving
harmonization on domestic priority.
(See https://www.wipo.int/patent/law/
en/harmonization.htm for further
information).
Comment 8: Several comments
suggested that eliminating ‘‘voluntary’’
divisional applications violates Article
4G(2) of the Paris Convention.
Response: Section 1.78(d) as adopted
in this final rule does not eliminate
what has traditionally been referred to
as a ‘‘voluntary’’ divisional application.
The second sentence of Article 4G(2) of
the Paris Convention provides that each
country ‘‘shall have the right to
determine the conditions under which
such division shall be authorized.’’ As
discussed previously, a ‘‘voluntary’’
divisional application would not meet
the definition of divisional application
set forth in § 1.78(a)(2), but would
instead be a continuation application as
defined in § 1.78(a)(3). If the prior-filed
application is not subject to a
requirement for restriction, the
applicant may file a ‘‘voluntary’’
divisional application as a continuation
application under the conditions set
forth in § 1.78(d)(1)(i). Such a definition
is consistent with 35 U.S.C. 121.
Furthermore, if the prior-filed
application is subject to a requirement
for restriction, § 1.78(d)(1)(ii) provides
that an applicant may file an
‘‘involuntary’’ divisional application
directed to a non-elected invention that
has not been examined. Therefore,
§ 1.78(d) is consistent with Article 4G(2)
of the Paris Convention.
Comment 9: One comment suggested
amending proposed § 1.78(d)(1)(ii) to
define a divisional application as an
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application that only includes claims
that were non-elected in the prior-filed
application to prevent new claims from
being filed in the divisional application,
thus further increasing the numbers of
claims that examiners have to examine.
Response: Such a requirement is
unnecessary because applicant may
amend the non-elected claims that have
been filed in the divisional application
during the course of prosecution of the
divisional applications as the prior art is
developed and/or to correct formal
matters. Section § 1.78(d)(1)(ii) as
adopted in this final rule permits an
applicant to file a divisional application
directed to a non-elected invention that
has not been examined that was subject
to a requirement for restriction in the
prior-filed application. Therefore,
applicant may present claims in the
divisional application that are different
than the claims in the prior-filed
application if the claims in the
divisional application are directed to
the subject matter of the non-elected
invention.
Comment 10: One comment expressed
concern that the Office may pressure
examiners to limit the issuance of
restrictions in order to reduce the
number of applications to be examined,
thus artificially making it look like the
pendency rate has gone down. The
comment requested that the Office
implement a policy mandating
examiners to issue restrictions when
requested by the applicant, except in
cases where it is clear that such
restrictions are not proper.
Response: Restriction practice is set
forth in Chapter 800 of the MPEP. As
discussed previously, the applicant may
suggest a requirement for restriction
under § 1.142(c) if the applicant believes
that two or more independent and
distinct inventions are claimed in the
application. The examiner may accept
or refuse the suggested restriction
requirement. Alternatively, the
examiner may issue a different
restriction. See the discussion of
§ 1.142(c). Either way, it remains
important from the standpoint of the
public interest that no requirements for
restriction are made that might result in
the issuance of two patents for the same
invention. See MPEP § 803.01.
Comment 11: One comment
questioned the status of a divisional
application if the restriction
requirement is withdrawn after filing of
the divisional application.
Response: If a restriction requirement
is made and the applicant cancels the
non-elected claims (and any generic
claims or other types of linking claims
if present) in the prior-filed application
and files a divisional application, the
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restriction requirement will not be
withdrawn. Also, as discussed
previously, applicants cannot rely upon
a requirement for restriction to avoid the
requirement for an examination support
document where: (1) The applicant
traverses the requirement for restriction;
(2) the requirement for restriction may
be conditional, such as a requirement
for election of species in an application
that contains a claim that is generic to
all of the claimed species (see MPEP
§ 809), or a requirement for restriction in
an application that contains a linking
claim (e.g., a subcombination claim
linking plural combinations); or (3) the
applicant plans to request rejoinder of
the claims to the non-elected invention
(see MPEP § 821.04 et seq.). Under
§§ 1.78(a)(2) and 1.78(d)(1)(ii), the priorfiled application to which a divisional
application claims the benefit must be
subject to a requirement to comply with
the requirement of unity of invention
under PCT Rule 13 or a requirement for
restriction under 35 U.S.C. 121 and the
invention claimed in the divisional
application must not have been elected
for examination and must not have been
examined in any prior-filed application.
Thus, a divisional application will be
improper when the claims to the nonelected invention have not been
cancelled and the requirement for
restriction is withdrawn in the priorfiled application (or when the invention
claimed in the divisional application
has been examined in the prior-filed
application). Furthermore, since the
claims of the prior-filed application and
the divisional application would be
drawn to the same invention, both
applications may be subject to a double
patenting rejection (see MPEP § 821.04)
and the provisions of 1.75(b)(4)
(determining number of claims for
purposes of examination support
document threshold when multiple
applications contain patentably
indistinct claims).
For example, where claims directed to
a product and to a process of making
and/or using the product are presented
in the same application and subject to
a requirement for restriction, the
applicant may request rejoinder of the
non-elected process claims that depend
from or otherwise require all the
limitations of an allowable product
claim. See MPEP § 821.04(b). Upon
rejoinder of claims to a non-elected
process invention, the requirement for
restriction between the elected product
and non-elected process invention is
withdrawn. Thus, the rejoinder of nonelected process claims after allowance
of the elected product claims may result
in a prior or subsequently filed
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‘‘divisional’’ application not being a
proper divisional application under
§§ 1.78(a)(2) and 1.78(d)(1)(ii) because
the prior-filed application is no longer
subject to a requirement for restriction.
Applicant may avoid this problem by
canceling the non-elected process
claims and claiming them in a
divisional application before rejoinder
occurs. In such a situation, because the
non-elected claims have been cancelled,
the restriction requirement cannot be
withdrawn. This will preserve
applicant’s rights under 35 U.S.C. 121
and § 1.78(d)(1)(ii).
If the applicant chooses to retain the
non-elected claims and files a divisional
application claiming the non-elected
invention and then the restriction
requirement is withdrawn in the priorfiled application, the benefit claim
under § 1.78(d)(1)(ii) in the later-filed
divisional application would no longer
be proper. Thus, the later-filed
application would not be entitled to the
benefit of the prior-filed application. If
applicant still desires to maintain the
later-filed application, applicant must
delete or correct the benefit claim to
indicate that the application is a
continuation application if the
requirements set forth in § 1.78(d)(1)(i)
can be met. If applicant no longer wants
to maintain the later-filed application,
applicant may abandon the application
before the examination has been made
of the application and may request a
refund of any previously paid search
and excess claims fees.
Comment 12: A number of comments
suggested that limiting continuation-inpart applications was unnecessary. The
comments explained that concerns
associated with continually reopening
prosecution do not apply to
continuation-in-part applications,
which are usually filed as a result of the
inventor having developed a significant
improvement in the invention. One
comment stated that limiting
continuation-in-part applications will
not reduce application filings, but rather
will simply cause applicants to file the
application as a new application
without a benefit claim because the
claims of the continuation-in-part
application are usually directed to the
new subject matter and thus not entitled
to benefit of the parent filing date.
Several comments suggested that
continuation-in-part applications are
necessary for adequate protection of
improvements to the invention and that
these improvements often become the
key feature of an invention that leads to
its success. One comment, however,
suggested that continuation-in-part
practice be terminated, because with the
twenty-year patent term, there is no
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benefit to applicant or to the Office
associated with continuing this practice.
Response: Inconsistent rules for
continuation applications and
continuation-in-part applications would
likely lead to confusion and create the
potential for abuse. First, there is no
reason to treat continuation applications
different from continuation-in-part
applications where both fall under
§ 1.78 and are contemplated by 35
U.S.C. 120. Second, there is no reason
why the Office should maintain the
ability to file an unlimited string of
continuation-in-part applications
without justification while proceeding
with a change to § 1.78 to require a
justification for any third or subsequent
continuation application. Third, if
applicants could file continuation-inpart applications without restriction,
then they could be used as a tool to
circumvent this final rule. Thus, the
Office considers it appropriate to
require a justification for any third or
subsequent continuing application that
is a continuation application or a
continuation-in-part application.
The changes in this final rule do not
impact applicants’ ability to protect
improvements to the invention
disclosed in a prior-filed application.
Section 1.78(d)(1)(i) allows an applicant
to file two continuation-in-part
applications of a prior-filed application
without a petition and showing.
Applicant may also file any third or
subsequent continuation-in-part
application with a petition and
showing. Hence, applicants have ample
opportunity to seek protection for
improvements.
Furthermore, for the continuation-inpart application to actually receive the
benefit of the filing date of the priorfiled application, 35 U.S.C. 120 requires
that the subject matter of at least one
claim of the continuation-in-part
application must be disclosed in the
prior-filed application in the manner
provided by 35 U.S.C. 112, ¶ 1. See
Studiengesellschaft Kohle m.b.H, 112
F.3d at 1564–65, 42 U.S.P.Q.2d at 1677–
78. The term of any patent resulting
from the continuation-in-part
application will be measured under 35
U.S.C. 154(a)(2) from the filing date of
the prior-filed application, even if the
continuation-in-part application never
receives any benefit from the prior-filed
application. See Abbott Labs., 104 F.3d
at 1309, 41 U.S.P.Q.2d at 1537. To
maximize the term of any resulting
patent, applicant should file the
application containing only claims
directed to the improvements without
claiming the benefit of the prior-filed
application rather than a continuationin-part application.
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Comment 13: Several comments
suggested that, if the prior-filed
application is abandoned in favor of a
continuation-in-part application before
examination of the prior-filed
application, or is filed within a short
time of the prior-filed application, the
limits on continuing applications
should not include such continuationin-part applications. Several comments
explained that in rapidly advancing
sciences, continuation-in-part
applications are often filed while
abandoning the prior application in the
chain before an examination of the
merits. Thus, a continuation-in-part
application is often the first in a series
to be examined as an initial application.
At a minimum, the rules should be
modified to exclude from counting
prior-filed applications that are
abandoned before issuance of a first
action on the merits.
Response: Section 1.78(d)(1)(v) as
adopted in this final rule addresses the
situation in which an applicant files a
continuation (or continuation-in-part)
application to correct informalities
rather than completing an application
for examination under § 1.53. Under
§ 1.78(d)(1)(v), if the prior-filed
application is abandoned due to the
failure to timely reply to an Office
notice issued under § 1.53(f)), the
applicant may file ‘‘one more’’
continuation application (or
continuation-in-part application)
without there being a requirement for a
petition and showing under
§ 1.78(d)(1)(vi). Specifically,
§ 1.78(d)(1)(v) provides that a
continuation application or
continuation-in-part application is
permitted if the following conditions are
met: (1) The application claims benefit
under 35 U.S.C. 120 or 365(c) of a priorfiled nonprovisional application filed
under 35 U.S.C. 111(a), and the priorfiled nonprovisional application became
abandoned due to the failure to timely
reply to an Office notice issued under
§ 1.53(f) and does not claim the benefit
of any other nonprovisional application
or international application designating
the United States of America; (2) the
application is a continuation
application as defined in § 1.78(a)(3) or
a continuation-in-part application as
defined in § 1.78(a)(4) that claims the
benefit under 35 U.S.C. 120, 121, or
365(c) of no more than three prior-filed
applications; and (3) any application
whose benefit is claimed under 35
U.S.C. 120, 121, or 365(c) in such
nonprovisional application has its
benefit claimed in no more than two
other nonprovisional applications. This
does not include any divisional
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application that satisfies the conditions
set forth in § 1.78(d)(1)(ii) or
continuation application that claims the
benefit of such divisional application
and satisfies the conditions set forth in
§ 1.78(d)(1)(iii).
For example, applicant may file a
third continuation (or continuation-inpart) application claiming the benefit of
an intervening (second) continuation (or
continuation-in-part) application, a first
continuation (or continuation-in-part)
application, and a prior-filed
application without a petition under
§ 1.78(d)(1)(vi), if the prior-filed
application became abandoned due to
the failure to timely reply to a Notice to
File Missing Parts mailed by the Office
of Initial Patent Examination and does
not claim the benefit of any other
application. The prior-filed application,
however, must be entitled to a filing
date and have paid therein the basic
filing fee within the pendency of the
application. See § 1.78(d)(2).
Comment 14: One comment suggested
that the rule changes encourage
applicants to file two applications, i.e.,
a continuation-in-part application and a
divisional application, rather than a
single continuation-in-part application,
where the non-elected invention is
further developed. The comment stated
that this is inefficient for both the Office
and applicants.
Response: The Office appreciates that
the changes being adopted in this final
rule do provide some incentive for
applicants who seek only to maximize
the number of continuing applications
and requests for continued examination
permitted without any justification to
file both a continuation-in-part
application and a divisional application
in this situation. However, applicants
seeking to maximize the number of
continued examination filings are not
likely to file only a single continuationin-part application in this situation
under either the former practice or the
change to continuing application
practice being adopted in this final rule.
Furthermore, this final rule permits
applicant to file two continuation or
continuation-in-part applications plus
one request for continued examination
in an application family, without any
justification. And, this final rule permits
applicant to file two continuation
applications plus one request for
continued examination in the divisional
application family, without any
justification.
Comment 15: One comment suggested
that continuation-in-part applications
are an important tool for correcting
errors in the initial application (e.g.,
correction of test data) and this should
be encouraged, rather than discouraged.
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Response: The Office is neither
encouraging nor discouraging the filing
of continuation-in-part applications.
Rather, this final rule treats
continuation-in-part applications
roughly the same as continuation
applications. That is, applicant is
permitted to file two continuation or
continuation-in-part applications of an
initial application without a petition
and showing. Applicant is also
permitted to file a third or subsequent
continuation or continuation-in-part
application with a petition and
showing. See § 1.78(d)(1)(i). The only
notable difference between the two,
apart from their definitions, is that an
applicant may file only a continuation
application of a divisional application
and not a continuation-in-part
application of a divisional application.
See § 1.78(d)(1)(iii). Nevertheless,
applicants may use continuation-in-part
applications to correct initial
applications under this final rule to the
extent they were used for this purpose
before this final rule. Furthermore, as
previously discussed, § 1.78(d)(1)(v) as
adopted in this final rule provides that
if an applicant files a continuation (or
continuation-in-part) application to
correct informalities rather than
completing an application for
examination under § 1.53, the applicant
may file ‘‘one more’’ continuation
application (or continuation-in-part
application) without there being a
requirement for a petition and showing
under § 1.78(d)(1)(vi). See
§ 1.78(d)(1)(v).
Comment 16: One comment suggested
that the Office should require applicants
to certify that no 35 U.S.C. 102(b) bar
applies for continuation-in-part
applications filed more than twelve
months from the earliest claimed date.
Response: Under § 1.56, applicant has
a duty to disclose to the Office all
information known to applicant to be
material to patentability including any
prior art under 35 U.S.C. 102(b). This
includes a reference with a publication
date more than one year prior to the
filing date of the continuation-in-part
application if at least one claim in the
continuation-in-part application is
drawn to the subject matter not
disclosed in the prior-filed application.
Applicant is required to file a newly
executed oath or declaration under
§ 1.63 upon the filing of a continuationin-part application. See § 1.63(e). The
oath or declaration under § 1.63 must
include a statement that the person
making the oath or declaration
acknowledges the duty to disclose to the
Office all information known to the
person to be material to patentability as
defined in § 1.56. See § 1.63(b)(3).
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Comment 17: One comment argued
that requiring applicant to identify
whether the claims are supported by the
specification before the examination is
unfair and unreasonable because it is a
legal issue that should be determined
during the prosecution. Another
comment suggested that the Office
should, at most, require applicant to
identify the differences between the
continuation-in-part application and the
prior-filed application. Another
comment suggested that when a
continuation-in-part application is filed,
the Office should require the applicant
to discuss whether the new matter
added to the specification is inventive
or based on ordinary skill. One
comment, however, supported the
requirement for a continuation-in-part
applicant to identify which claims are
disclosed in the prior-filed application
and thus are entitled to the earlier filing
date.
Response: Applicants are in the best
position to identify the effective filing
date of their claims. Thus, § 1.78(d)(3)
provides that if an application is
identified as a continuation-in-part
application, the applicant must identify
the claim or claims for which the
subject matter is disclosed in the
manner provided by 35 U.S.C. 112, ¶ 1,
in the prior-filed application. Any claim
that is not so identified will be treated
as only being entitled to the actual filing
date of the continuation-in-part
application, and subjected to prior art
based on the actual filing date of the
continuation-in-part application.
Whether any ‘‘new matter’’ is
inventive or based on ordinary skill is
not determinative of whether the claims
of the continuation-in-part application
are entitled to the filing date of the
prior-filed application. The test is
whether the original disclosure of the
prior-filed application provides
adequate support and enablement for
the claimed subject matter of the
continuation-in-part application in
compliance with the requirement of 35
U.S.C. 112, ¶ 1. See MPEP § 201.11, I,
Disclosure Requirement.
Comment 18: A number of comments
suggested that the rule changes
effectively eliminate the use of ‘‘bypass’’
continuing applications (i.e., an
application filed under 35 U.S.C. 111(a)
that claims benefit under 35 U.S.C. 120
or 365(c) of the filing date of an earlier
international application that did not
enter the national stage under 35 U.S.C.
371). The comments argued that a
bypass continuing application would be
counted as a continuing application
whereas a national stage submission
under 35 U.S.C. 371 would not. The
comments indicated that there are
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important reasons for filing bypass
applications and suggested that it is
unfair to treat bypass applications
differently than national stage
applications because in both
applications the examiner will be
examining the claims for compliance
with U.S. national law for the first time.
Consequently, a number of comments
recommended that the international
application should not be counted
toward the threshold for filing
continuing applications unless the
international application enters the U.S.
national stage, while other comments
recommended that the bypass
application should not be counted.
Response: The Office notes the
concerns expressed in the public
comment regarding the proposed
changes to § 1.78(d)(1). The Office has
modified proposed § 1.78(d)(1) in this
final rule to provide for certain
‘‘bypass’’ continuing applications.
Under § 1.78(d)(1)(iv), if a Demand has
not been filed and the basic national fee
has not been paid in the international
application, and the international
application does not claim the benefit of
any other nonprovisional application or
international application designating
the United States of America, the
applicant may file ‘‘one more’’
continuation application (or
continuation-in-part application) of
such international application without
there being a requirement for a petition
and showing under § 1.78(d)(1)(vi).
Specifically, § 1.78(d)(1)(iv) provides
that a continuation application or
continuation-in-part application is
permitted if the following conditions are
met: (1) The application claims benefit
under 35 U.S.C. 120 or 365(c) of a priorfiled international application
designating the United States of
America, and a Demand has not been
filed and the basic national fee
(§ 1.492(a)) has not been paid in the
prior-filed international application and
the prior-filed international application
does not claim the benefit of any other
nonprovisional application or
international application designating
the United States of America; (2) the
application is either a continuation
application as defined in § 1.78(a)(3) or
a continuation-in-part application as
defined in § 1.78(a)(4) that claims the
benefit under 35 U.S.C. 120, 121, or
365(c) of no more than three (rather than
two) prior-filed applications; and (3)
any application whose benefit is
claimed under 35 U.S.C. 120, 121, or
365(c) in such nonprovisional
application has its benefit claimed in no
more than two (rather than one) other
nonprovisional applications. This does
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not include any divisional application
that satisfies the conditions set forth in
§ 1.78(d)(1)(ii) or continuation
application that claims the benefit of
such divisional application and satisfies
the conditions set forth in
§ 1.78(d)(1)(iii).
For example, applicant may file a
third continuation application claiming
the benefit of an intervening (second)
continuation (or continuation-in-part)
application, the first ‘‘bypass’’
continuation (or continuation-in-part)
application, and the prior-filed
international application without a
petition under § 1.78(d)(1)(vi), if a
Demand has not been filed and the basic
national fee has not been paid in the
international application, and the
international application does not claim
the benefit of any other nonprovisional
application or international application
designating the United States of
America.
Comment 19: Several comments
questioned whether an international
application that designates the United
States of America and claims benefit to
a prior nonprovisional application
would be treated as a second
continuation application upon entry
into the U.S. national stage if a request
for continued examination is filed in the
nonprovisional application prior to
entering the national stage. Another
comment questioned whether a request
for continued examination could be
filed in a nonprovisional application if
a U.S. national stage application claims
benefit under 35 U.S.C. 120 or 365(c) to
the nonprovisional application. Several
comments suggested that if an
international application designating
the United States of America claims
benefit to a prior-filed nonprovisional
application, and a request for continued
examination is filed in the
nonprovisional application, then a
petition under § 1.78(d)(1)(vi) would be
required, in violation of PCT Rule 51bis,
in order to perfect entry of the
international application into the U.S.
national stage. The comments also
suggested that any refusal to grant such
a petition would violate the PCT
because there is no basis in the treaty for
refusing national stage perfection on
such grounds.
Response: The Office notes the
concerns expressed in the public
comment regarding the proposed
changes to §§ 1.78(d)(1) and 1.114 that
would permit an applicant to file only
one of the following: A continuation
application, a continuation-in-part
application, or a request for continued
examination, without any justification.
The Office has made modifications to
these proposed changes such that this
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final rule permits an applicant to file
two continuation applications or
continuation-in-part applications, plus a
single request for continued
examination in an application family,
without any justification. Therefore,
under this final rule, applicant is
permitted to have the national stage of
an international application designating
the United States of America claim the
benefit of a prior-filed nonprovisional
application in which a request for
continued examination has been filed
without a petition and showing. The
provisions of § 1.78(d)(1) are
independent of the provisions of
§ 1.114. The filing of a request for
continued examination in a
nonprovisional application does not
preclude a U.S. national stage
application from claiming the benefit of
the nonprovisional application.
Likewise, a U.S. national stage
application claiming the benefit under
35 U.S.C. 120 or 365(c) of a
nonprovisional application will not
preclude an applicant from filing a
request for continued examination in
the nonprovisional application.
Applicant may also file any additional
continuation or continuation-in-part
application or request for continued
examination with a petition and
showing. If an international application
that enters the U.S. national stage
contains or is amended to contain a
specific reference to a prior-filed
application that is not permitted by at
least one of §§ 1.78(d)(1)(i) through
(d)(1)(vi), the Office will refuse to enter,
or will delete if present, the specific
reference to the prior-filed application.
See § 1.78(d)(1). Furthermore, the
national stage application will be
treated as entitled only to the actual
international filing date of the national
stage application, and will be subject to
prior art based on the actual
international filing date.
Refusal to grant a petition under
§ 1.78(d)(1)(vi) (assuming such a
petition is necessary) would not prevent
an applicant from completing the
requirements for entry into the national
phase under 35 U.S.C. 371. The
requirements for entry of an
international application into the
national phase under 35 U.S.C. 371 are
set forth in 35 U.S.C. 371(c) and § 1.495.
The effect of a refusal to grant any such
petition would only be that the national
stage application would not be entitled
to the benefit of the filing date of the
nonprovisional application under 35
U.S.C. 120 and 365(c). Furthermore, the
necessity to file a petition under
§ 1.78(d)(1)(vi) in the national stage
application to obtain benefit to the
nonprovisional application would not
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violate PCT Rule 51bis. PCT Rule 51bis
does not govern the requirements that a
designated Office may impose for
recognition of domestic benefit claims.
Rather, the ability of a designated Office
to establish conditions for, and the
effect of, domestic benefit claims is
expressly provided for in PCT Article
8(2). PCT Article 8(2) states, in pertinent
part, that ‘‘[w]here, in the international
application, the priority of one or more
national applications filed in or for a
designated State is claimed, or where
the priority of an international
application having designated only one
State is claimed, the conditions for, and
the effect of, the priority claim in that
State shall be governed by the national
law of that State.’’
Comment 20: Several comments
suggested that the rules create an
anomaly. The comments argued that if
an application is first filed as a
nonprovisional application followed by
an international application claiming
benefit to the nonprovisional
application, and a request for continued
examination is subsequently filed in the
nonprovisional application, then a
petition under § 1.78(d)(1)(vi) would be
needed when the international
application enters the U.S. national
phase. The comments, however, further
argued that if the application is first
filed as a provisional application
followed by, one year later, concurrently
filed international and nonprovisional
applications both claiming benefit to the
provisional application, then a petition
under § 1.78(d)(1)(vi) would not be
needed when the international
application enters the U.S. national
phase even if a request for continued
examination was filed in the
nonprovisional application.
Response: The Office has made
modifications to the proposed changes
to §§ 1.78(d)(1) and 1.114 such that this
final rule permits an applicant to file
two continuation applications or
continuation-in-part applications, plus a
single request for continued
examination in an application family,
without any justification. Therefore,
under this final rule, applicant may
enter the U.S. national stage in an
international application designating
the United States of America claiming
the benefit of a prior-filed
nonprovisional application in which a
request for continued examination has
been filed without a petition and
showing. As discussed previously, the
provisions of § 1.78(d)(1) are
independent of the provisions of
§ 1.114. The filing of a request for
continued examination in a
nonprovisional application does not
preclude a U.S. national stage
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application from claiming the benefit of
the nonprovisional application.
Note that, in the first described
application chain, the international
application claims benefit to a
nonprovisional application under 35
U.S.C. 120 or 365(c) and therefore is a
‘‘continuing application’’ as defined in
§ 1.78(a). In the second described
application chain, the international
application is not a continuing
application as it only claims benefit to
the provisional application. In any
event, § 1.78(d)(1) as adopted in this
final rule would not require a petition
and showing for the national stage
application to claim the benefit of a
prior-filed application in which a
request for continued examination has
been filed.
Comment 21: One comment argued
that applicants who first file a
nonprovisional application followed by
a continuation-in-part application
would not be able to designate the
United States in any subsequently filed
international application without a
showing as to why the international
application could not have been filed
earlier. The comment argued that this
violates the PCT.
Response: The Office has made
modifications to the proposed changes
to § 1.78(d)(1) such that this final rule
permits an applicant to file two
continuation applications or
continuation-in-part applications, plus a
single request for continued
examination in an application family,
without any justification. Therefore,
under this final rule, applicant may file
an international application designating
the United States of America claiming
the benefit of two prior-filed
nonprovisional applications without a
petition and showing. Applicant may
also file any additional continuation or
continuation-in-part application or
request for continued examination with
a petition and showing. The petition
procedure under § 1.78(d)(1)(vi) applies
only to international applications that
have entered the U.S. national stage
after compliance with 35 U.S.C. 371.
Thus, the rule neither requires nor
provides for the submission of such
petitions in international applications
during the international phase. It is also
noted that under PCT Rule 4.9, the
designation of all states, including the
United States of America, in
international applications is automatic
upon filing of the PCT request.
Comment 22: Several comments
questioned whether the limitation on
the examination of claims in
nonprovisional applications under
§ 1.75(b) could be circumvented by first
filing an international application with
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as many claims as desired and then
entering the U.S. national phase after
the claims have been searched in the
international phase. The comments
suggested that the Office should
examine all claims in a national stage
application that were the subject of a
search and written opinion in the
international phase, particularly if the
United States Patent and Trademark
Office was the international searching
authority.
Response: The requirements of
§ 1.75(b) apply to national stage
applications under 35 U.S.C. 371 as well
as to applications filed under 35 U.S.C.
111(a). Thus, the rule cannot be
circumvented by utilizing the PCT
route. The fact that more than five
independent claims or more than
twenty-five total claims may have been
searched and even subjected to
international preliminary examination
in the international phase will not
entitle applicants to more than five
independent claims or more than
twenty-five total claims in the U.S.
national phase application without the
submission of an examination support
document. This is analogous to existing
practice under § 1.499, which permits
restriction of claims in a national stage
application for lack of unity
notwithstanding that such claims may
have been searched and subject to
international preliminary examination
in the international phase. Applying
§ 1.75(b) to national stage applications is
appropriate because prior art uncovered
during the international search often
necessitates the need to make
substantial amendments to the claims in
the national phase. Additionally, the
claims would need to be examined for
compliance with all substantive
requirements of U.S. national law.
Comment 23: One comment suggested
that the rules limiting continuing
applications would result in more
applicants filing international
applications and entering the U.S.
national stage in order to avoid onerous
restriction requirements. Another
comment suggested that the rules
limiting the examination of claims
might trigger increased usage of the PCT
and national stage entry into the U.S.
Response: Applicants are free to
choose whichever route they believe is
more advantageous for obtaining patent
protection in the United States, whether
through the PCT or through a direct
national filing under 35 U.S.C. 111(a).
Comment 24: A number of comments
requested that the Office should notify
the applicant in an Office action when
a continuing application is not available
under any one of the first three
conditions in § 1.78(d)(1). A number of
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comments stated that the refusal to enter
or to delete any references to prior-filed
applications that are not permitted
under § 1.78(d)(1) would place a heavy
burden on the Office.
Response: The changes to §§ 1.78 and
1.114 in this final rule are clearly set
forth in this final rule. Applicant and
his or her representative have the duty
to know the rules of practice when
prosecuting an application for patent
before the Office. Applicant should not
file a continuing application without
knowing whether it is proper. The
refusal to enter or to delete any
references to prior-filed applications
that are not permitted under § 1.78(d)(1)
would not place any additional burden
on the Office.
Comment 25: A number of comments
argued that the rule changes would
protract the examination process and
divert resources from examining
functions to administrative tasks. In
particular, the comments predicted that
the rule changes would increase the
number of petitions, including petitions
for filing additional continuing
applications and requests for continued
examination and petitions for
supervisory review of Office actions and
restriction requirements. Several other
comments argued that the delay in
prosecution of an application would
increase while decisions on petitions
under §§ 1.78(d)(1)(vi) and 1.114(g)
were debated and reviewed. Several
comments questioned whether the
Office would be adequately staffed with
enough personnel to handle the
onslaught of petitions, as well as further
review of decisions dismissing the
petitions. Several comments also argued
that any reduction in backlog would be
insignificant given that the Office would
grant some of the petitions for
additional continuing applications and
requests for continued examination.
Several comments suggested that the
proposed changes to the continued
examination practice will force
applicants to petition every improper
procedural requirement by examiners,
including restriction requirements,
finality and non-entry of after-final
amendments, in order to preserve
applicant’s rights. One comment stated
that applicants are likely to file
petitions, such as petitions addressing
the prematureness of a final rejection
under § 1.181, to save their one ‘‘asmatter-of-right’’ continuation or
continuation-in-part application or
request for continued examination.
Several comments stated that applicants
would petition almost all restriction
requirements, resulting in an increase in
the number of petitions filed. Another
comment stated petitions seeking
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review of restriction requirements
would be filed in order to determine
early in the prosecution cycle the
number of divisional applications that
must be filed to preserve patent rights.
Response: One of the Office’s goals is
to focus its limited patent examining
resources on the examination of new
applications, and thereby increase the
effectiveness of Office resources while
also reducing the backlog of
unexamined patent applications. The
requirements for seeking third and
subsequent continuing applications will
not have an effect on the vast majority
of patent applications. The changes
being adopted in this final rule,
however, will reduce the strain on the
Office’s patent examining resources,
which will allow for a better, more
timely examination of new applications.
The Office recognizes the amount and
type of resources needed to implement
the changes to §§ 1.78 and 1.114 being
adopted in this final rule. The authority
to decide petitions under
§§ 1.78(d)(1)(vi) and 1.114(g) has been
delegated to the Deputy Commissioner
for Patent Examination Policy (who may
further delegate this authority to
officials under the Deputy
Commissioner for Patent Examination
Policy). The Office is planning to
provide sufficient staff to handle the
projected number of petitions.
The Office provides the procedure
under § 1.181 for applicants to seek
review of requirements and objections
made by the examiner. If applicant finds
that a requirement or an objection made
in an Office action is procedurally
wrong, applicant should request
reconsideration or file a petition under
§ 1.181 to review the requirement or
objection. As an example, when
applicant challenges the finality of an
Office action as being premature, the
applicant should focus on whether the
Office action met the appropriate
standard for finality. The Office will
make every effort to decide the petitions
in a timely manner. Applicant, however,
should not file a continuing application
or a request for continued examination
in an effort to address improper
procedural requirements. Petitions for
supervisory review of Office actions and
restriction requirements will continue to
be decided by supervisory patent
examiners or other managers. Therefore,
examiners will not be diverted from the
examination process by these petitions.
Finally, it should be noted that
complaints about an Office action that
relate to the merits of patentability of
the claims must be addressed in an
appeal to the BPAI, and not in a petition
under § 1.181 for supervisory review,
even if the issues may be phrased in
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procedural terms. See Boundy v. U.S.
Pat. & Trademark Office, 73 U.S.P.Q. 2d
1468, 1472 (E.D. Va. 2004).
Comment 26: Several comments
stated that any resources saved via
implementation of these final rules
would be used for other filings
necessitated by the changes. Thus the
rule changes, according to the
comments, would increase the backlog
and pendency and add to the
administrative cost and burdens of the
Office. In particular, a number of
comments predicted that the number of
applications would increase because
applicants would file more of the
following: (1) Provisional applications;
(2) continuation applications rather than
requests for continued examination; (3)
reissue applications to perfect or
broaden claims; (4) reexamination
proceedings to have prior art
considered; (5) divisional applications
(because applicants are required to file
all divisional applications during the
pendency of the first application); (6)
multiple parallel applications that have
similar or the same disclosures; and (7)
continuing applications before the
effective date.
Response: The Office notes the
concerns expressed in the public
comment and has attempted to avoid
the possibility of increased filings
necessitated by modifying the proposed
changes. The Office has made
modifications to the proposed changes
to §§ 1.78(d)(1) and 1.114 such that this
final rule permits an applicant to file
two continuation applications or
continuation-in-part applications, plus a
single request for continued
examination in an application family,
without any justification. Also, under
this final rule, a divisional application
need not be filed during the pendency
of the application subject to a
requirement for restriction, as long as
the copendency requirement of 35
U.S.C. 120 is met. This final rule also
permits applicant to file two
continuation applications of a divisional
application plus a request for continued
examination in the divisional
application family, without any
justification. Therefore, the Office does
not expect any significant increase in
filings of applications. Specifically, the
Office does not expect that the number
of divisional applications would
increase in response to the changes
being adopted in this final rule because
applicants should have sufficient time
to determine whether to file a divisional
application for a non-elected invention
following a restriction requirement.
Furthermore, an increase in filings of
provisional applications will not place
additional burden on the Office’s patent
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examining resources because no
examination is provided in provisional
applications. The Office does not expect
its examining resources to be impacted
when applicants file continuation
applications rather than requests for
continued examination, or when
applicants file reissue applications and
reexamination proceedings rather than
continuing applications.
The changes being adopted in this
final rule do not encourage applicants to
file multiple applications with
patentably indistinct claims. Pursuant to
§ 1.78(f)(3), the Office may require
elimination of the patentably indistinct
claims from all but one of the
nonprovisional applications. If the
patentably indistinct claims are not
eliminated from all but one of the
applications, the Office will treat each
application as having the total of all of
the claims (whether in independent or
dependent form) for purposes of
determining whether an examination
support document is required by
§ 1.75(b). See § 1.75(b)(4). Moreover,
when an applicant (or assignee) files
multiple applications with the same
claimed filing or priority date, a
common inventor, and substantial
overlapping disclosures, the Office will
presume that the applications contain
patentably indistinct claims. See
§ 1.78(f)(2). The applicant must either
rebut this presumption or submit the
appropriate terminal disclaimers and
explain why two or more pending
applications containing patentably
indistinct claims should be maintained.
Once applicant recognizes that having
multiple applications that contain
patentably indistinct claims is not
needed, applicant would abandon the
applications or stop filing multiple
applications that have patentably
indistinct claims.
Comment 27: One comment stated
that a requirement for Director’s
approval to file a second or subsequent
continuing application or request for
continued examination would create a
disincentive for examiners to provide a
thorough examination, leaving the
burden on the applicant to prosecute the
application.
Response: The Office modified the
proposed provision that would have
limited applicant to one continuation or
continuation-in-part application or to
one request for continued examination,
without any justification. This final rule
allows applicant to file two
continuation or continuation-in-part
applications plus a request for
continued examination in an
application family, without any
justification. What is more, the Office
expects that limiting the number of
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continuing applications and requests for
continued examination that may be filed
without justification will encourage
both applicants and examiners to engage
in a more thorough prosecution and
examination earlier in the application
process. Examiners are professionals
who perform their duties in compliance
with patent laws, rules of practice, and
patent examining procedures set forth in
the MPEP. They are responsible for the
quality of their work product. There is
no reason why examiners would
provide lower quality examination in
response to the changes in this final
rule. In fact, this final rule is intended
to improve the quality of examination
by facilitating the examination of
applications that contain more than five
independent claims or twenty-five total
claims via the examination support
document.
Comment 28: A number of comments
stated that the Office should treat
continuing applications the same as
new applications and should not limit
the available protection because
applicants who file continuing
applications pay the same filing fees as
those who file a new application. One
comment argued that continuing
applications should not be limited
because they claim ‘‘new inventions’’ in
that they pursue broader claims, a
different invention, or an improvement,
and the purpose of patents is to protect
inventions, not to facilitate examination.
One comment argued that continuation
and continuation-in-part applications
are legitimate because the statutes that
create and authorize ‘‘continuation
practice’’ do not distinguish such
applications from ‘‘new’’ applications in
terms of their importance, nor do they
limit the resources that are committed to
them.
Response: The former unrestricted
continued examination practice was
impairing the Office’s ability to examine
new applications. As a result, the Office
is modifying continued examination
practice in this final rule to address the
backlog of unexamined new
applications. Under this final rule,
therefore, if the amendments,
arguments, or evidence sought to be
entered could have been previously
submitted in the initial application, two
continuing applications, and a request
for continued examination, applicants
are encouraged to make such
submissions early rather than wait to do
so in another continuing application or
request for continued examination. That
way, the examiner would have the
information earlier to make the
patentability determination. If applicant
could not have submitted them earlier,
applicant may file a third continuing
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application with a petition and showing
under § 1.78(d)(1)(vi) or a second
request for continued examination with
a petition and showing under § 1.114(g).
Comment 29: A number of comments
stated that the rule changes would not
permit applicants to file even a single
continuation or continuation-in-part
application, when the applicant filed a
request for continued examination in
the initial application.
Response: The Office has made
modifications to the proposed changes
to §§ 1.78(d)(1) and 1.114 such that this
final rule permits an applicant to file
two continuation applications or
continuation-in-part applications, plus a
single request for continued
examination in an application family,
without any justification. Applicant
may also file any additional
continuation or continuation-in-part
application or request for continued
examination with a petition and
showing as to why the amendment,
argument, or evidence sought to be
entered could not have been submitted
earlier. The provisions of § 1.78(d)(1) are
independent of the provisions of
§ 1.114. The filing of a request for
continued examination in the initial
application does not preclude applicant
from filing a continuing application of
the initial application.
Comment 30: Several comments
objected to the Office’s proposal that a
petition under § 1.78 to accept an
unintentionally delayed claim under 35
U.S.C. 120, 121, or 365(c) will not be
granted in an application in which a
request for continued examination has
been filed. One comment argued that
applicant would lose substantial rights
if the Office dismisses a petition to
accept an unintentionally delayed claim
filed after a request for continued
examination has been filed in the priorfiled application.
Response: The Office has made
modifications to the proposed changes
to §§ 1.78 and 1.114 such that the
provisions of § 1.78(d) as adopted in this
final rule are independent of the
provisions of § 1.114. Thus, § 1.78(e) as
adopted in this final rule does not
provide that a petition to accept an
unintentionally delayed claim under 35
U.S.C. 120, 121, or 365(c) will not be
granted in an application in which a
request for continued examination has
been filed.
Comment 31: A number of comments
stated that the rule changes would not
permit applicants to consolidate two
applications into a single continuationin-part application, which is contrary to
the goal of reducing the number of
applications.
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Response: The Office has made
modifications to the proposed changes
such that this final rule permits an
applicant to file two continuation
applications or continuation-in-part
applications, plus a single request for
continued examination in an
application family, without any
justification. Therefore, applicant is
permitted to file a continuation-in-part
application that claims the benefit of
two prior-filed applications without a
petition and showing under
§ 1.78(d)(1)(vi). If applicant thinks that a
third or subsequent continuation-in-part
application is necessary for
consolidation purposes, then such
applicant may file a petition and
showing under § 1.78(d)(1)(vi) to obtain
the additional filing.
Comment 32: Several comments
argued that applicants need continuing
applications and requests for continued
examination because the reissue
procedure does not give applicants the
same flexibility.
Response: Continuing applications
and requests for continued examination
are not, by statute, available for the
same purposes as reissue applications.
Continuing applications and requests
for continued examination are available
to an applicant during the prosecution
of an initial application to enable an
applicant to secure protection on the
full scope of an invention with the
correct benefit claim. See 35 U.S.C. 120,
121, and 365(c). By contrast, the reissue
procedure is available to an applicant
after a patent has issued to permit an
applicant to correct errors made during
the prosecution of the original
application without any deceptive
intention and to enlarge the scope of the
claims of the original patent if the
reissue application is filed within two
years from the grant of the original
patent. See 35 U.S.C. 252. Furthermore,
this final rule permits applicant to file
two continuation or continuation-inpart applications plus one request for
continued examination in an
application family, without any
justification. These available filings
provide sufficient flexibility.
Comment 33: One comment suggested
that the rule changes would be contrary
to patent harmonization goals. One
comment argued that the rule changes
would hurt foreign applicants because
they would be required to assess the
degree of protection much earlier than
they normally would, resulting in
retaliatory challenges abroad for U.S.
applicants.
Response: The Office did not receive
any comments from any foreign patent
office or authority. The Office does not
expect any retaliation from other
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countries or any adverse impact. Many
countries do not have flexible practices
for filing continuation applications,
continuation-in-part applications, and
requests for continued examination.
Comment 34: A number of comments
argued that the rule changes would
increase the cost to applicants for
prosecuting each application, and for
filing more multiple parallel
applications, divisional applications,
appeals, and petitions under §§ 1.78 and
1.114. Several comments argued that the
rule changes would cause applicants to
incur excessive expenses before
determining whether the invention is
commercially viable. One comment
argued that the Office would cause
applicants to perform patent searches in
order to have a good working knowledge
of the prior art to draft claims for full
coverage. One comment argued that the
rule changes would increase
practitioner fees because applicants
must submit more carefully drafted
claims and replies (estimated five
additional hours per case for drafting all
possible claims, at an average of 150
dollars per hour, the additional cost
would be 750 dollars per application or
200 million dollars for 317,000
applications). One comment estimated
that the attorney cost in preparing an
application would at least double if not
increase by a factor of ten, which would
place new applications out of reach of
small businesses. Several comments
argued that it would be practically
impossible or at least much more
difficult, expensive and time-consuming
to obtain patent protection for the full
scope of inventions, especially for large,
complex inventions. One comment
argued that the rule changes are
extremely burdensome for patent
applicants and practitioners to maintain
and develop a cohesive patent strategy.
One comment stated that the rule
changes were very complex and fraught
with ambiguity and would create
difficulties and misunderstandings for
applicants and practitioners in the
implementation, possibly resulting in
the loss of inventors’ rights and an
increase in practitioners’ exposure to
malpractice.
Response: The Office encourages
applicants to diligently prosecute the
initial application, two continuation or
continuation-in-part applications, and
one request for continued examination,
without a petition and showing, so that
applicants do not need to file a petition
and showing to secure a third or
subsequent continuation or
continuation-in-part application or a
second or subsequent request for
continued examination and incur the
costs associated with these filings. The
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patent system best serves the interests of
all parties, including the public, when
applicants and their representatives are
diligent in drafting the claims and
replies. Applicant would get a quality
patent with desirable claim coverage.
The Office would not waste patent
examining resources to examine
applications that are not diligently
prepared. Even prior to the changes
being adopted in this final rule,
applicants and their representatives had
certain duties when prosecuting
applications in front of the Office.
Applicant is required to submit fully
responsive replies to Office actions (see
§ 1.111) and to particularly point out
and distinctly claim what the applicant
regards as his or her invention (see 35
U.S.C. 112, ¶ 2). Furthermore, if
applicant’s lack of knowledge of the
prior art (or lack of diligence) causes
unnecessary delay or needless increase
in the cost of prosecution before the
Office, applicant would be violating
§ 10.18(b)(2)(i).
If applicants need more time to
determine the aspect of the invention
for which patent protection should be
sought, applicant may file a request for
deferred examination under § 1.103(d)
upon filing the initial application.
Applicant should have sufficient time to
determine whether to file a divisional
application for a non-elected invention
because a divisional application is not
required under this final rule to be filed
during the pendency of the initial
application, as long as the copendency
requirement of 35 U.S.C. 120 is met. If
applicant disagrees with the examiner’s
rejections, it would be more effective to
appeal the rejections than to file a
continuing application or a request for
continued examination. It should not be
burdensome for applicants and their
representatives to prosecute diligently
by drafting claims that particularly
point out and distinctly claim the
subject matter which the applicant
regards as his or her invention, as well
as replies that are fully responsive to the
Office actions.
The requirements for seeking third
and subsequent continuing applications
in this final rule will not have an effect
on the vast majority of patent
applicants. Approximately 342,600
nonprovisional patent applications
(excluding plant and design
applications) were filed in the Office in
fiscal year 2006. Of those applications,
approximately 32,700 were identified as
continuation applications,
approximately 15,700 were identified as
continuation-in-part applications, and
approximately 20,600 were identified as
divisional applications. In addition,
approximately 74,700 requests for
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continued examination were filed in the
Office in fiscal year 2006. The
requirements for seeking a third or
subsequent continuation or
continuation-in-part application or a
second or subsequent request for
continued examination would only have
affected 2.7 percent of these filings
(applications or requests for continued
examination). As discussed previously,
the changes being adopted in this final
rule do not give any advantage to those
applicants who file multiple parallel
applications containing patentably
indistinct claims. See §§ 1.75(b)(4) and
1.78(f).
Comment 35: One comment argued
that the rule changes would encourage
the courts to have a more liberal view
on the doctrine of equivalents. Another
comment argued that the rule changes
limiting continuation practice takes
away the right of the patentee to use
continuing applications to secure patent
protection for equivalents of the
invention claimed in the prior-filed
application, citing Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co.,
344 F.3d 1359, 68 U.S.P.Q.2d 1321 (Fed.
Cir. 2003) (Festo X).
Response: The doctrine of equivalents
is a patent law concept relating to
infringement which protects patentees
against efforts of copyists to evade
liability for infringement by making
only insubstantial changes to a patented
invention. See Festo Corp. v. Shoketsu
Kinzodu Kogyo Kabushiki Co., 535 U.S.
722, 726–27, 62 U.S.P.Q.2d 1705, 1709
(2002) (Festo VIII). The case law on the
doctrine of equivalents has been well
established since Warner-Jenkinson Co.
v. Hilton Davis Chem. Co., 520 U.S. 17,
41 U.S.P.Q.2d 1865 (1997) and Festo
VIII. A concurrence in Festo X noted
that the demise of the flexible doctrine
of equivalents ‘‘rule’’ may encourage
applicants to (inter alia) use
continuation strategies to avoid the lack
of flexibility that now exists in the
doctrine of equivalents. See Festo X, 344
F.3d at 1375, 68 U.S.P.Q.2d 1332. This
concurrence in Festo X, however, was
not espousing some ‘‘right’’ of the
patentee to use continuing applications
to maintain the doctrine of equivalents,
but was simply noting that applicants
now use continuing application practice
as a substitute for a flexible doctrine of
equivalents.
The Office is concerned that
practitioners and applicants may indeed
be increasingly using continuing
applications not to advance prosecution
but to compensate for changes in the
law of the doctrine of equivalents. Such
practices would appear to be likely to
contravene § 10.18(b)(2)(i), under which
a party presenting a paper to the Office
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is certifying that the paper is not being
presented to cause unnecessary delay or
needless increase in the cost of
prosecution before the Office. Under
Festo X, a narrowing amendment gives
rise to a presumption that equivalents
not covered by the literal language of
the claims have been foregone.
Permitting two continuing applications
plus a request for continued
examination in any one of the initial
application or two continuing
applications as of right should in
general assure that applicants have an
adequate chance to advocate to the
examiners that an amendment is
unneeded. Beyond that, the Office is
concerned that applications may be
continued, rather than disputes on the
need for amendment being appealed, for
the purpose of delay. A requirement that
an applicant at that stage be prepared to
justify his or her need for an additional
continuing application is reasonable in
these circumstances.
Comment 36: A number of comments
suggested that the rule changes are
arbitrary and capricious, premature,
imprudent and ill-advised. A number of
comments argued that the Office has no
rational basis for the rule change, and
has not provided sufficient
explanations, data or evidence to justify
the rule changes and to show that the
rule changes will actually improve the
backlog of applications, the quality of
examinations, overall examination
efficiency, quality of patents, and
pendency. In addition, the comments
asserted patents would be harder to
enforce and litigate because all relevant
prior art may not have been considered.
One comment stated that the Office
does not have a pendency problem
because the average pendency is within
zero to three years. One comment
argued that the Office provides no
studies to show that businesses are
being harmed due to delayed
prosecution. One comment argued that
reducing the backlog is not an
appropriate reason for limiting the
number of continuing applications and
requests for continued examination as a
matter of right. Several comments
argued that the Office has not identified
continuation applications as a major
source of the backlog, and therefore, the
rule changes would have limited impact
on the backlog. One comment pointed
out that second and subsequent
continued examination filings make up
only a small percentage of the total
number of continued examination
filings. Several comments alleged that
the Office’s statistics are misleading and
the rule changes would only eliminate
at most five to ten percent of the
continuation applications because the
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Office should not have included
‘‘involuntary’’ divisional applications
and requests for continued examination.
One comment argued that the Office
provided no statistical data showing the
percentage of applicants that ‘‘misuse’’
the continued examination practice as
alleged. One comment also suggested
that although the Continuing
Applications Proposed Rule cites to data
regarding the total number of
continuations and the consequential
burdens imposed on examiners, no
analysis is provided as to the grounds
for filing these applications and whether
those grounds constituted ‘‘abuse.’’
Several comments argued that there is
no indication that the Office has
conducted any serious analysis of how
or why requests for continued
examination and continuation
applications are used by applicants. The
comments suggested the following: A
suitable analysis would involve review
of prosecution histories of patents that
were issued from a continuation
application or a request for continued
examination and determination of
whether such patents could have issued
if the rule changes were in place; and if
such patents would not have issued, the
Office should explain how such a loss
of rights is consistent with the goals of
the patent system. A number of
comments asserted that the rule changes
should be narrowly tailored to only
those few applicants who intentionally
delay the conclusion of examination
rather than adversely impacting all
applicants. A number of comments
suggested that the Office should
conduct a pilot program on the changes
and report the results to the public prior
to implementing the rule changes.
Several comments further argued that
the Office has not identified any study
showing that restricting applicants to a
single continued examination
opportunity would satisfactorily address
its problems without causing substantial
harm to the protection of innovation or
the patent examining process. Several
comments alleged that the Office has
not sufficiently considered the effect of
the rule changes on U.S. applicants and
the U.S. economy and suggested that
further study is needed because the
ability to file multiple continuing
applications helps U.S. applicants to
protect their inventions against foreign
competitors and the rule changes would
cause further outsourcing of American
manufacturing and loss of American
jobs.
Several comments, however,
supported the rule changes. The
comments provided the following
reasons why the rule changes would be
appropriate: (1) They would improve
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the Office’s productivity, enhance
patent quality, and eliminate growing
abuses in the patent prosecution
process, which would accelerate
innovation, especially in the software
and hardware technologies that have
fast technology evolution and short
product life cycle; (2) the rule changes
would help the Office reduce backlog
and pendency because they would
reduce the ancillary loads on the
examination process so that examiners
can focus on important core issues, and
the Office could focus its limited
examining resources on faster
examination of new applications; (3) the
rule changes appropriately address
those few applicants who
disproportionately contribute to the
backlog and provide applicants with the
ability to file appropriate continued
examination filings and multiple
opportunities to present claims and
arguments; (4) applicant may correct
appropriate mistakes (including by
broadening claims) through the reissue
process; (5) by eliminating long chains
of continued examination filings, the
rule changes would provide earlier and
greater legal certainty as to the scope of
patent rights, reduce wasteful litigation,
and encourage negotiations between
patent holders and others; (6) the rule
changes would likely promote
confidence in U.S. patents, stimulate
innovation, enhance competition, and
increase consumer welfare; and (7) the
rule changes would help to deter
applicants from strategically using the
continued examination practice to
disadvantage competitors and their
licensees, and would prevent applicants
from keeping continuation applications
pending for extended periods of time so
that they can monitor the development
of the market and modify their claims to
cover their competitors’ products.
Response: In fiscal year 2006, the
average pendency to first Office action
was 22.6 months for the entire Patent
Examining Corps. The average was
much higher in certain areas (e.g., in
Technology Center 2100 (computer
architecture, software and information
security) the average pendency to first
Office action was 30.8 months, and in
Technology Centers 3620 and 3690
(electronic commerce) the average
pendency to first Office action was 43.9
months). As several comments noted,
long pendency of patent applications is
problematic in some industries (e.g.,
computer software and hardware
technologies) where product life cycles
are short and new improvements can
quickly make the technology obsolete.
The Office has the authority and
responsibility to establish regulations
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that shall govern the conduct of
proceedings in the Office and facilitate
and expedite the processing of patent
applications. See 35 U.S.C. 2(b)(2). The
Office has the responsibility to take
appropriate action to improve
efficiency, patent quality and pendency.
The Office does not expect that the
changes being adopted in this final rule
alone will be sufficient to address the
growing backlog of unexamined patent
applications. The Office is
implementing many initiatives to
improve efficiency in the examination
process and quality of patents.
Continued examination filings divert
the Office’s limited examining resources
from the examination of new
applications. One of the Office’s goals is
to focus the limited examining resources
on the examination of new applications.
The rules do not place an absolute limit
on the number of continued
examination filings. The Office
recognizes there are appropriate reasons
for applicant to file a continuing
application or request for continued
examination. Under this final rule,
applicant is permitted to file the initial
application, two continuing
applications, and a request for
continued examination in an
application family, without any
justification. Thus, applicant has
sufficient opportunities to present
claims, amendments, arguments,
evidence, and prior art during the
prosecution of the initial application,
two continuing applications, and a
request for continued examination. An
applicant who considers this to be
insufficient may file a third or
subsequent continuing application or
second or subsequent request for
continued examination with a petition
and showing as to why the amendment,
argument, or evidence sought to be
entered could not have been previously
submitted. If the amendment, argument,
or evidence can be submitted earlier in
the prosecution process, applicant is
required to do so, rather than delay the
prosecution and waste the Office’s
patent examining resources on a
prosecution that is not focused. The
examination process is more efficient
when the applicant diligently
prosecutes the application so that the
examiner has all of the relevant
information, including amendments,
evidence, arguments, and prior art as
early as possible. Most applicants who
prosecute diligently will not need to file
a third or subsequent continuing
application. Reviewing the prosecution
histories of patents, conducting pilot
programs, publishing green papers, etc.,
would not show all of the reasons why
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applicants would file multiple
continued examination filings.
Applicants could have different reasons
for filing continuation applications,
continuation-in-part applications and
requests for continued examination. The
rules appropriately provide applicant
the opportunity to show why a third or
subsequent continuing application or
second or subsequent request for
continued examination is needed. The
comments do not provide any
persuasive data or evidence that shows
how the rule changes, or any restrictions
on the continued examination filing
practice, would have a negative impact
on the quality of patents, the U.S.
economy, or innovation.
As discussed previously,
approximately 342,600 nonprovisional
patent applications (excluding plant and
design applications) and approximately
74,700 requests for continued
examination were filed in the Office in
fiscal year 2006. The requirements for
seeking a third or subsequent
continuation or continuation-in-part
application or a second or subsequent
request for continued examination
would only have affected 2.7 percent of
these filings (applications or requests for
continued examination). The Office did
not include divisional applications in
this analysis. The Office included
requests for continued examination
because when an applicant files a
request for continued examination, the
examiner reopens the prosecution of the
application and conducts another
substantive examination similar to a
continuation application.
Comment 37: Several comments
argued that the amount of resources
spent on additional continuing
applications or requests for continued
examination is not as high as asserted
because continuation applications and
requests for continued examination take
less of the examiner’s time than new
applications since the examiner is
already familiar with the prior art,
issues, and subject matter of the
application.
Response: The Office expects that
limiting the number of continuing
applications and requests for continued
examination that may be filed without
justification will encourage both
applicants and examiners to focus on
‘‘getting it right the first time.’’ In any
event, examiners are given the same
amount of time to examine a continuing
application or request for continued
examination as a new application.
Certain continuing applications and
requests for continued examination
could have more complex issues than a
new application, such as evaluating new
evidence in a biotechnology application.
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Any reduction in the number of
continuing applications and requests for
continued examination would increase
the Office’s ability to focus its patent
examining resources on the examination
of new applications.
Comment 38: Several comments
asserted that the premise that expedited
examination is more important than
protection of inventor’s rights is faulty.
Response: The Office did not state
such a premise. Applicants may seek
full protection of their inventions under
this final rule, which does not place any
absolute limits on the number of
continuing applications and requests for
continued examination. Limiting the
number of continuing applications and
requests for continued examination that
may be submitted without justification
is not counter to the protection of an
inventor’s rights.
Comment 39: Several comments
predicted that the rule changes would
decrease the Office’s revenue due to the
decrease in continuing applications and
requests for continued examination.
Response: The Office’s goal is to
utilize its patent examining resources
more efficiently to reduce backlog and
improve pendency. In exchange for
greater efficiency, the Office expects
there would be some decrease in
revenue as the number of continued
examination filings declines, as the
comment indicates. But, this final rule
is not being implemented with a view
toward revenue; instead, it is being
implemented to improve the patent
examination process.
Comment 40: A number of comments
argued that there is no public notice
problem. The comments argued that
most applications (ninety percent) are
published, the prosecution of the
published applications is open to the
public, and competitors are already able
to analyze a file history to determine the
broadest range of claim protection that
may be granted in a patent of a
continuing application. Several
comments suggested that members of
the public could prevent infringement
by identifying the novel inventions in
the disclosure and avoiding those
inventions in their practices. Several
comments, however, noted that
publication of applications is not
sufficient to provide public notice of
what the patentee will ultimately claim
because a patent may eventually issue
with broader or significantly different
claims than those published and any
delays at the Office will perpetuate
uncertainty as to the scope of the
eventual patent.
Response: The Office agrees that the
publication of an application is not
sufficient notice of the scope of
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protection afforded by an eventual
patent because the claims have not been
determined to be patentable at the time
of publication. Asking the public to
determine the broadest range of claim
protection and to prevent infringement
based on the publication of an
application would defeat the purposes
of patent examination and 35 U.S.C.
112, ¶ 2. The patent claims provide the
public with notice of the patent
protection, not the disclosure of an
application.
Comment 41: A number of comments
stated that the current patent law
already contains its own solution to the
problem of long chains of continuing
applications. The comments argued that
filing and maintenance fees and the
twenty-year patent term provision
discourage applicants from filing
continuing applications. Several
comments argued that the Office is
acting prematurely because the recent
changes (e.g., the Office electronic filing
system, the increase in hiring and fees,
court decisions on doctrine of
equivalents, the twenty-year patent term
provisions, and publication of
applications) should be sufficient to
reduce the backlog and improve public
notice. A number of comments alleged
that the doctrine of prosecution laches
is sufficient to address abuses. One
comment argued that the Office should
not be concerned with enforcement
issues and the problem with public
notice should not be a reason for the
rule changes. Several comments argued
that the Office’s concern over public
notice is misplaced because the notice
function of claims is limited to
published or patented claims and it
does not extend to any future claims
that might arise. Several comments,
however, noted that even with the
twenty-year patent term provisions,
unrestricted continued examination
practice still gives applicants incentives
to keep continuing applications pending
after the issuance of a patent so that the
applicants can monitor the industry
development and capture other
companies’ products by changing the
scope of the claims in the continuing
applications.
Response: The percentage of
continued examination filings did not
decrease after the implementation of the
twenty-year patent term provision of the
Uruguay Round Agreement Act (Pub. L.
103–465, 108 Stat. 4809 (1994)). Thus,
the twenty-year patent term provisions
do not discourage applicants from filing
continued examination filings. As
discussed previously, this final rule is
not intended to address extreme cases of
prosecution laches or to codify Bogese
II. Examiners already have the authority
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(with a Technology Center Director’s
approval) to make a rejection on the
grounds of prosecution history laches.
See MPEP section 2190. Some of the
reasons cited by the comments as to
why an indefinite number of continuing
applications is needed suggest that
continuing applications may be used for
purposes of delay more commonly than
could be effectively addressed by the
Office’s application of its equitable
prosecution history laches authority.
Moreover, even where strategies of
delay are not deliberately pursued, the
lack of reasonable requirements on the
use of continued examination practice
may act as a disincentive to the
examiner and applicant taking the most
effective steps to reach conclusion.
The Office did not place a per se limit
on the number of continuing
applications and requests for continued
examination. The rules require
applicant to show why a third or
subsequent continuing application or
second or subsequent request for
continued examination is necessary to
advance prosecution. The Office
recognizes both the adverse effects of
unrestricted continued examination
practice, and the appropriate uses of
continued examination filings. The
Office has sought to draw a reasonable
balance in order not to discourage
appropriate uses of continued
examination filings while providing a
regulatory setting in which unnecessary
prolongation of proceedings can be
avoided. The changes being adopted in
this final rule are appropriately tailored
to permit applicants to file the initial
application, two continuation or
continuation-in-part applications, and a
request for continued examination in
any one of these three applications
without any justification. An applicant
who considers this to be insufficient
may file any additional continuation or
continuation-in-part application or
request for continued examination with
a petition and showing as to why the
amendment, argument, or evidence
sought to be entered could not have
been submitted earlier. The changes in
this final rule will also permit the Office
to focus its limited resources on
examination of new applications in
order to reduce the backlog of
unexamined applications.
Comment 42: One comment argued
that the Office’s assertion that multiple
patents tend to defeat the public notice
function of patent claims does not
justify the rule changes because the
restriction practice tends to increase the
number of patents. One comment
argued that the Office is making
unsupported assumptions that: (1) The
possible issuance of multiple patents
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arising from continuing applications
tends to defeat the public notice
function of patent claims; and (2) the
public is left uncertain as to what a set
of patents resulting from the initial
application will cover when multiple
applications with patentably indistinct
claims are filed.
Response: Restriction practice
encourages applicant to file a single
application for each patentably distinct
invention. The public notice function of
patent claims is undermined, however,
when multiple patents together claim
only one patentable invention (i.e., the
patents contain patentably indistinct
claims). In such case, applicant should
file a single application claiming one
patentable invention rather than
multiple applications claiming the same
patentable invention. The Office is not
making unsupported assumptions that
the possible issuance of multiple
patents arising from continuing
applications tends to defeat the public
notice function of patent claims, and
that the public is left uncertain as to
what a set of patents resulting from the
initial application will cover when
multiple applications with patentably
indistinct claims are filed. See, e.g., To
Promote Innovation: The Proper
Balance of Competition and Intellectual
Property Law and Policy, Ch. 4 at 26–
31 (Federal Trade Commission 2003);
Lemley and Moore, Ending Abuse of
Patent Continuations, 84 B.U. L. Rev. at
100 (eliminating continuing application
practice would be consistent with the
policy goal of giving adequate notice
about what is and is not covered by a
patent).
Comment 43: Several comments
predicted that the rule changes would
discourage public disclosure of
technology, thereby hurting industrial
growth and innovation. Several
comments argued that by limiting an
applicant’s ability to claim everything
that is disclosed in the application, the
rule changes would cause the applicant
to submit more narrow disclosures to
avoid inadvertent dedication of the
subject matter to the public (citing
Johnson & Johnston Associates, Inc. v.
R.E. Service Co., 304 F.2d 1235, 62
U.S.P.Q.2d 1225 (Fed. Cir. 2002) (en
banc)). Several comments noted that the
rule changes would force applicants to
delay filing until all foreseeable
information has been obtained or forego
continuation-in-part filings that contain
additional information. Several
comments stated that small entities that
have limited resources would not
disclose alternative embodiments or
would file applications with narrow
disclosures to avoid restriction
requirements. Several comments
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averred that inventors would delay the
filing of applications until after clinical
or market testing is concluded, a
potentially commercially viable product
is identified, or other refining of the
invention is completed. The comments
also predicted that some inventors
would keep the invention secret from
the public and/or limit the scope of the
disclosure to avoid dedicating
potentially commercial embodiments to
the public. One comment argued that
the Office is making an unsupported
assumption that continuing applications
and multiple applications containing
patentably indistinct claims impose a
burden on innovation. One comment
argued that applicants would file
multiple applications having divergent
subject matter rather than a single
application and applicants would omit
certain concepts from the applications.
One comment stated that the prior art
complications caused by the inability to
claim priority of an earlier filed
application through intermediate
applications would severely curb
disclosure because applicants would
avoid creating their own prior art under
35 U.S.C. 102(b) on a possible important
commercial embodiment. One comment
stated that the current continued
examination practice encourages early
disclosure of multiple embodiments of
inventions developed through the
iterative design process. One comment
stated that large applications that
disclose everything are good and
advance the Office’s mission. One
comment argued that the proposed rule
changes to the examination of claims
will force applicants to file applications
that incorporate secondary features into
their own separately filed application.
One comment argued that the new rules
would result in omnibus filings on
anything and everything.
Response: The Office has made
modifications to the proposed rules
concerning both continuing applications
and examination of claims practices.
First, this final rule permits an applicant
to file two continuation applications or
continuation-in-part applications, plus a
single request for continued
examination in an application family,
without any justification. Second, this
final rule permits applicants to present
more than five independent claims or
more than twenty-five total claims in an
application if applicant files an
examination support document before
the first Office action on the merits of
the application. Taken together, the
changes to continuing application and
examination of claims practices adopted
in this final rule permit applicant to file
as many claims as desired in one
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application and give applicant sufficient
opportunity to seek appropriate
protection for the disclosed invention.
Accordingly, the changes being adopted
in this final rule do not place a per se
limit on the number of claims presented
in an application, nor do they place a
per se limit on the number of continuing
applications and requests for continued
examination available in an application
family. The changes being adopted in
this final rule likewise do not give any
advantage to those applicants who file
multiple applications that contain
patentably indistinct claims because
such applicants would be required to
identify the multiple applications that
contain patentably indistinct claims.
See §§ 1.75(b) and 1.78(f).
The changes adopted in this final rule
will not discourage applicants from
filing patent applications because the
substantive criteria for entitlement to a
patent and the basic incentives for a
patent (exclusive rights) have not
changed. Whether applicants file
narrow or broad disclosures, the
changes in this final rule will reduce
uncertainty with respect to what the
applicant is claiming as the invention.
The Office also does not expect
applicants to delay the filing of an
application because any commercial
activities and public disclosures that
occurred more than one year prior to the
filing of an application would still be
considered prior art under 35 U.S.C.
102(b). The changes being adopted in
this final rule simply require applicants
to prosecute their applications
diligently and submit amendments,
argument, and evidence early in the
prosecution of the initial application,
two continuing applications and a
request for continued examination. As
previously discussed, applicant has
sufficient time to determine whether to
file a divisional application. If applicant
needs more time to determine which
aspect of the invention to seek
protection for, applicant may file a
request for deferral of examination
under § 1.103(d).
Comment 44: Several comments
alleged that the rule changes would
have a significant adverse impact on
applicants if the first-to-file system is
adopted because applicants would need
to file more continuing applications to
protect their inventions because
applicants would need to file as soon as
possible with broadly conceptualized
disclosures and subsequently file
continuing applications (e.g.,
continuation-in-part applications) on
the improvement or detailed
embodiments.
Response: The United States currently
does not have a ‘‘first inventor-to-file’’
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standard. Other countries that have a
‘‘first inventor-to-file’’ standard have
less flexible continued examination
practice than the United States. For
example, the Japan Patent Office does
not permit continuation-in-part
applications. Under the JPO practice,
applicant may only submit an
application on an improvement as a
new application. The Office will
continue to consider the issues related
to the ‘‘first-to-invent’’ standard and the
‘‘first inventor-to-file’’ standard in
determining the rights to a patent in the
context of international harmonization
efforts.
Comment 45: A number of comments
argued that the rule changes would
disproportionately impact small entities
including universities, start-up
companies, biotechnology companies,
and public health industry because they
are more likely to file continuing
applications and requests for continued
examination and have less resources.
The comments provided the following
reasons: (1) The proposed rule would
require significant expenses early in the
prosecution of the application that
would cause small entities and
independent inventors economic
hardship; (2) the rule changes would
encourage large companies that have
more financial resources to ‘‘steal’’
inventions from the small entities
because the increased cost of obtaining
patent protection would prevent small
entities from obtaining full protection of
their inventions and cause many small
entities not to seek patent protection; (3)
small entities need the flexibility to
respond to changing conditions by
refining claims and they cannot afford
up-front parallel filings as large
companies can; (4) independent
inventors and small entities need the
ability to file multiple continued
examination filings to spread the costs;
(5) the rule changes could stifle the
building of patent portfolios for small
companies and cause a reduction of
capital investment in these companies
and in new technologies; (6) applicants
should be permitted to get a patent on
the allowed claims and then continue to
prosecute the broader or rejected claims
or to claim subject matter not previously
claimed in a continuing application, in
order to bring technologies to the market
sooner, which would permit small
entities to attract investors and obtain
financing for further product
development and patent prosecutions;
(7) continued examination filings are
more likely needed in complex fields
like biotechnology because examiners
are less likely to comprehend the
invention fully in the limited time
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allotted for the initial search and
examination and more likely to make
restriction requirements, and applicants
need additional opportunities to address
technical issues arising during
prosecution and submit evidence and
clinical testing data; (8) companies in
the life sciences need continued
examination filings to obtain multiple
patents that protect innovations and
improvements that arise over the long
time period of research and
development, clinical testing, and the
Food and Drug Administration (FDA)
approval process; (9) in biotechnology,
applicants may not know at the time of
filing which embodiments of the
invention have commercial value or
how a competitor may attempt to copy
the invention or circumvent the patent.
One comment that supports the rule
changes noted that large entities also
operate within limited filing budgets,
and the effects of the rules will apply
across the board because any applicant
must decide what level of filing activity
it can reasonably afford, and make filing
decisions accordingly. The comment
further stated that small entities already
receive a fifty percent discount on fees
and can take advantage of inexpensive
provisional applications to delay paying
filing fees. Several comments argued
that the rule changes will
disproportionately impact small entities
and that the Office obscures this fact by
including requests for continued
examination into the analysis. The
comments stated that: 32 percent of
patents to the top nineteen universities
are continuation or continuation-in-part
applications; 35.2 percent of first
continuations and continuation-in-part
applications are filed by small entities;
and 37.9 percent of second
continuations and continuation-in-part
applications are filed by small entities.
Response: The Office notes the
concerns expressed in the public
comment particularly by small entities
regarding the proposed changes to
§§ 1.78(d)(1) and 1.114 that would have
permitted an applicant to file only one
of the following: A continuation
application, a continuation-in-part
application, or a request for continued
examination, without any justification.
The Office has made modifications to
these proposed changes such that this
final rule will permit an applicant to file
two continuation applications or
continuation-in-part applications, plus a
single request for continued
examination in an application family,
without any justification. Under this
final rule, an applicant may file a
divisional application directed to a nonelected invention if the prior-filed
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application is subject to a requirement
for restriction. The divisional
application need not be filed during the
pendency of the application subject to a
requirement for restriction, as long as
the copendency requirement of 35
U.S.C. 120 is met. This final rule also
permits applicant to file two
continuation applications of a divisional
application plus a request for
continuation examination in the
divisional application family, without
any justification. Applicant may also
file any third or subsequent
continuation or continuation-in-part
application, or any second or
subsequent request for continued
examination in an application family,
with a petition and showing. Therefore,
applicants should have sufficient time
to determine whether to seek protection
for a particular aspect of an invention
and should have sufficient
opportunities to present claims,
amendments and evidence for that
aspect. For example, applicant is
permitted to obtain a patent on the
allowed claims from the initial
application, and then continue to
prosecute the broader or rejected claims
in two continuation or continuation-inpart applications, and one request for
continued examination without
justification. Beyond those filings,
applicant may seek a third or
subsequent continuation or
continuation-in-part application and a
second or subsequent request for
continued examination with a petition
and showing. As previously discussed,
the changes being adopted in this final
rule do not give any advantage to those
applicants who file multiple parallel
applications containing patentably
indistinct claims. See §§ 1.75(b)(4) and
1.78(f).
Applicant should also have sufficient
opportunities to spread the cost of
prosecution. Applicant has a one-year
grace period under 35 U.S.C. 102(b)
before filing a patent application to test
the market or obtain capital resources.
Before the end of the one-year grace
period, applicant may file a provisional
application to obtain a U.S. filing date
and wait up to twelve additional
months to file an initial nonprovisional
application. During this two-year time
period, applicants may determine the
commercial value of each aspect of the
invention before filing the initial
nonprovisional application. Applicant
may also request a deferral of
examination under § 1.103(d) and defer
the examination up to three years from
the earliest filing date claimed (e.g., the
filing date of the provisional
application). See § 1.103(d). By
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requesting a deferral of examination,
applicant would have even more time to
determine the commercial value of the
invention or obtain capital resources
and would avoid the cost of filing and
prosecuting multiple continued
examination filings. Furthermore,
divisional applications need not be filed
during the pendency of the application
subject to a requirement for restriction,
as long as the copendency requirement
of 35 U.S.C. 120 is met.
The changes being adopted in this
final rule do not disproportionately
impact small entities. The Office
estimates that the change would have
required such a petition and showing in
only 2.9 percent of the 112,210 small
entity applications and requests for
continued examination filed in fiscal
year 2006. The Office included the
number of requests for continued
examination into the analysis because
requests for continued examination
divert the Office’s patent examining
resources from the examination of new
applications and contribute to the
increasing backlog of unexamined
applications, just like continuation and
continuation-in-part applications.
The Office notes that, during fiscal
year 2006, it appears that the percentage
of small entity continued examination
filings that would have required a
petition is slightly higher than the
percentage of total continued
examination filings that would have
required a petition (2.9 percent small
entity as opposed to 2.7 percent for all
applicants). The Office also notes that,
during fiscal year 2006, it appears that
the percentage of small entity
applications that exceeded the five
independent claims and twenty-five
total claim threshold is also slightly
higher than the percentage of total
applications that exceeded the five
independent claim and twenty-five total
claim threshold (24.4 as opposed to
23.7). These percentages are based upon
data that is available in the Office’s
PALM system for applications filed
during the most recent fiscal year. The
Office does not think these slight
differences establish that the changes in
this final rule will have a
disproportionate economic impact on
small entities since these differences are
within the margin of error. In addition,
the comments provide no reason, and
there is no apparent one for why small
entity applicants would inherently
require more continued examination
filings to prosecute the applications to
completion or more claims to
adequately cover their inventions. Thus,
even higher differences in these
percentages could easily be explained
by the fact that small entity applicants
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pay only one-half of the fees that other
applicants pay for continuing
applications, requests for continued
examination, and excess claims.
Comment 46: A number of comments
predicted the rule changes would limit
applicants’ opportunities to present
claims, which would reduce the scope
of the patent claims because applicants
would be pressured to pursue and
accept narrower claims. The comments
argued that inventors would not be able
to adequately protect their inventions
and would in turn lose patent protection
to certain aspects of their inventions,
which would have an adverse impact on
the value of patents, patent quality,
innovations, research and development,
the competitiveness of U.S. companies,
and the U.S. economy and would
eliminate U.S. jobs. The comments
provided the following reasons: (1) The
Office has not appropriately addressed
applicants’ interests in maximizing
patent protection and receiving a fair
consideration of all claims submitted;
(2) the rule changes would require
applicants to claim all aspects of the
disclosed invention initially, even
though applicants often file applications
without knowing the value of their
inventions in order to determine which
embodiment will have value and be
worthy of the investment in patent
protection; (3) applicants would not be
able to identify and address all claim
permutations in the initial application
and one continuation application, and
complex inventions often need more
claims and more than one continuation
application to protect the invention; (4)
the Office should provide applicants the
flexibility to prosecute different
embodiments at a later time; (5) the
applicant should be permitted to
present claims (or change the scope of
the claims) in continuing applications to
cover an embodiment of the invention
disclosed in the initial application when
the applicant later determines the
commercial value of the embodiment,
develops the actual product, or
discovers a potential infringer’s product;
(6) competitors could easily circumvent
the patent claims because applicant
would not have the ability to change the
scope of the claims to cover the
competitor’s product in a continuing
application; (7) in view of the courts’
restrictive claim interpretation, the
required showing under §§ 1.78(d)(1)
and 1.114 would eliminate a vast
number of legitimate continuing
applications and requests for continued
examination needed to provide coverage
of alternate aspects of an invention.
Response: This final rule does not
place any per se limits on the number
of continued examination filings that
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may be filed or on the number of claims
an applicant may present in an
application. Applicant is permitted to
submit all of the claims that applicant
desires during the prosecution of the
initial application, two continuation or
continuation-in-part applications, and a
request for continued examination. An
applicant who considers this to be
insufficient may file a third or
subsequent continuing application or
second or subsequent request for
continued examination with a petition
showing why the amendment,
argument, or evidence sought to be
entered could not have been submitted
earlier. For most applicants who
prosecute their applications diligently,
additional continued examination
filings would not be needed. Applicant
may also file a reissue application under
35 U.S.C. 251, if appropriate, to submit
claims with different scope. Further, the
use of continuation practice to
circumvent statutory requirements for
reissue and reexamination proceedings
is not appropriate. In addition, the rules
require an applicant to advance
prosecution and not waste the Office’s
resources examining an application
when the applicant is not ready to
particularly point out and distinctly
claim the subject matter which the
applicant regards as his or her
invention. See also § 10.18(b)(2)(i) and
Hyatt v. Dudas, 2007 U.S. App. LEXIS
15350 (Fed. Cir. Jun. 28, 2007).
Applicant should not use continued
examination practice to delay the
prosecution of the application because
this adversely impacts the Office’s
ability to examine new applications and
reduce the backlog of unexamined
applications.
Comment 47: One comment predicted
that the rule changes would discourage
first action allowances because some
applicants would intentionally file
applications with at least one defect in
order to receive a rejection to drag out
pendency so that they can have more
time to determine whether to file
continuing applications.
Response: There is no reason why the
new changes being adopted in this final
rule will encourage an applicant to
intentionally file an application with at
least one defect to delay prosecution.
Additionally, such an action by an
applicant would violate § 10.18(b)(2)(i).
By presenting to the Office any paper
(including an application), the applicant
is certifying that to the best of the
applicant’s knowledge, information and
belief, formed after an inquiry
reasonable under the circumstances,
that the paper is not being presented to
cause unnecessary delay or needless
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increase in the cost of prosecution
before the Office.
Comment 48: One comment sought
clarification as to whether an applicant
is permitted to amend the claims and/
or file a continuation application to
claim allowable subject matter
presented in dependent claims.
Response: Applicant may amend the
claims of an initial application to claim
allowable subject matter presented in
dependent claims if the amendment
complies with the rules of practice (e.g.,
§ 1.116). For example, applicant may
submit such an amendment in the
initial application in response to a nonfinal Office action in the initial
application. Such an amendment,
however, will not be entered in the
initial application as a matter of right
after a final Office action. Under this
final rule, applicant alternatively may
file two continuation or continuation-inpart applications plus one request for
continued examination in an
application family, without any
justification and pursue the amendment
in one of those two applications or in
the request for continued examination.
Comment 49: Several comments
argued that the combined effect of the
limit on the number of representative
claims and the limit on the number of
continuing applications and requests for
continued examination as a matter of
right would increase the number of
multiple parallel applications and
divisional applications because
applicants would file more multiple
parallel applications with small
numbers of claims or present claim sets
that would provoke restriction
requirements. Either way, the comments
contended that the backlog will
increase. One comment further alleged
that applicants would file more
continued examination filings and
appeals because by limiting the number
of claims examined, two Office actions
would be insufficient, thus resulting in
an increase in pendency and cost. One
comment argued that the rule changes
would disproportionately impact
inventions that require more claims,
continuing applications, or examiner
time. One comment stated that the
limitations on continued examination
filings and claims would cause more
litigation because they would create
more uncertainty in infringement and
validity.
Response: As discussed previously,
the Office is not adopting the
‘‘representative claims’’ examination
approach or restricting the number of
continued examination filings to one
without any justification. Rather, this
final rule permits applicant to present
more than five independent claims or
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more than twenty total claims in an
application if applicant files an
examination support document.
Applicant is also permitted to file two
continuation or continuation-in-part
applications, plus a request for
continued examination in an
application family, without any
justification. The changes being adopted
in this final rule do not place per se
limits on the number of claims which
applicant may present in an application
or on the number of continued
examination filings. The changes being
adopted in this final rule do not
encourage applicant to file multiple
parallel applications that contain
patentably indistinct claims. See
§§ 1.75(b)(4) and 1.78(f). Applicants
would obtain little benefit from filing
multiple applications that contain
patentably indistinct claims because the
Office would treat each application as
having the total of all of the claims
(whether in independent or dependent
form) in all such applications for
purposes of determining whether an
examination support document is
required by § 1.75(b)(1) (but not for
purposes of calculating the excess
claims fee due in each application).
Likewise, this final rule will not cause
the number of divisional applications to
increase because this final rule permits
divisional applications to be filed
serially. Therefore, applicant should
have sufficient time to determine
whether to file a divisional application
to claim a non-elected invention.
Comment 50: A few comments
suggested that the limits set in
§§ 1.75(b)(4) and 1.78(d)(1) are
inconsistent with interference practice
under 35 U.S.C. 135 of copying claims
for purposes of preserving the right to
provoke an interference. One comment
suggested that the changes to § 1.78
eliminates an applicant’s right to add
claims to an application to cover a
similar or parallel technology, provided
that the added claims find support in
the specification, citing PIN/NIP, Inc., v.
Platt Chemical Co., 304 F.3d 1235, 1247,
64 U.S.P.Q.2d 1344, 1352 (Fed. Cir.
2002). One comment stated that
subjecting patentably indistinct claims
in multiple commonly owned
applications to elimination under
§ 1.78(f)(3) violates case law, for
example Kingsdown Med. Consultants,
Ltd. v. Hollister Inc., 863 F.2d 867, 874,
9 U.S.P.Q.2d 1384, 1390 (Fed. Cir.
1988).
Response: The Office has modified
proposed § 1.75(b)(4) and § 1.78(d)(1).
This final rule permits an applicant to
file two continuation or continuation-inpart applications plus one request for
continued examination in an
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application family, without any
justification. Applicant may also file a
third or subsequent continuation or
continuation-in-part application or a
second or subsequent request for
continued examination with a petition
and showing. This final rule permits
applicant to present up to five
independent claims or twenty-five total
claims in each application, without an
explanation. Applicant may also present
more than five independent claims and
more than twenty-five total claims if
applicant files an examination support
document before the first Office action
on the merits of the application.
Applicant may file as many claims as
necessary to claim the full scope of his
or her invention. This final rule
provides sufficient opportunities for
applicant to present claims to provoke
an interference during the prosecution
of these applications. Therefore, the
changes to §§ 1.75(b)(4) and 1.78(d)(1)
being adopted in this final rule are not
inconsistent with 35 U.S.C. 135.
Furthermore, applicant may also file a
reissue application under 35 U.S.C. 251,
if appropriate, to submit claims for
provoking an interference. In other
situations, however, applicant is not
permitted to maintain an application in
pending status, without advancing
prosecution, for the sole purpose of
awaiting developments in similar or
parallel technology. As previously
discussed, such practice does not
advance prosecution before the Office
and impairs the ability of the Office to
examine new and existing applications.
In other situations, however,
applicant is not permitted to maintain
an application in pending status,
without advancing prosecution, for the
sole purpose of awaiting developments
in similar or parallel technology. As
previously discussed, such practice
does not advance prosecution before the
Office and impairs the ability of the
Office to examine new and existing
applications.
The Federal Circuit noted in PIN/NIP
that one may amend an application for
the purpose of encompassing devices or
processes of others, subject to
compliance with the requirements of the
patent statute and regulations (the claim
at issue was determined to be invalid
under 35 U.S.C. 112, ¶ 1, for lack of
written description support). See PIN/
NIP, 304 F.3d at 1247, 64 U.S.P.Q.2d at
1352. As such, PIN/NIP cannot be relied
upon to support a ‘‘wait and see’’
concept under which an applicant files
an initial application followed by a
stream of continuation applications just
to wait for any competitor to develop
and market an invention not claimed in
the initial application. PIN/NIP, 304
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F.3d at 1247, 64 U.S.P.Q.2d at 1352.
Further, in Kingsdown, the Federal
Circuit opined: ‘‘Nor is it in any manner
improper to amend or insert claims
intended to cover a competitor’s
product the applicant’s attorney has
learned about during the prosecution of
a patent application. Any such
amendment or insertion must comply
with all statutes and regulations, of
course, but, if it does, its genesis in the
marketplace is simply irrelevant.’’
Kingsdown, 863 F.2d at 874, 9
U.S.P.Q.2d at 130. This statement does
not equate to a pronouncement that an
applicant has a ‘‘right’’ under the patent
statutes to file a continuous stream of
continuing applications to ensure that
there is always a pending application in
which to present claims encompassing
devices or processes of others.
Further continuation practice is not
intended to supplant or permit
circumvention of reissue practice. The
patent statute at 35 U.S.C. chapter 25
provides for the correction of patents,
and specifically provides for the reissue
of a patent in those situations in which
a ‘‘patent is, through error without any
deceptive intention, deemed wholly or
partly inoperative or invalid, by reason
of * * * the patentee claiming more or
less than he had a right to claim in the
patent.’’ See 35 U.S.C. 251. See also
Toro Co. v. White Consol. Indus., 383
F.3d 1326, 1333, 72 U.S.P.Q.2d 1449,
1454 (Fed. Cir. 2004) (citing Johnson &
Johnston, 304 F.2d at 1055, 62
U.S.P.Q.2d at 1231). Nothing, however,
suggests that an applicant has a ‘‘right’’
under the patent statutes to file a
continuing application to avoid the
requirements of the reissue statute when
seeking to correct or enlarge the scope
of a patent. There is a difference
between adding claims to an application
that are otherwise pending, and
deliberately prolonging prosecution in
order to be able to do so. Deliberately
prolonging a proceeding before the
Office would not be consistent with the
requirements of § 10.18.
Applicant may copy claims from
another application or patent that is not
commonly owned for the purposes of
provoking an interference, without
triggering § 1.78(f)(3). Section 1.78(f)(3)
applies only to multiple commonly
owned applications that contain
patentably indistinct claims. Section
1.78(f)(3) is a restatement of former
§ 1.78(b), which previously gave the
Office the same discretion to require
elimination of patentably indistinct
claims in all but one of the pending
nonprovisional applications. The Office
is not preventing applicants from
providing such patentably indistinct
claims in a single application, or in
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multiple applications if applicant
submits a terminal disclaimer in
accordance with § 1.321(c) and explains
why submitting patentably indistinct
claims in separate applications is
necessary.
Comment 51: Several comments
suggested that if the Office implements
the limits on continued examination
filings, the limits on the number of
claims would be unnecessary.
Response: The comment provides no
explanation as to how or why
implementation of the continued
examination filing changes would make
the claims provisions unnecessary. The
Office determined that the
implementation of the changes to the
continued examination practice and
practice for examination of claims in
patent applications are necessary to
achieve quality and efficiency in the
patent examination process.
Comment 52: A number of comments
argued that applicants should be
permitted to file more than one
continuation or continuation-in-part
application or request for continued
examination as a matter of right because
there are many legitimate reasons for the
filings. The comments provided the
following examples: (1) The process of
developing the best prior art and
obtaining the broadest possible
protection is a complex process and
may extend the prosecution process; (2)
applicants may use strategies that would
avoid prosecution history estoppel and
preserve doctrine of equivalents
protection; (3) applicants may maintain
a continuing application so that they
could respond to any adverse court
decisions and associated uncertainties;
(4) the quality of the examination
process may cause delays; (5) examiners
would allow broader claims in a
continuation application after becoming
more familiar with the subject matter
and have more time to improve the
search and analysis; (6) applicants may
maintain a continuing application
pending to prevent competitors from
copying the invention or circumventing
the initial patent claims because the
courts are less inclined to interpret the
scope of invention beyond the literal
meaning of the claims, precluding claim
scope that once was captured under the
doctrine of equivalents; (7) applicants
may file continuation applications as an
‘‘insurance policy’’ so that applicants
can correct any defects found in the first
patent or adjust the claim coverage
without surrendering the patent (as in
the reissue and reexamination
practices); (8) applicants may file
continuing applications to build large
patent portfolios and attract capital
investments; (9) applicants want time to
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conduct testing and to reevaluate the
claim scope in light of new prior art,
market experience, and technology
development; (10) for complex
technologies, it may take several
prosecutions to determine the bounds of
patentable subject matter; (11)
applicants may want many patents on
an invention to strengthen the
protection; (12) applicants may file
continuing applications to correct errors
in the initial prosecution including
those made by inexperienced
representatives or applicants; and (13)
applicants who are in a crowded or
highly valuable field need to keep a
continuing application pending for the
purposes of provoking interference.
Response: The Office recognizes that
there are some appropriate reasons for
filing multiple continuing applications
and requests for continued examination.
There are, however, a number of reasons
given for multiple continuing
applications and requests for continued
examination that are not considered
appropriate. The changes being adopted
in this final rule are tailored to permit
applicants to file the initial application,
two continuation or continuation-inpart applications, and a request for
continued examination in an
application family, without any
justification. Any applicant who
considers this to be insufficient may file
an additional continuation or
continuation-in-part application or a
request for continued examination with
a petition showing why the amendment,
argument, or evidence sought to be
entered could not have been submitted
during the prosecution of the prior
filings. Applicants are required to
prosecute diligently and to particularly
point out and distinctly claim the
subject matter which the applicant
regards as his or her invention, upon
filing the application. If applicant’s lack
of knowledge of prior art, or lack of
diligence during the prosecution of the
application, causes unnecessary delay
or needless increase in the cost of
prosecution before the Office, applicant
would be violating his or her duty under
§ 10.18. See § 10.18(b)(2)(i).
Comment 53: A number of comments
argued that many continuing
applications and requests for continued
examination are caused by inadequate
examinations, the final Office action
practice, and the examiner production
system. The comments provided the
following examples: (1) It may take
several exchanges between the examiner
and applicant before the examiner
appears to understand the invention; (2)
examiners’ lack of experience in the art
and patent law; (3) some examiners
have difficulty using the English
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language in oral and written
communications; (4) the Office has large
turnover in examining personnel; (5)
examiners make too many restriction
requirements; (6) examiners want to
obtain additional ‘‘counts’’; (7)
examiners make improper rejections; (8)
examiners refuse to enter any after-final
replies; (9) examiners are not given
sufficient time to conduct a proper
search and examination in the initial
application; (10) examiners did not read
the specification and claims; (11)
examiners do not adequately consider
arguments made by the applicants; (12)
examiners make premature final
rejections; (13) examiners conduct
piecemeal examination; (14) examiners
are being overturned by supervisors or
quality control; (15) examiners do not
indicate allowable claims; (16)
examiners do not set forth the rejections
clearly in the Office actions; (17)
examiners do not apply legal standards
consistently; and (18) examiners make
new grounds of rejection or cite new art
in final Office actions.
Response: The Office provides
applicant with procedures to address
inadequate examination issues.
Applicant should not use the continued
examination practice as a substitute for
the petition or appeal process. The
practice of permitting an unlimited
number of continuing applications and
requests for continued examination
appears to have created lax practices.
Applicants should raise any issue of
inadequate examination before the
examiner and/or the examiner’s
supervisor. For example, applicants
should raise any question as to
prematureness of a final rejection before
the primary examiner. Applicant may
seek review of the examiner’s decision
on the finality of the Office action by
petition under § 1.181, if appropriate.
See MPEP §§ 706.07(c) and 1002.02(c).
Restriction requirements are also
reviewable by petition under § 1.181.
Applicants may request an interview
with the examiner to ensure that the
examiner understands the invention or
claims correctly, or to seek clarification
of the rejections or Office action. See
§ 1.133(a)(2). If applicant disagrees with
the examiner’s rejections, applicant may
appeal the rejections to the BPAI and/
or request a pre-appeal brief conference,
if appropriate.
Comment 54: A number of comments
argued that filing continuing
applications and requests for continued
examination is more efficient and costeffective in dealing with deficiencies of
the examination process (even before a
‘‘stubborn examiner’’) because the
factual record is fixed on appeal and the
appeal process takes a longer time and
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is expensive, especially for independent
inventors and small entities. The
comments predicted that the rule
changes would increase the number of
pre-appeal brief conferences, examiner’s
answers and appeals, and force
applicants to appeal applications that
are not in condition for appeal (e.g., the
record has not been fully developed and
unamended claims may be appealed).
Several comments pointed out that
continuing applications and requests for
continued examination help applicants
to place the application in better
condition for appeal because most
examiners refuse to enter the after-final
amendments. One comment stated that
some applicants might file the appeal
simply to preserve pendency. Some of
the comments suggested that the Office
should wait and see what effect a
quicker appeal process would have on
the backlog before implementing the
rule changes. The comments stated that
once applicants appreciate the appeal
process changes, more applicants would
file appeals rather than continuing
applications and requests for continued
examination. Furthermore, the
comments noted that a study conducted
by a firm shows that out of 121 appeal
briefs (appeals from January 1, 2004 to
March 23, 2006), examiners issued only
nine answers, which represents an
enormous waste of applicants’ time and
money. One comment predicted that the
BPAI would be quickly overwhelmed
and a broken appeal process would
create more damage to the examination
process than the current problems.
Response: If applicant disagrees with
the examiner’s rejections, applicants
should file an appeal rather than filing
a continuation application or a request
for continued examination. The appeal
process offers a more effective
resolution than the filing of a
continuation application or a request for
continued examination. The pre-appeal
brief conference program provides
applicant a relatively expeditious and
low cost review of rejections by a panel
of examiners. If, after the conference,
the prosecution is reopened, the
applicant will have a further
opportunity to prosecute in front of the
examiner. Applicant would not need to
file an appeal brief. If the Office decides
that the application should remain
under appeal, it would be more efficient
to appeal the rejection to the BPAI by
filing an appeal brief rather than delay
the appeal by filing a continuation
application or a request for continued
examination. Furthermore, the
pendency of an appeal is relatively
short. The current (as of the end of the
second quarter of fiscal year 2007)
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pendency of a decided appeal was 5.6
months. The pendency of an appeal is
the period between the assignment of an
appeal number and the mailing date of
the decision. In addition, the BPAI has
reduced the inventory of pending
appeals from 9,201 at the close of fiscal
year 1997 to 1,357 at the close of fiscal
year 2006. Nevertheless, continuing
applications and requests for continued
examination as a percentage of total
filings have increased as BPAI appeal
pendency and inventory of pending
appeals has decreased. Applicants
should have sufficient opportunity to
place the application in condition for
appeal during the prosecution of the
initial application, two continuing
applications, and one request for
continued examination in an
application family. An applicant who
considers this to be insufficient may file
any third or subsequent continuation or
continuation-in-part applications or
second or subsequent requests for
continued examination with a petition
showing why the amendment,
argument, or evidence sought to be
entered could not have been previously
submitted.
Comment 55: Several comments
alleged that the Office has provided no
evidence for the assertion that the
exchange between applicants and
examiners becomes less beneficial and
suffers from diminished returns after the
initial application. A number of
comments also argued that the Office
did not provide any investigation or
analysis of the frequency with which
the value of exchanges between the
examiner and applicant decrease after
the first continuing application or
request for continued examination. A
number of comments suggested that
continuing applications and requests for
continued examination permit
additional mutually beneficial
interaction between the examiner and
applicant because: (1) The examiner and
applicant already are familiar with the
issues in the prosecution; (2) they give
the examiner more time to examine the
same subject matter and gain better
understanding of the prior art; and (3)
they permit applicants multiple
opportunities to refine the claims and
present additional data or evidence
which would result in better quality
patents with valid claims and clearly
defined subject matter. Several
comments argued that the rule changes
would not improve public notice and
the exchanges between the examiner
and applicant because applicants would
file multiple parallel applications rather
than one single application and the
applications would be assigned to
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different examiners. Several comments
argued that the exchanges between the
examiner and applicant would be less
efficient and more contentious because
applicants would present broader
claims and argue rejections more
aggressively resulting in higher
pendency. Several comments also
predicted that applicant would request
more interviews which would be more
work for both the examiner and
applicant. Several comments argued
that it is unclear how the exchange
between examiners and applicants will
be more efficient because there is
nothing in the proposal to encourage
examiners to be more reasonable and
appeals are not more efficient. One
comment also argued that the Office is
making unexplained assumptions that:
(1) The value of a continuing
application or a request for continued
examination is less than the value of a
new application; (2) the changes to
continuing applications practice being
adopted in this final rule should
improve the quality of issued patents,
making them easier to evaluate, enforce,
and litigate; (3) this small minority of
applicants prejudices the public
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; and (4) the
changes being adopted in this final rule
will result in claims issuing faster.
Response: Under this final rule,
applicant is permitted to file two
continuation or continuation-in-part
applications plus one request for
continued examination in an
application family. These filings will
provide sufficient opportunities for
applicants to submit amendments,
arguments, and evidence. Furthermore,
the exchange between applicant and the
examiner will be more efficient because
applicant can no longer delay the
submissions of amendments, argument,
and evidence and the examiner will
have the information earlier to
determine the patentability of the
claims. In addition, even if one could
argue that additional continuing
applications and requests for continued
examination are beneficial in the
particular application, the marginal
value of a third or subsequent
continuing application or a second or
subsequent request for continued
´
examination vis-a-vis the patent
examination process decreases due to
the Office resources occupied by the
additional continued examination
filings for amendments, argument, and
evidence that could have been
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presented earlier. Nevertheless, an
applicant can show on petition that an
additional filing is necessary. Finally,
the changes being adopted in this final
rule require applicant to submit all of
the claims that are patentably indistinct
in one single application and to identify
multiple applications that contain
patentably indistinct claims. See
§§ 1.75(b) and 1.78(f).
Comment 56: One comment argued
that the Office should not impose a limit
on the number of continuing
applications an applicant may file when
the Office can issue any number of
rejections and improper final rejections.
Response: In this final rule, the Office
has not placed an absolute limit on the
number of continued examination
filings. Rather, applicant is permitted to
file the initial application, two
continuing applications, and a request
for continued examination in an
application family, without any
justification, and any third or
subsequent continuing application or
second or subsequent request for
continued examination with a petition
and a showing as why the amendment,
argument, or evidence sought to be
entered could not have been submitted
earlier. Applicant may seek review of
any improper finality of a rejection by
filing a petition under § 1.181, or of any
improper rejection by filing a notice of
appeal, a request for pre-appeal brief
conference, and an appeal brief.
Comment 57: Several comments
argued that examiners will have to
review larger submissions because
applicants will be forced to front-load
responses to every Office action with
interviews, declarations and other
evidence when the attorney’s argument
alone otherwise might have been
sufficient. The comments argued that
this would increase pendency. One
comment predicted that the rule
changes would decrease examiners’
production because there would be
‘‘more hard cases’’ and ‘‘less easy
counts.’’ Several comments stated that
the rule changes would require
applicant to respond to a first Office
action by preparing what would be a de
facto appeal brief with all of the
arguments and evidence because
applicant would only file the one
permissible continuation or
continuation-in-part application or
request for continued examination as a
last resort after appeal.
Response: Section 1.78 as adopted in
this final rule permits an applicant to
file two continuing applications plus
one request for continued examination
in an application family, without any
justification. Thus, the changes adopted
in this final rule do not require
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applicant to respond to a first Office
action by preparing what would be a de
facto appeal brief with all of the
arguments and evidence. Nevertheless,
the examination will be more efficient
when applicant submits a fully
responsive reply to each Office action so
that the examiner will have the
information, including amendments,
arguments, and evidence, to determine
the patentability sooner rather than
later. Even prior to the changes being
adopted in this final rule, applicants
have been required to file a fully
responsive reply to an Office action. See
§§ 1.111(b) and (c). A change to the
rules of practice that encourages
applicants to submit complete, rather
than piecemeal, replies will advance
prosecution to final disposition with a
minimum number of Office actions,
continuing applications, and requests
for continued examination. Such change
streamlines the examination process,
thereby benefiting both applicants and
the Office.
Comment 58: A number of comments
argued that continuation or
continuation-in-part applications and
requests for continued examination are
needed so that applicants can submit
prior art that is discovered after the
prosecution is closed (e.g., through
international search reports or foreign
search reports), and amend the claims in
view of late newly-discovered art.
Several comments suggested that the
Office should permit applicants to file a
request for continued examination
without a petition and showing to
submit newly discovered prior art, and
art cited by the U.S. International
Searching Authority similar to art cited
by a foreign patent office, because
otherwise applicants would be
penalized due to PCT administrative
backlogs. One comment sought
clarification in the situation where an
applicant wishes to withdraw an
application from issue to submit new art
for consideration and a continuation
application has been filed.
Response: Applicant is not required to
file a continuation or continuation-inpart application or a request for
continued examination in order to
submit prior art discovered after the
prosecution is closed or an amendment
in view of the late discovered art. The
Office recently proposed changes to
information disclosure statement (IDS)
requirements. See Changes To
Information Disclosure Statement
Requirements and Other Related
Matters, 71 FR 38808 (July 10, 2006),
1309 Off. Gaz. Pat. Office 25 (Aug. 1,
2006) (proposed rule) (hereinafter
‘‘Information Disclosure Statement
Proposed Rule’’). The proposed changes
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(if adopted) would permit applicant to
submit an IDS after a first Office action
on the merits, but before the mailing
date of a notice of allowability or a
notice of allowance under § 1.311, if
applicant files the IDS with the
certification under § 1.97(e)(1) and a
copy of the foreign search report, or an
explanation under proposed
§ 1.98(a)(3)(iv) and a non-cumulative
description under proposed
§ 1.98(a)(3)(v). Applicant would also be
permitted to submit an IDS after
allowance, but before the payment of
the issue fee, if applicant files the IDS
with a patentability justification under
proposed § 1.98(a)(3)(vi), including any
appropriate amendments to the claims.
Applicant would be permitted to submit
an IDS after the payment of the issue fee
if applicant files a petition to withdraw
from issue pursuant to § 1.313(c)(1), the
patentability justification under
proposed § 1.98(a)(3)(vi)(B), and an
amendment to the claims. Prior to the
effective date of any final rule based
upon the Information Disclosure
Statement Proposed Rule, applicant may
submit an IDS after the close of
prosecution with a petition under
§ 1.183 if the IDS complies with the
applicable requirements set forth in the
Information Disclosure Statement
Proposed Rule for such an IDS.
B. Treatment of Third and Subsequent
Continuation or Continuation-In-Part
Applications
Comment 59: Several comments
supported the rule changes that permit
one continued examination filing
without any justification. A number of
comments, however, suggested that the
Office should permit more than one
continued examination filing without
requiring a petition and showing. The
comments suggested the following
without a petition and showing: (1) At
least two continuation or continuationin-part applications; (2) at least three
continuation or continuation-in-part
applications; (3) three to six continued
examination filings; (4) three to five
applications per application family; (5)
only one patent to be issued from a
chain of continuation applications; (6)
unlimited number of continuation
applications coupled with a
requirement for a patentability report in
the third or subsequent continuation
application or a prior art search and
compliance with the requirements
under 35 U.S.C. 112; (7) two requests for
continued examination, but only one
continuation or continuation-in-part
application; (8) at least one request for
continued examination per application;
(9) more than one request for continued
examination per application; and (10)
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two or three requests for continued
examination per application. Several
comments suggested that the Office
should permit more than one
continuation or continuation-in-part
application if the applications are filed
within a reasonable time period (e.g.,
one to eight years from the earliest filing
date claimed). One comment suggested
that the Office should permit requests
for continued examination filed within
three years of the filing date if applicant
has filed a petition to make special for
accelerated examination. One comment
suggested that the Office should permit
applicant to file a request for continued
examination, but allow the examiner to
refuse the request for continued
examination if the first action can be
made final. One comment suggested that
the Office should eliminate all
continuing applications except for
divisional applications. One comment
proposed that the Office should
eliminate all continuing applications,
but permit requests for continued
examination. One comment suggested
that the limitation on the number of
continued examination filings should
not apply to divisional applications and
requests for continued examination.
Response: The Office has modified
the proposed provisions that permit
applicant to file one continuation or
continuation-in-part application or
request for continued examination
without any justification. Under this
final rule, applicant may file two
continuation or continuation-in-part
applications plus one request for
continued examination in an
application family, without any
justification. Applicant may also file
any third or subsequent continuation or
continuation-in-part application or
second or subsequent request for
continued examination with a petition
and showing. The changes being
adopted in this final rule will permit the
Office to focus its patent examining
resources on examining new
applications, and thus reduce the
backlog of unexamined applications and
improve pendency for all applications.
Permitting more than two continuation
or continuation-in-part applications and
more than one request for continued
examination in an application family
without any justification would
significantly decrease the effectiveness
of the changes being adopted in this
final rule. These final rule requirements
for seeking a third or subsequent
continuation or continuation-in-part
application will not impact the vast
majority of the applications.
A time limit requirement for filing
continuing applications and requests for
continued examination would not be
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desirable because it would encourage
applicants to file an unlimited number
of continued examination filings before
the time period expires. Furthermore, a
time limit would preclude an applicant
from filing appropriate continued
examination filings after the time period
expires. Additionally, this suggested
strategy would also disproportionately
impact applications in certain
technologies (e.g., biotechnology) that
have long prosecutions.
Requiring a patentability report or a
prior art search in a continuation
application would not increase
efficiency in the examination of the
initial application. If applicant submits
the information earlier in the initial
application, applicant most likely
would not need to file a third or
subsequent continuing application
because the examiner would have all of
the relevant information to make the
patentability determination in the initial
application.
The Office recognizes there are
appropriate reasons for filing continued
examination filings. As a result, the
Office did not place an absolute limit on
the number of continued examination
filings. If the prior-filed application was
subject to a requirement for restriction,
applicant may file a divisional
application directed to a non-elected
invention that has not been examined.
The divisional application need not be
filed during the pendency of the
application subject to a requirement for
restriction, as long as the copendency
requirement of 35 U.S.C. 120 is met. See
§ 1.78(d)(1)(ii). Therefore, the changes
being adopted in this final rule
appropriately balance the need to
reduce the large and growing backlog of
unexamined patent applications and
make the patent examination process
more effective.
Comment 60: Several comments
expressed concerns that there would be
an added economic burden on
applicants, particularly small entities, to
pursue additional continued
examination filings due to the new
petition process, and that the economic
burden will effectively be a bar to many
applicants. The comments stated that
even when an additional continued
examination filing is completely
justified, applicants will suffer undue
hardship and will likely be deterred
from even attempting to request any
additional continued examination filing
because of the expense and time
involved to review and prepare the
petition. One comment suggested that
the petition process under
§§ 1.78(d)(1)(vi) and 1.114(g) will have a
disparate effect on small entities.
Several comments suggested that the
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Office should provide an exception for
filing additional continued examination
filings to applicants who are small
entities and those that qualify for
financial hardship. One comment
further suggested that the Office should
provide the exception for five years.
Response: The Office notes the
concerns expressed in the public
comment regarding the proposed
changes to §§ 1.78(d) and 1.114(g) that
would permit an applicant to file one
continuation application, continuationin-part application, or request for
continued examination, without any
justification. The Office has made
modifications to the proposed
provisions such that this final rule
permits an applicant to file two
continuation applications or
continuation-in-part applications, plus a
single request for continued
examination in an application family,
without any justification. Under this
final rule, an applicant may also file a
divisional application of a prior-filed
application for the claims to a nonelected invention that was not examined
if the application was subject to a
requirement for restriction. The
divisional application need not be filed
during the pendency of the application
subject to a requirement for restriction,
as long as the copendency requirement
of 35 U.S.C. 120 is met. This final rule
also permits applicant to file two
continuation applications of a divisional
application plus a request for continued
examination in the divisional
application family, without any
justification. Applicant may file any
additional continuation application or
request for continued examination with
a petition and showing.
The changes to §§ 1.78(d) and 1.114(g)
adopted in this final rule apply to all
applicants, regardless of whether they
are individuals, small businesses or
large multinational corporations. These
changes do not disproportionately affect
individuals and small businesses.
Applicants who seek to file a third or
subsequent continuation or
continuation-in-part application or a
second or subsequent request for
continued examination are required to
file a petition under § 1.78(d)(1)(vi) or
1.114(g) regardless of their status. The
requirements for seeking a third or
subsequent continuation or
continuation-in-part application or a
second or subsequent request for
continued examination would only have
affected 2.9 percent of the applications
or requests for continued examination
filed by a small entity in fiscal year
2006. The Office notes that a vast
majority of applicants do not file more
than two continuation or continuation-
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in-part applications and more than one
request for continued examination in an
application family. Therefore, the $400
petition fee and the showing
requirement will impact only a small
minority of applicants.
C. Treatment of Second and Subsequent
Requests for Continued Examination
Comment 61: Several comments
supported the changes to § 1.114. A
number of comments, however, objected
to the changes and suggested that the
Office should permit applicants to file
requests for continued examination
without a petition and showing. The
comments provided the following
reasons: (1) Requests for continued
examination are different from
continuing applications because
requests for continued examination
require applicant to advance
prosecution and would not cause the
Office to issue multiple patents to the
same invention; (2) requests for
continued examination are not
continuation applications, but rather are
the same application; (3) requests for
continued examination help applicants
to deal with deficiencies in the
examination process and provide a more
efficient, effective and cheaper
procedure to advance prosecution and
have art considered than the appeal,
petition or reissue process; (4) limiting
applicants to one request for continued
examination without a petition would
lead to more filings of continuation
applications and petitions; (5) due to the
changes in § 1.75, the Office would
issue more final Office actions with new
grounds of rejection, which would
necessitate the filing of more requests
for continued examination; and (6)
applicants would file more appeals, and
thus the pendency of applications
would increase.
Response: The Office has modified
the proposed provisions to provide that
an applicant may file a request for
continued examination in an
application family, without a petition
and showing. An application family
includes the initial application and its
continuation or continuation-in-part
applications. Under this final rule,
applicant may also file a request for
continued examination in a divisional
application family, without a petition
and showing. A divisional application
family includes the divisional
application and its continuation
applications. The provisions of
§ 1.78(d)(1) are independent of the
provisions of § 1.114. Therefore, the
filing of a request for continued
examination does not preclude an
applicant from filing two continuation
or continuation-in-part applications.
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Similarly, the filing of a continuation or
continuation-in-part application does
not preclude an applicant from filing a
request for continued examination.
When applicant files a request for
continued examination, the prosecution
of the application is reopened and the
examiner conducts another substantive
examination on the claims present in
the application. Consequently, similar
to continuation or continuation-in-part
applications, requests for continued
examination divert the Office’s patent
examining resources from the
examination of new applications and
contribute to the backlog of unexamined
applications. The request for continued
examination practice should not be used
as a substitute for the appeal, petition or
reissue process. If the applicant
disagrees with the examiner’s rejections,
then the applicant should pursue the
appeal process as a means to more
efficiently resolve the disagreement.
In addition, under the Office’s new
optional streamlined continuation
procedure, an applicant may request
that a continuation application be
placed on an examiner’s amended
(Regular Amended) docket (see
discussions of §§ 1.78(d)(1)(i) and 1.114)
which would be picked up for action
faster than an application placed on the
examiner’s new continuing application
(New Special) docket. By requesting that
the two continuation applications
permitted under § 1.78(d)(1)(i) be
treated under the optional streamlined
continuation application procedure, an
applicant may obtain the benefits of
faster processing similar to having a
second and third request for continued
examination without a petition under
§ 1.114(g).
Comment 62: One comment sought
clarification on whether the changes to
§§ 1.78 and 1.114 being adopted in this
final rule apply to reissue applications.
Response: The changes to §§ 1.78 and
1.114 being adopted in this final rule
apply to reissue applications. Under this
final rule, applicant may file two reissue
continuation applications plus a request
for continued examination in the reissue
application family, without any
justification. Benefit claims under 35
U.S.C. 120, 121, or 365(c) in the
application for patent that is being
reissued will not be taken into account
in determining whether a continuing
reissue application claiming the benefit
under 35 U.S.C. 120, 121, or 365(c) of
the reissue application satisfies one or
more of the conditions set forth in
§§ 1.78(d)(1)(i) through 1.78(d)(1)(vi).
For example, even if the application for
the original patent was a second
continuation application, applicant may
still file two reissue continuation
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applications. However, an applicant
may not use the reissue process to add
to the original patent benefit claims
under 35 U.S.C. 120, 121, or 365(c) that
do not satisfy one or more of the
conditions set forth in §§ 1.78(d)(1)(i)
through 1.78(d)(1)(vi) to the original
patent, if the application for the original
patent was filed on or after November 1,
2007.
Comment 63: One comment suggested
that the examiner should not make any
new rejections in a request for
continued examination, unless the
amendment to the claims raises new
issues.
Response: When applicant files a
request for continued examination in
compliance with § 1.114, the
prosecution of the application is
reopened and the examiner will
consider the amendment, argument, or
evidence submitted by the applicant.
The examiner will conduct another
substantive examination, consistent
with providing ‘‘for the continued
examination of application’’ under 35
U.S.C. 132(b). Limiting the examiner’s
ability to conduct a patentability
determination after the filing of a
request for continued examination
would not result in efficiency in the
examination process.
Comment 64: One comment argued
that it would be inconsistent to permit
the filing of a request for continued
examination in a prior-filed application
after a continuation application is filed,
but to not permit the filing of a
continuation application of an
application that has a request for
continued examination filed therein.
Another comment suggested that the
Office should permit an applicant to file
a continuation application even though
a request for continued examination had
been filed in the prior-filed application.
Response: The Office has modified
the proposed provisions to provide that
an applicant may file a request for
continued examination in an
application family, without a petition
and showing. The provisions of
§ 1.78(d)(1) are independent of the
provisions of § 1.114. Therefore, the
filing of a request for continued
examination does not preclude an
applicant from first filing two
continuation or continuation-in-part
applications. Likewise, the filing of a
continuation or continuation-in-part
application does not preclude an
applicant from first filing a request for
continued examination. Put differently,
under this final rule, applicant may file
a continuation application of an
application in which a request for
continued examination has already been
filed. Applicant may also file a request
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for continued examination in a priorfiled application after a continuation
application has been filed.
D. Petitions Related to Additional
Continuation Applications,
Continuation-In-Part Applications, and
Requests for Continued Examination
Comment 65: A number of comments
were critical of the showing requirement
set forth in §§ 1.78(d)(1) and 1.114. One
comment argued that the required
showing is a per se limit on the number
of continuation or continuation-in-part
applications and requests for continued
examination. Several comments stated
that the standard under §§ 1.78(d)(1)
and 1.114 is a hindsight standard. The
comments argued that except for rare
instances when evidence was not in
existence prior to filing the additional
continuing examination filing, the
Office could almost always conclude, in
hindsight, that the amendment,
argument, or evidence sought to be
entered could have been previously
submitted. One comment argued that
the showing under §§ 1.78(d)(1) and
1.114(g) is too stringent and unrealistic
given the practicalities of conventional
and reasonable patent prosecution
practice and the interests of patent
applicants. Several other comments
described the showing as exceptionally
high, onerous, impossible to meet,
restrictive, and ambiguous.
Furthermore, several comments asserted
that the rule changes required
applicants to be aware of all possible
prior art. Several other comments stated
that the required showing set forth in
§§ 1.78(d)(1) and 1.114 appears difficult
to meet for any amendment submitted
with an application that is not a
continuation-in-part application,
indicating that it is hard to imagine how
one would prove that an amendment or
argument ‘‘could not have been
submitted’’ in the absence of new
matter. One comment objected to the
required showing under §§ 1.78(d)(1)
and 1.114 because the purpose of filing
an additional continuation or
continuation-in-part application or a
request for continued examination may
be to do something other than present
a new argument, evidence or
amendment, such as protect a different
aspect of the invention revealed by
research and development subsequent
to an initial application filing. One
comment stated that given enough time
and effort an applicant will almost
always be able to come up with some
reason why the amendment, argument,
or evidence could not have been
previously submitted as required by
§§ 1.78(d)(1) and 1.114 and that this
requirement merely adds a layer of
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bureaucracy. One comment in support
of the showing under §§ 1.78(d)(1) and
1.114 stated that it is a sensible
compromise that does not ban
additional continued examination
filings, but requires applicants in
essence to show good cause for
additional continued examination
filings. Several comments in support of
the showing stated that the proposed
rules accommodate the legitimate uses
of continuations, limit abuses that can
harm the competitive process, and
promote the patent system’s ability to
provide incentives to innovate by
reducing pendency.
Response: The Office notes the
concerns expressed in the public
comment regarding the proposed
provisions that would require a petition
and showing if an applicant files more
than one continued examination filing
(a continuation application, a
continuation-in-part application, or a
request for continued examination). The
Office has made modifications to these
proposed changes such that this final
rule permits an applicant to file two
continuation applications or
continuation-in-part applications, plus a
single request for continued
examination in an application family,
without any justification. Under this
final rule, an applicant may also file a
divisional application of an application
for the claims to a non-elected invention
that was not examined if the application
was subject to a requirement for
restriction. The divisional application
need not be filed during the pendency
of the application subject to a
requirement for restriction, as long as
the copendency requirement of 35
U.S.C. 120 is met. This final rule also
permits applicant to file two
continuation applications of a divisional
application plus a request for continued
examination in the divisional
application family, without any
justification. Applicant may file any
additional continuation application or
request for continued examination with
a petition and showing. Therefore, given
the multiple opportunities for applicant
to submit amendments, arguments, or
evidence, it is appropriate to require an
applicant to justify why an amendment,
argument, or evidence sought to be
entered could not have been submitted
earlier when filing any third or
subsequent continuation application,
continuation-in-part application, or
second or subsequent request for
continued examination. The Office
considers the standard set forth in
§§ 1.78(d)(1)(vi) and 1.114(g) to be an
appropriate balance of the interests of
applicants and the need for a better
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focused and effective examination
process to reduce the large and growing
backlog of unexamined applications.
Applicants and practitioners have a
duty to refrain from submitting an
application or other filing to cause
unnecessary delay or needless increase
in the cost of prosecution before the
Office. See § 10.18(b)(2). Applicants also
have a duty throughout the prosecution
of an application to make a bona fide
attempt to advance the application to
final agency action. See Changes to
Practice for Continuing Applications,
Requests for Continued Examination
Practice, and Applications Containing
Patentably Indistinct Claims, 71 FR at
49, 1302 Off. Gaz. Pat. Office at 1319.
Applicant should be prepared to
particularly point out and distinctly
claim what the applicant regards as his
or her invention. Furthermore, the
examination process is more efficient
and the quality of the patentability
determination will improve when
applicant presents the desired claims,
amendments, arguments and evidence
as early as possible in the prosecution.
The changes to §§ 1.78 and 1.114 in this
final rule do not require an applicant to
be aware of all possible prior art to meet
the showing under §§ 1.78(d)(1)(vi) and
1.114(g), but applicant is required to
conduct a prior art search for filing an
examination support document under
§ 1.265. Nor do these changes add to
applicant’s existing duties under
§ 1.56(a) to disclose to the Office all
information known to the applicant to
be material to patentability, and under
37 CFR Part 10.
Comment 66: One comment asserted
that the Office will not achieve its goal
of reducing the number of filings of
continuation applications because an
applicant could easily show why the
amendment, argument, or evidence
could not have been previously
submitted when the subject matter of
the claims in the continuation
application is different from the subject
matter of the claims of the initial
application.
Response: The submission of an
amendment to the claims or new claims
to different subject matter alone will not
be sufficient to meet the showing
requirement under § 1.78(d)(1)(vi).
Applicant must provide a satisfactory
showing that the amendment, argument,
or evidence sought to be entered could
not have been previously submitted
during the prosecution of the initial
application, two continuation
applications, and the request for
continued examination.
Comment 67: One comment stated
that the required showing under
§§ 1.78(d) and 1.114 might have far-
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reaching implications that extend
outside the patent process. Several
comments expressed concerns that the
showing may require applicants to
disclose highly sensitive business
information such as business strategies,
and to alert their competitors as to how
the applicants plan to gain a
competitive edge. The comments further
expressed concerns that the petition
procedure may also invoke attorneyclient privilege.
Response: Applicants or patent
owners often present sensitive business
information to the Office, such as a
showing of unavoidable delay in a
petition to revive under § 1.137(a) or a
petition to accept late payment of a
maintenance fee under § 1.378(b). The
Office has procedures in place for
applicants and patent owners to submit
trade secrets, proprietary material, and
protective order material and to prevent
unnecessary public disclosure of the
material. See MPEP §§ 724–724.06. If it
is necessary for an applicant to disclose
sensitive business information to the
Office to meet the showing under
§ 1.78(d)(1)(vi) or 1.114(g), applicant
may submit the information in
compliance with the procedures set
forth in MPEP §§ 724–724.06 (e.g., the
information must be clearly labeled as
such and be filed in a sealed, clearly
labeled, envelope or container).
Comment 68: One comment stated
that the petitions under §§ 1.78(d)(1)
and 1.114 would be scrutinized in court,
creating a substantial increase in time
and resources devoted to litigating and
enforcing otherwise valid patent rights.
One comment expressed concern that
the petitions under §§ 1.78(d)(1) and
1.114 are unlikely to be granted and are
likely to be the subject of an attack in
litigation. A number of comments
asserted that applicants would be
subject to a higher potential for
allegations of inequitable conduct.
Additionally, one comment argued that
the proposed rule changes would
increase the frequency of malpractice
litigation.
Response: The rules adopted in this
final rule require applicants to
prosecute their applications with
reasonable diligence and foresight. The
submission of a showing as to why an
amendment, argument or evidence
sought to be entered could not have
been submitted earlier does not expose
an applicant to a greater risk of
inequitable conduct or litigation. The
failure to disclose material information,
or an affirmative misrepresentation of a
material fact or submission of false
material information or statements,
coupled with an intent to deceive or
mislead the Office, constitutes
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inequitable conduct. The simple
submission of a showing as to why an
amendment, argument or evidence
sought to be entered could not have
been submitted earlier does not by itself
raise such intent. If an applicant acts
with candor and good faith in dealing
with the Office, there should be no
increased risk that the applicant will be
accused of inequitable conduct.
Similarly, if patent practitioners abide
by the standards of professional conduct
expected of practitioners in their
relationships with their clients, and
comply with the requirements of the
patent statutes and rules, there should
be no reason for increased exposure to
malpractice suits.
Comment 69: Several comments
suggested that the Office should adopt
an alternate standard for additional
continued examination filings in place
of the standard set forth in §§ 1.78(d)(1)
and 1.114. Some of the comments
suggested the following alternatives: (1)
A reasonable diligence standard; (2) a
certification by a practitioner that it is
necessary for the inventor to be
adequately protected; (3) the ‘‘unduly
interferes’’ standard as set forth in the
former § 1.111(b); (4) a requirement that
the submission be a bona fide attempt
to advance prosecution; (5) an
explanation of the need for the
continued examination filing; (6) a
reasonable justification standard; (7) a
reasonable under the circumstances
standard; or (8) a good cause standard.
One of the comments stated that a good
cause standard would not place an
undue burden on the Office or prejudice
the public. Additionally, the comment
requested that an application filed for
good cause should not count toward the
single continued examination filing as a
matter of right.
Response: The Office considers the
standard that the amendment, argument
or evidence sought to be entered could
not have been previously submitted set
forth in §§ 1.78(d)(1)(vi) and 1.114(g)
appropriate for an additional continued
examination filing. The standard set
forth in §§ 1.78(d)(1)(vi) and 1.114(g) as
adopted in this final rule (‘‘a showing
that the amendment, argument, or
evidence sought to be entered could not
have been submitted [earlier]’’) is more
definite than the alternatives suggested
in the comments (e.g., ‘‘good cause’’ and
‘‘reasonable under the circumstances’’)
and other standards set forth in the
patent statutes (see e.g., Smith v.
Mossinghoff, 671 F.2d 533, 538, 213
U.S.P.Q. 977, 982 (DC Cir. 1982) (noting
the absence of guidance concerning the
meaning of the term ‘‘unavoidable’’ in
35 U.S.C. 133)). The comments do not
provide an explanation as to why any of
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these alternatives would be a more
effective standard or more definite.
Furthermore, §§ 1.78(d)(1) and 1.114(g)
as adopted in this final rule do not set
an absolute limit on the number of
continued examination filings.
Applicants are permitted to file two
continuation or continuation-in-part
applications and one request for
continued examination without any
justification. Applicants are also
permitted to file any third or subsequent
continuation or continuation-in-part
application or second or subsequent
request for continued examination with
a petition and showing. If an
amendment, argument, or evidence
could have been submitted during the
prosecution of the initial application,
two continuing applications, or a
request for continued examination,
applicant must present such submission
earlier rather than wait to submit it later
in a third or subsequent continuation or
continuation-in-part application or in a
request for continued examination.
Thus, the required showing is an
appropriate standard.
Finally, as discussed further in this
final rule, the Office may grant relief ‘‘in
an extraordinary situation’’ in which
‘‘justice requires’’ even if the situation
does not technically meet the standard
that the amendment, argument or
evidence sought to be entered could not
have been previously submitted. See
§ 1.183. The Office, however, does not
anticipate granting petitions under
§ 1.78(d)(1)(vi) on a basis other than a
showing that the amendment, argument
or evidence sought to be entered could
not have been previously submitted.
Comment 70: Several comments
suggested that the changes to § 1.78
should only be temporary so that the
Office may assess the impact of the
changes before adopting the rule. One
comment also suggested that if the
Office adopts the rule changes, the
Office should eliminate the changes
once the backlog decreases.
Response: Unrestricted continued
examination filings and duplicative
applications that contain patentably
indistinct claims are significantly
hindering the Office’s ability to examine
new applications to such an extent that
it is necessary for the Office to adopt
and implement the changes to these
practices. After the implementation of
the changes being adopted in this final
rule, the Office will re-evaluate the rules
of practice to determine what, if any,
additional changes are necessary.
Comment 71: Several comments
suggested that §§ 1.78(d)(1) and 1.114
should be revised from ‘‘a showing as to
why the amendment, argument, or
evidence presented could not have been
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previously submitted’’ to ‘‘a showing as
to why the new claim, amendment,
argument, or evidence presented could
not have been previously submitted’’ to
resolve any potential ambiguity in the
rules.
Response: The Office notes the
comments’ concern for ambiguity in the
language of the rules. The phrase, ‘‘a
showing * * * that the amendment,
argument, or evidence sought to be
entered could not have been submitted’’
(emphasis added) inherently
encompasses a showing as to why a new
claim could not have been previously
submitted. A new claim presented in a
continuing application is considered to
be an amendment to the claims of the
prior-filed application. Thus, by using
the word ‘‘amendment’’ in the standard
of §§ 1.78(d)(1)(vi) and 1.114(g), the
Office intended to capture new claims
sought to be introduced in a third or
subsequent continuation or
continuation-in-part application or
second or subsequent request for
continued examination.
Comment 72: One comment
recommended that the Office should
only require a petition and showing if
the claims are presented more than two
years after the earliest filing date
claimed.
Response: Sections 1.78(d)(1) and
1.114 as adopted in this final rule
provide applicant sufficient
opportunities to present claims during
the prosecution of the initial
application, two continuing
applications, and a request for
continued examination in an
application family without a petition
under § 1.78(d)(1)(vi) or 1.114(g). The
prosecution of these applications and
the request for continued examination,
most likely, would extend more than
two years from the earliest claimed
filing date. Therefore, the suggestion, if
adopted, would likely increase the
number of applicants who would be
required to file a petition and showing.
Comment 73: Several comments
proposed an exception to the rule
changes to permit applicant to file a
continuing application or a request for
continued examination as a matter of
right, without requiring a petition and
showing, if the prior application is
abandoned prior to examination.
Response: As suggested, the Office
has made modifications to the proposed
provisions to provide that an applicant
may file a continuation or continuationin-part application without any
justification in certain situations in
which the prior-filed application was
abandoned prior to examination.
Section 1.78(d)(1)(v) as adopted in this
final rule provides that if an applicant
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files a continuation or continuation-inpart application to correct informalities
rather than completing an application
for examination under § 1.53 (i.e., the
prior-filed application became
abandoned due to the failure to timely
reply to an Office notice issued under
§ 1.53(f)), the applicant may file ‘‘one
more’’ continuation or continuation-inpart application without a petition and
showing under § 1.78(d)(1)(vi). Thus,
applicant may file a continuation or
continuation-in-part application to
correct informalities rather than
completing an application for
examination under § 1.53. The priorfiled nonprovisional application,
however, must be entitled to a filing
date and have paid therein the basic
filing fee within the pendency of the
application. See § 1.78(d)(2).
Comment 74: Several comments
suggested the Office should include
exceptions to the petition requirement
of §§ 1.78(d)(1) and 1.114 to permit
applicant to file a continuing
application or a request for continued
examination as a matter of right,
without requiring a petition and
showing, in the following situations: (1)
Some of the claims in the prior-filed
application have been allowed and the
continuation application contains only
claims that were rejected in the priorfiled application; (2) the continuation
application contains claims to an
unclaimed invention disclosed in the
prior-filed application; (3) the
continuing application is claiming an
independent and distinct invention; (4)
the continuing application claims
species or subgenus that falls within a
generic claim that has been allowed or
issued in one of the prior-filed
applications; (5) the continued
examination filing is filed for the
purposes of submitting newly
discovered prior art or amendments or
evidence in view of the newly
discovered prior art; (6) the continued
examination filing is filed after an
unsuccessful appeal; (7) a divisional
application of an application that was
subject to a restriction requirement is
filed for the purposes of claiming the
non-elected inventions; (8) the
continuation application includes
claims that were canceled in the priorfiled application; (9) the applicant
certifies that the filing is done in good
faith to advance prosecution and
without deceptive intent; (10) the
continued examination filing is filed for
submitting evidence or an amendment
to overcome a final rejection; (11) a
continuation or continuation-in-part is
filed to overcome a lack of utility
rejection; (12) the continued
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examination filing is filed to submit a
declaration under § 1.131 or 1.132; (13)
the continued examination filing is filed
to submit data or other evidence not
available for submission in the parent
application to obviate a rejection under
35 U.S.C. 101 or 112, ¶ 1 (e.g., for lack
of utility or enablement); (14) the
continued examination filing is filed to
respond to an examiner’s request for
additional information; (15) the
continued examination filing is filed to
respond to a new ground of rejection;
(16) the prior-filed application was
abandoned in favor of a continuing
application that is filed using the Office
electronic filing system; and (17) a
request for continued examination is
filed via the Office electronic filing
system. One comment stated that if
Congress does not eliminate 35 U.S.C.
135(b)(2), the need to copy claims from
published applications should be
exempt from the limit of continued
examination filings in an application as
a matter of right.
Response: The Office notes the
concerns expressed in the public
comment regarding the proposed
changes to §§ 1.78(d)(1) and 1.114 that
would have required applicant to file a
petition and showing for a second or
subsequent continuation or
continuation-in-part application or
request for continued examination. The
Office has modified these proposed
changes such that this final rule permits
an applicant to file two continuation
applications or continuation-in-part
applications, plus a single request for
continued examination in an
application family, without any
justification.
Other than the situations provided in
§§ 1.78(d)(1)(iv) and (d)(1)(v), this final
rule permits that a third or subsequent
continuing application or any second or
subsequent request for continued
examination to be filed with a petition
and a showing as to why the
amendment, argument, or evidence
sought to be entered could not have
been previously submitted. Sections
1.78(d)(1)(iv) and (d)(1)(v) provide that
applicant may file ‘‘one more’’
continuation or continuation-in-part
application without a petition and
showing in certain situations.
Specifically, § 1.78(d)(1)(iv) pertains to
the situation where an applicant files a
bypass continuation or continuation-inpart application rather than paying the
basic national fee (entering the national
stage) in an international application in
which a Demand for international
preliminary examination (PCT Article
31) has not been filed, and the
international application does not claim
the benefit of any other nonprovisional
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application or international application
designating the United States of
America. See the discussion of
§ 1.78(d)(1)(iv). Section 1.78(d)(1)(v)
pertains to the situation where an
applicant files a continuation or
continuation-in-part application to
correct informalities rather than
completing an application for
examination under § 1.53. See the
discussion of § 1.78(d)(1)(v).
The Office will decide petitions under
§§ 1.78(d)(1)(vi) and 1.114(g) based on
their substantive argument and the facts
in the record and apply the standard in
a consistent manner. There are no
situations that will result in a per se or
pro forma grant of a petition under
§ 1.78(d)(1)(vi) or 1.114(g). Whether
specific situations would be a sufficient
showing under § 1.78(d)(1)(vi) or
1.114(g) is discussed in the responses to
subsequent comments.
Comment 75: Several comments
opposed the $400 fee for filing a petition
under §§ 1.78(d)(1) and 1.114. The
comments indicated that the proposed
petition fee of $400 is unnecessarily
high, especially in view of the filing
fees. Furthermore, the comments argued
that it is unfair to require the
submission of a costly fee and a timeconsuming petition regardless of the
reason for filing the continuing
application or request for continued
examination. One other comment stated
that the proposed petition fee does not
cover the amount of work required to
determine if applicant’s showing is
sufficient to meet the requirements in
§§ 1.78(d)(1) and 1.114. Another
comment questioned why an applicant
must pay a petition fee of $400 when
filing an additional continuation-in-part
application simply to add new matter.
Response: The Office considers $400
to be an appropriate fee for filing a
petition under § 1.78(d)(1)(vi) or
1.114(g). 35 U.S.C. 41(d) authorizes the
Director to establish fees to recover the
estimated average cost to the Office for
handling, reviewing and deciding
petitions. The Office has determined
that the average cost to the Office for
handling, reviewing and deciding the
petitions under §§ 1.78(d)(1)(vi) and
1.114(g) will be at least $400. As
previously discussed, applicants most
likely will be able to avoid the
requirements for filing a petition and
the required fee if applicants diligently
prosecute applications (including the
continuing applications and a request
for continued examination permitted
under §§ 1.78(d)(1) and 1.114(f) without
any petition). If an applicant desires to
file an application simply to claim new
subject matter, the applicant may file a
new application (rather than a
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continuation-in-part application)
without claiming the benefit of the
prior-filed applications and avoid
paying the $400 petition fee. As
discussed previously, claims to new
subject matter will not be entitled to any
benefit of the prior-filed application that
does not provide support under 35
U.S.C. 112, ¶ 1, for the claimed subject
matter and the patent term of any
resulting patent of the continuation-inpart application would be measured
from the filing date of the prior-filed
application.
Comment 76: One comment requested
that the Office waive the requirement
for a petition fee if applicant submits
new art from a foreign search report or
related application or files an
amendment in response to new
arguments made by the examiner.
Response: A petition, the appropriate
showing, and the fee set forth in
§ 1.17(f) are required under
§ 1.78(d)(1)(vi) or 1.114(g) when
applicant files a third or subsequent
continuing application or a second or
subsequent request for continued
examination regardless of the reason for
such a filing. In addition, a request to
submit new art from a foreign search
report or related application is not likely
to be a sufficient showing under
§ 1.78(d)(1)(vi) or 1.114(g) (see
discussion relating to the filing of
continuing applications and requests for
continued examination to obtain
consideration of an information
disclosure statement). Likewise, the
mere fact that the examiner made new
arguments or a new ground of rejection
in a final Office action would not be
considered a sufficient showing. The
Office will decide each petition on a
case-by-case basis focusing on whether
the new ground of rejection in the final
Office action could have been
anticipated by the applicant.
Comment 77: Several comments
stated that there is no public notice of
the criteria the Director will apply to
meet the required showing under
§ 1.78(d)(1) or 1.114. A number of
comments sought clarification on what
type of showing under § 1.78(d)(1) or
1.114 would be necessary to permit the
filing of an additional continuing
application or request for continued
examination. A number of comments
specifically sought clarification of the
phrase, ‘‘could not have been previously
submitted,’’ in §§ 1.78(d)(1) and 1.114
regarding the satisfactory showing
needed to be permitted to file an
additional continuing application or
request for continued examination. A
number of other comments suggested
that prior to the implementation of the
final rule, the Office should publish
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more specific guidelines such as a nonexclusive set of examples that would
constitute a sufficient showing under
§§ 1.78(d)(1) and 1.114. In addition,
several comments requested that the
Office provide an opportunity for public
comment on the suggested guidelines.
Response: As discussed previously,
the standard set forth in §§ 1.78(d)(1)(vi)
and 1.114(g) as adopted in this final rule
(‘‘a showing that the amendment,
argument, or evidence sought to be
entered could not have been submitted
[earlier]’’) is more definite than the
alternatives suggested in the comments
(e.g., ‘‘good cause’’ and ‘‘reasonable
under the circumstances’’) and other
standards set forth in the patent statutes
(see e.g., Smith v. Mossinghoff, 671 F.2d
533, 538, 213 U.S.P.Q. 977, 982 (D.C.
Cir. 1982) (noting the absence of
guidance concerning the meaning of the
term ‘‘unavoidable’’ in 35 U.S.C. 133)).
If an amendment, argument or evidence
could be submitted during the
prosecution of the initial application,
two continuing applications, and a
request for continued examination in an
application family, applicant must
present such an amendment, argument
or evidence earlier rather than wait to
submit it later in an additional
continuing application or request for
continued examination. Applicants
should not rely upon the availability of
additional continuing applications or
requests for continued examination in
prosecuting an application. The Office
will determine on a case-by-case basis
whether the applicant’s showing as to
why the amendment, argument or
evidence sought to be entered could not
have been submitted earlier is
satisfactory. In addition to the showing
submitted by the applicant, the Office
may review the prosecution history of
the initial application and the prior
continuing applications or require
additional information from the
applicant in deciding a petition. The
following are some factors that the
Office may consider when deciding
whether to grant a petition under
§ 1.78(d)(1)(vi) or 1.114(g): (1) Whether
applicant should file an appeal or a
petition under § 1.181 (e.g., to withdraw
the finality of an Office action) rather
than a continuing application or request
for continued examination; (2) the
number of applications filed in parallel
or serially with substantially identical
disclosures; and (3) whether the
evidence, amendments, or arguments
are being submitted with reasonable
diligence.
With respect to the first factor
(whether applicant should be filing an
appeal or a petition under § 1.181 rather
than a continuing application or request
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for continued examination), if the
showing under § 1.78(d)(1)(vi) or
1.114(g) relates to an issue that should
be petitioned or appealed, the Office
will likely not grant the petition for an
additional continuing application or
request for continued examination.
Applicant should address any issues
pertaining to inadequate examination by
seeking review via a petition under
§ 1.181 or an appeal, rather than by
filing a continuing application or
request for continued examination.
If the disagreement between the
examiner and applicant is procedural in
nature (e.g., an objection), then
applicant should file a petition under
§ 1.181. For example, an applicant
should file a petition under § 1.181 to
request the withdrawal of the finality of
an Office action when the finality was
premature, or to review the examiner’s
refusal to enter an after-final
amendment. The Office will likely not
grant a petition under § 1.78(d)(1)(vi) or
1.114(g) if applicant argues only that an
amendment after final rejection should
have been entered in the prior-filed
application because the final was
premature. Applicant should have
addressed the non-entry in the priorfiled application and not later in a
petition under § 1.78(d)(1)(vi) or
1.114(g) for a continuing application or
request for continued examination. If
the issue goes to the merits of a
rejection, applicant should file an
appeal to the BPAI under 35 U.S.C. 134
and § 41.31.
With respect to the second factor (the
number of applications filed in parallel
or serially with substantially identical
disclosures), the higher the number of
applications with identical or
substantially identical disclosures or the
higher the number of applications in the
chain of prior-filed copending
applications, the more opportunities
applicant had to present the
amendment, argument or evidence.
Accordingly, a petition under
§ 1.78(d)(1)(vi) or 1.114(g) is less likely
to be granted.
With respect to the third factor
(whether the evidence, amendments, or
arguments are being submitted with
reasonable diligence), the Office will
focus on whether the evidence or data
submitted with the petition to meet the
showing under § 1.78(d)(1)(vi) or
1.114(g) was presented in a reasonably
diligent manner. This will take into
account the condition of the application
at the time of examination (e.g., whether
the initial application was in proper
form for examination by the time of the
first Office action in the initial
application or whether it was necessary
to first issue Office actions containing
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46771
rejections under 35 U.S.C. 112 or
objections to have the application
placed in proper form for examination),
the consistency of the Office’s position
during prosecution (e.g., whether
applicant received wholly new prior art
rejections versus prior art rejections
slightly modified to address the
amendments), and the earnestness of the
applicant’s efforts to overcome
outstanding rejections (e.g., whether
replies fully addressed all of the
grounds of rejection or objection in the
Office actions, or whether amendments
or evidence were submitted only when
arguments were failing to persuade the
examiner).
Comment 78: One comment sought
clarification as to whether a petition
under § 1.78(d)(1) would be available for
‘‘involuntary’’ divisional applications.
Another comment suggested an
applicant should be permitted to file
any divisional application in response
to a restriction requirement.
Response: The Office notes the
concerns expressed in the public
comment regarding the proposed
changes to § 1.78(d)(1)(ii). The Office
has modified this provision relative to
the proposed changes such that
§ 1.78(d)(1)(ii) as adopted in this final
rule does not require a divisional
application to be filed during the
pendency of the application subject to a
requirement for restriction, as long as
the copendency requirement of 35
U.S.C. 120 is met. Under this final rule,
applicant may file, without any
justification, a divisional application
containing only claims directed to a
non-elected invention that has not been
examined if the prior-filed application
was subject to a requirement for
restriction (an ‘‘involuntary’’ divisional
application’’). Applicant may also file
two continuation applications and a
request for continued examination in
the divisional application family,
without any justification. Furthermore,
applicant may file a third or subsequent
continuation application or a second or
subsequent request for continued
examination with a petition and
showing.
Comment 79: Several comments
sought clarification on whether the
Office will grant a petition under
§ 1.78(d)(1) for filing a divisional
application of an application that was
subject to a restriction requirement for
the purposes of claiming the nonelected inventions.
Response: As previously discussed,
the Office has modified the provisions
of § 1.78(d)(1)(ii) relative to the
proposed changes. In this final rule,
§ 1.78(d)(1)(ii) does not require a
divisional application to be filed during
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the pendency of the application subject
to a requirement for restriction, as long
as the copendency requirement of 35
U.S.C. 120 is met. This final rule
provides that an applicant may file a
divisional application directed to each
non-elected invention that has not been
examined if the prior-filed application
is subject to a requirement for
restriction. Section § 1.78(d)(1)(iii) as
adopted in this final rule also permits
applicant to file two continuation
applications of a divisional application,
plus a request for continued
examination in the divisional
application family, without any
justification. Furthermore, applicant
may file an additional continuation
application or request for continuation
examination with a petition and
showing. Under this final rule,
applicant should have sufficient time to
file a divisional application for claiming
a non-elected invention. Therefore, the
Office will most likely not grant a
petition under § 1.78(d)(1)(vi) to permit
an applicant to file a divisional
application directed to a non-elected
invention.
Comment 80: One comment suggested
a petition under § 1.78(d)(1) should be
granted when an applicant needs an
additional continuing application to
partition the claims in the prior-filed
application, such that a terminal
disclaimer applies only to some but not
all claims in the prior-filed application.
The comment alternatively suggested
changing the regulations to allow the
filing of a terminal disclaimer for
selected claims.
Response: This final rule permits
applicant to file two continuation or
continuation-in-part applications plus a
request for continued examination in an
application family, without justification.
Therefore, applicant may use one of the
two permitted continuation or
continuation-in-part applications to
partition the claims such that a terminal
disclaimer applies to the prior-filed
application but does not apply to the
continuation application. Notably,
applicant may avoid this situation by
presenting all of the patentably
indistinct claims in a single application.
As discussed previously, multiple
applications with patentably indistinct
claims divert the Office’s patent
examining resources from the
examination of new applications.
Applicant should submit all patentably
indistinct claims in a single application.
See §§ 1.75(b)(4) and 1.78(f). Under this
final rule, applicant must identify such
multiple applications with patentably
indistinct claims to the Office and assist
the Office in resolving double patenting
issues early in the prosecution. In the
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situation in which an application
contains at least one claim that is
patentably indistinct from at least one
claim in another application, the Office
will treat the claims in both applications
as being present in each of the
applications for the purposes of
determining whether each application
exceeds the five independent claim and
twenty-five total claim threshold under
§ 1.75(b). See the discussion of
§ 1.75(b)(4). Accordingly, the Office is
not likely to grant a petition for the sole
purpose of partitioning claims to avoid
a terminal disclaimer.
Additionally, a disclaimer of a
terminal portion of the term of an
individual claim, or individual claims,
is not allowed by statute. 35 U.S.C. 253
provides that ‘‘any patentee or applicant
may disclaim or dedicate to the public
* * * any terminal part of the term, of
the patent granted or to be granted.’’
(Emphasis added.) Therefore, under 35
U.S.C. 253, a terminal disclaimer must
be of a terminal portion of the term of
the entire patent and cannot be applied
to selected claims as advocated in the
comment.
Comment 81: Several comments
asserted that an applicant filing an
additional continuation-in-part
application would be able to argue
successfully that the amendment or
argument could not have been
previously submitted because the
subject matter was not present at the
time of filing the initial application.
Thus, the proposed rules would force
these applicants to file a pro forma
petition.
Response: The mere fact that the
subject matter was not present at the
time of filing the prior-filed application
would not be a sufficient showing under
§ 1.78(d)(1)(vi). The Office will decide
these petitions on a case-by-case basis
based on the prosecution history of the
prior-filed application as well as the
records of the continuation-in-part
application. The Office will consider the
showing of why the new subject matter
sought to be entered could not have
been previously submitted in the priorfiled application. The Office will also
consider the amendment including any
new claims to determine whether the
claims in the continuation-in-part
application are directed to the new
subject matter or mainly to the subject
matter disclosed in the prior-filed
application. For example, if the new
subject matter is not being claimed in
the continuation-in-part application, but
merely being added to circumvent the
rule, the Office will not grant the
petition. Furthermore, 35 U.S.C. 120
requires that the prior-filed application
disclose the subject matter of at least
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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. Thus,
any claim in the continuation-in-part
application that is directed to the
subject matter not disclosed in the
manner provided by 35 U.S.C. 112, ¶ 1,
in the prior-filed application would be
entitled only to the actual filing date of
the continuation-in-part application (not
the filing date of the prior-filed
application), and subject to prior art
based on the actual filing date of the
continuation-in-part application.
Applicant should not claim the benefit
of the prior-filed application if all of the
claims in the continuation-in-part
application are directed to the new
subject matter. The continuation-in-part
application would not be entitled to the
benefit of the filing date of the priorfiled application, and the term of any
patent resulting from the continuationin-part application will be measured
under 35 U.S.C. 154(a)(2) from the filing
date of the prior-filed application. That
is, applicant would not receive any
benefit of the earlier application but
would have a patent term that is
measured from the filing date of the
earlier application. If there are any
claims in the continuation-in-part
application that are directed solely to
subject matter disclosed in the priorfiled application, applicant must submit
those claims in the prior-filed
application rather than filing a
continuation-in-part application unless
applicant provides a showing as to why
these claims could not have been
previously submitted.
Comment 82: Several comments
requested that the Office permit an
applicant to file an additional
continuing application or request for
continued examination when the
applicant indicates why the new
invention could not otherwise be
protected using another type of
application, such as a reissue
application or a reexamination
proceeding. These comments also
requested that the Office permit an
additional continuing application or an
additional request for continued
examination that contains claims
broader than in the previous application
to which priority is claimed and contain
claims not subject to a double patenting
rejection.
Response: The Office will likely not
grant such a petition. Applicant may file
a reissue application under 35 U.S.C.
251 or a reexamination proceeding, if
appropriate, to submit claims with
different scope. A desire to avoid the
requirements governing reissue
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applications or reexamination
proceedings would not be a sufficient
showing under § 1.78(d)(1)(vi) or
1.114(g).
Comment 83: One comment sought
clarification on whether the required
showing under §§ 1.78(d)(1) and 1.114
will preclude explanations that are
permitted when filing a reissue
application. A further comment stated
the required showing under
§§ 1.78(d)(1) and 1.114 is greater than
the showing required to file a reissue
application.
Response: This final rule permits
applicant to file two continuation or
continuation-in-part applications plus
one request for continued examination
in an application family, without any
justification. Applicant may also file a
third or subsequent continuation or
continuation-in-part application or a
second or subsequent request for
continued examination with a petition
and showing that the amendment,
argument, or evidence sought to be
entered could not have been submitted
previously. As previously discussed, if
an amendment, argument, or evidence
could have been submitted during the
prosecution of the initial application,
two continuation or continuation-inpart applications or a request for
continued examination, applicant must
submit the amendment, argument or
evidence in one of these filings, rather
than in a third or subsequent continuing
application or second or subsequent
request for continued examination to
ensure that applicant advances the
prosecution to final action and does not
impair the ability of the Office to
examine new applications.
Under 35 U.S.C. 251, applicant may
file a reissue application to correct an
error in the patent which was made
without any deceptive intent, where, as
a result of the error, the patent is
deemed wholly or partly inoperative or
invalid. See MPEP section 1402. The
required showing under §§ 1.78(d)(1)(vi)
and 1.114(g) is different than the
explanation required for filing a reissue
application. The showing under
§§ 1.78(d)(1)(vi) and 1.114(g) does not
require an error made without any
deceptive intent and does not require as
a result of the error, the patent to be
deemed wholly or partly inoperative or
invalid. If it is more appropriate for
applicant to file a reissue application,
applicant should file a reissue
application under 35 U.S.C. 251 rather
than filing a continuing application.
Comment 84: Several comments
suggested that if the Office permits
applicant to provide additional
evidence of unexpected results with the
filing of an additional continued
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examination filing, then the
experimentation leading to the evidence
must have been conducted diligently
and commenced within six months of
the filing of the initial application.
Another comment further suggested
evidence that an applicant had not
previously learned or known that others
had developed similar or parallel
technology should not be considered as
evidence that an amendment, argument
or evidence could not have been
submitted previously under § 1.78(d)(1)
or 1.114.
Response: The Office will decide
petitions under § 1.78(d)(1)(vi) or
1.114(g) on a case-by-case basis. The
Office will focus on whether the
evidence or data submitted with the
petition to meet the showing under
§ 1.78(d)(1)(vi) or 1.114(g) was
presented in a timely manner and was
diligently obtained. Any evidence or
data that petitioner did not act
diligently in obtaining in response to a
rejection or requirement in an Office
action will be considered unfavorably
when deciding a petition under
§ 1.78(d)(1)(vi) or 1.114(g). For example,
the Office will likely not grant a petition
if the examiner made the rejection in the
first Office action of the initial
application and maintained it in the
subsequent Office actions, but
applicants responded only with
arguments, instead of with evidence or
an amendment, until after the final
Office action. In contrast, the Office will
likely grant a petition if, in a continuing
application or request for continued
examination, the data necessary to
support a showing of unexpected results
just became available to overcome a new
rejection under 35 U.S.C. 103 made in
the final Office action, and the data is
the result of a lengthy experimentation
that was diligently commenced and
could not have been completed earlier.
Applicant should exercise reasonable
foresight to commence any appropriate
experimentation early rather than wait
until the examiner makes a rejection or
finds applicant’s arguments
unpersuasive.
Comment 85: Several comments
sought clarification on whether an
additional continued examination filing
would be permitted under § 1.78(d)(1)
or 1.114 for submitting an information
disclosure statement or an amendment
in view of an information disclosure
statement in the following situations: (1)
To submit a newly discovered reference,
including a reference cited in a foreign
counterpart application; (2) to submit a
new reference that was not publicly
available at the time the previous
amendment was filed; (3) to submit an
amendment to the claims that is
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necessitated by previously cited prior
art or newly discovered prior art; and (4)
to submit broadened claims after receipt
of a foreign search or examination report
citing new art. One comment argued
that submissions of late discovered prior
art should be permitted because the
consideration of the prior art will
improve patent quality and eliminate
allegations of inequitable conduct in
obtaining patent rights.
Response: The Office will likely not
grant such a petition for submitting an
information disclosure statement (IDS)
or an amendment necessitated by (or in
view of) newly discovered prior art. The
effectiveness and quality of the
examination process as well as
patentability determinations would
improve if the most pertinent
information were presented early in the
examination process. An additional
continued examination filing is not
necessary for the consideration of newly
discovered prior art or an amendment to
the claims that is necessitated by the
newly discovered prior art. See Changes
To Information Disclosure Statement
Requirements and Other Related
Matters, 71 FR at 38812–16, 38820–22,
1309 Off. Gaz. Pat. Office at 27–31, 34–
36 (proposed changes to §§ 1.97 and
1.98 permit applicant to submit prior art
for consideration by the examiner, when
applicant complies with specific
requirements at various time periods,
including after final action, notice of
allowance and payment of the issue fee).
The proposed IDS changes (if
adopted) would permit applicant to
submit an IDS after a first Office action
on the merits, but before the mailing
date of a notice of allowability or a
notice of allowance under § 1.311, if
applicant files the IDS with either: (1)
The certification under § 1.97(e)(1) and
a copy of the foreign search report, or
(2) an explanation under proposed
§ 1.98(a)(3)(iv) as to why each reference
is being cited, and a non-cumulative
description under proposed
§ 1.98(a)(3)(v) as to how each reference
is not cumulative of any other reference
cited. Applicant would also be
permitted to submit an IDS after
allowance but before the payment of the
issue fee, if applicant files the IDS with
a patentability justification under
proposed § 1.98(a)(3)(vi), including any
appropriate amendments to the claims.
Applicant would also be permitted to
submit an IDS after the payment of the
issue fee if applicant files a petition to
withdraw from issue pursuant to
§ 1.313(c)(1), the patentability
justification under proposed
§ 1.98(a)(3)(vi)(B), and an amendment to
the claims. Prior to the effective date of
the final rule of the changes to IDS
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requirements, applicant may submit an
IDS after the close of prosecution with
a petition under § 1.183 if the IDS
submission complies with the proposed
rule requirements in §§ 1.97 and 1.98.
Comment 86: Several comments
sought clarification as to whether an
additional continued examination filing
would be permitted under §§ 1.78(d)(1)
and 1.114 in the following situations: (1)
When the examiner found the earlier
arguments and amendments by
applicants to be unpersuasive; (2) when
the examiner’s interpretation of the
claims is unusual and only recently
understood by the applicant; (3) when
the examiner changes his or her
interpretation of claim language; and (4)
when the practitioner discovers that the
examiner is under a misunderstanding.
Response: These circumstances alone
more than likely would not be sufficient
to establish a showing under
§ 1.78(d)(1)(vi) or 1.114(g). Applicant
should request an interview with the
examiner to resolve these types of issues
during the prosecution of the initial
application, two continuation or
continuation-in-part applications and
request for continued examination. In
addition, applicant in each reply to an
Office action must distinctly and
specifically point out the supposed
errors in the Office action and must
reply to every ground of objection and
rejection raised in the Office action. See
§ 1.111(b). The reply must also present
detailed explanations of how each claim
is patentable over any applied
references. See §§ 1.111(b) and (c). If
applicant disagrees with the examiner’s
decision to maintain a rejection on the
basis that the applicant feels that the
examiner is misinterpreting the claims,
applicant should seek an appeal rather
than file additional continuing
applications or requests for continued
examination.
Comment 87: Several comments
sought clarification on whether an
additional continued examination filing
would be permitted under §§ 1.78(d)(1)
and 1.114 when the examiner makes a
new ground of rejection in a final Office
action using a new prior art reference,
a reference already of record but not
previously applied, a new basis for the
rejection (e.g., changing a rejection
under 35 U.S.C. 102 to a rejection under
35 U.S.C. 103), or a different reasoning
(e.g., the supporting arguments have
changed or the rejection refers to a new
portion of the applied art). Several
comments stated that permitting a final
rejection based on a new ground of
rejection while not allowing further
opportunity to amend through
continued examination applications is
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unfair and presents an opportunity for
abuse.
Response: The Office will decide each
petition for an additional continued
examination filing on a case-by-case
basis, focusing on whether the new
ground of rejection in the final Office
action could have been anticipated by
the applicant. For example, the Office
will likely grant a petition if the final
rejection, after the two continuing
applications and request for continued
examination permitted under
§§ 1.78(d)(1) and 1.114(g) without a
petition, contains a new ground of
rejection that could not have been
anticipated by applicant. However, the
Office will likely not grant a petition
under § 1.78(d)(1)(vi) or 1.114(g) if the
examiner only changed a rejection
under 35 U.S.C. 102 to a rejection under
35 U.S.C. 103 (or maintained a rejection
under 35 U.S.C. 103) with the addition
of a new secondary reference in
response to an amendment adding a
new claim limitation because such a
new rejection should have been
anticipated by the applicant. Therefore,
the mere fact that the examiner made a
new ground of rejection in a final Office
action probably would not constitute a
sufficient showing.
Comment 88: Several comments
sought clarification on whether an
additional continued examination filing
would be permitted under §§ 1.78(d)(1)
and 1.114 in the following situations: (1)
When the examiner indicates in an
advisory action that an after-final
amendment would require a new
search; or (2) to submit evidence or an
amendment to overcome a final
rejection.
Response: The Office will likely not
grant a petition based on the mere
showing that the examiner indicates in
an advisory action that the entry of an
after-final amendment would require a
new search, or that the evidence or
amendment sought to be entered will
overcome a final rejection. Applicants
are permitted to submit any desired
amendment, argument, or evidence
during the prosecution of the initial
application, two continuation or
continuation-in-part applications and
one request for continued examination.
Since numerous opportunities are given
to submit any desired amendment,
argument, or evidence, the mere fact
that an amendment, argument, or
evidence is refused entry because
prosecution in the prior-filed
application is closed will not, by itself,
be a sufficient reason to warrant the
grant of a petition under § 1.78(d)(1)(vi)
or 1.114(g). Rather, an applicant will be
expected to demonstrate why the
amendment, argument, or evidence
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sought to be entered could not have
been submitted prior to the close of
prosecution in the prior-filed
application.
Comment 89: Several comments
sought clarification as to whether the
Office will likely grant a petition for an
additional continuing application if
some of the claims in the prior
application are rejected and other
claims are allowed, and applicant
wishes to appeal the rejected claims and
obtain a patent on the allowed claims.
Response: The Office is not likely to
grant a petition under § 1.78(d)(1)(vi) in
this situation in the absence of special
circumstances. Section 1.78(d)(1)(i)
permits an applicant whose initial
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. The
applicant is expected to use the two
continuation or continuation-in-part
applications permitted without any
petition or showing under § 1.78(d)(1)(i)
for this purpose. The applicant needs to
pursue an appeal (or cancel the rejected
claims) if the application still contains
rejected claims after a second
continuing application and request for
continued examination.
Comment 90: Several comments
suggested that applicant should be
permitted to file an additional
continuing application under
§ 1.78(d)(1) or request for continued
examination under § 1.114 for changing
the scope of the claims in the following
situations: (1) Pursue claims that have
the same or narrower scope as the
claims in an allowed application; (2)
claim a species or subgenus that falls
within a generic claim that has been
allowed or issued in one of the priorfiled applications; (3) pursue the
rejected or broader claims when other
claims are allowable; (4) file broader
claims, when applicant recently
discovered a limitation in an allowed
claim that was unduly limiting; (5)
pursue broader claims, or claim aspects
of the invention that are disclosed, but
not claimed, in the prior-filed
application (contains claims to an
unclaimed invention disclosed in the
prior-filed application); (6) pursue
narrower claims; (7) claim inventions of
a different scope when the scope of new
claims finds specific support in the
application as filed; (8) pursue new
claims when the scope of new claims
was unintentionally omitted from the
initial application; or (9) protect a
different aspect of the invention
revealed by research and development
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subsequent to an initial application
filing.
Response: If a claim can be submitted
during the prosecution of the initial
application, two continuation or
continuation-in-part applications and
one request for continued examination,
applicant must present such a claim
early in these filings rather than wait to
submit it later in an additional
continuing application or request for
continued examination. The situations
described in the comments do not
present any reason why claims directed
to claims with the same, narrower, or
broader scope could not have been
submitted earlier. Applicants may file a
reissue application under 35 U.S.C. 251,
if appropriate, to submit claims with a
different scope.
Comment 91: Several comments
sought clarification on whether an
additional continued examination filing
would be permitted under §§ 1.78(d)(1)
and 1.114 for the following situations:
(1) When a product recently becomes
commercially viable; (2) when a
competing product is newly discovered;
(3) when new information is discovered
that could not have been provided in
the prior application; (4) when
applicant discovered new inherent
properties that he or she now wishes to
claim; (5) when applicant now has the
financial resources to file previously
unclaimed inventions; (6) when clinical
trials indicate the previously unclaimed
subject matter may be useful; or (7)
when the court determined that the
format of a patented claim is improper
and applicant wishes to file a
continuing application to seek the
proper protection.
Response: The Office likely will not
grant such a petition in these situations.
Applicant is permitted to file two
continuation or continuation-in-part
applications and a request for continued
examination without a petition and
showing. Applicant should have
sufficient time to submit any desired
claims. Applicant should also know
what the applicant regards as his or her
invention and claim his or her invention
during the prosecution of these
applications, regardless of whether
applicants have recently discovered a
commercially viable product, financial
resources, useful subject matter, a
competing product, or similar or
parallel technology on the market.
Applicants may file a reissue
application under 35 U.S.C. 251, if
appropriate, to correct or amend any
patented claims. The Office would not
likely grant a petition to permit an
applicant to end-run the two-year filing
period requirement of 35 U.S.C. 251,
¶ 4.
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Comment 92: Several comments
suggested allowing an applicant to file
an additional continuing application or
request for continued examination to
claim inventions related to drugs
undergoing the FDA approval process.
In particular, one comment suggested
two ways of satisfying the required
showing under §§ 1.78(d)(1) and 1.114:
(1) An applicant provides an affidavit or
other statement to the Office confirming
that the applicant is presently engaged
in obtaining information needed for
submitting an Investigational New Drug
(IND) application for that drug; or (2) an
applicant provides evidence to the
Office that the applicant has already
submitted an IND or a Biologics License
Application (BLA) (or an amended IND
application or amended BLA) for the
particular drug.
Response: Such evidence of ongoing
FDA review for a drug allegedly claimed
in an application would not by itself be
considered a sufficient showing under
§ 1.78(d)(1)(vi) or 1.114(g). Applicant
should know what the applicant regards
as his or her invention upon filing an
application and should claim the
invention prior to, or regardless of, any
FDA approval. There is no reason why
an applicant must have FDA approval
prior to deciding for which aspect(s) of
the invention or which invention(s) to
seek patent protection. See In re Brana,
51 F.3d 1560, 1568, 34 U.S.P.Q.2d 1436,
1442 (Fed. Cir. 1995) (‘‘FDA approval
* * * is not a prerequisite for finding a
compound useful within the meaning of
the patent laws.’’). The changes adopted
in this final rule permit an applicant to
file two continuation or continuation-inpart applications and one request for
continued examination in the
application family, without any
justification. In addition, applicant may
file a divisional application directed to
each non-elected invention that has not
been examined if the prior-filed
application was subject to a restriction
requirement and the claims to the nonelected invention are cancelled upon
filing of the divisional application.
Applicant may also file two
continuation applications of the
divisional application and a request for
continued examination in the divisional
application family, without justification.
And, applicant may file a third of
subsequent continuation application or
a second request for continued
examination with a petition and
showing. If applicant is not prepared to
particularly point out and distinctly
claim what the applicant regards as his
or her invention during the prosecution
of the initial application, its two
continuing applications, and a request
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for continued examination in each
application family, applicant should
consider using the deferral of
examination process. See § 1.103(d).
The Office recognizes that, in certain
unpredictable arts (including, for
example, biotechnology and certain
pharmaceuticals), there may be a need
for research or testing to obtain
additional evidence or data to obviate a
rejection for lack of utility under 35
U.S.C. 101 (and consequently for lack of
enablement under 35 U.S.C. 112, ¶ 1).
The case law, however, does not shift
the burden to the applicant to provide
rebuttal evidence or data concerning the
invention’s utility until the examiner
‘‘provides evidence showing that one of
ordinary skill in the art would
reasonably doubt the asserted utility.’’
Brana, 51 F.3d at 1566, 34 U.S.P.Q.2d at
1441 (citing In re Bundy, 642 F.2d 430,
433, 209 U.S.P.Q. 48, 51 (CCPA 1981)).
Even in situations in which a
requirement for such additional
evidence is appropriate, the evidence or
data that would warrant an applicant’s
decision to initiate the FDA regulatory
process should be sufficient to establish
utility for purposes of compliance with
35 U.S.C. 101 and 112, ¶ 1. See MPEP
§ 2107.03 (as a general rule, if an
applicant has initiated human clinical
trials for a therapeutic product or
process, Office personnel should
presume that the applicant has
established that the subject matter of
that trial is reasonably predictive of
having the asserted therapeutic utility).
With respect to situations in which it is
questionable as to whether there is
sufficient enablement for the invention
as claimed, evidence submitted to the
FDA to obtain approval for clinical trials
may be submitted. However,
considerations made by the FDA for
approving clinical trials are different
from those made by the Office in
determining whether a claim is
sufficiently enabled. See MPEP
§ 2164.05 (citing Scott v. Finney, 34
F.3d 1058, 1063, 32 U.S.P.Q.2d 1115,
1120 (Fed. Cir. 1994)). Thus, situations
in which it is necessary for an applicant
to submit data to the Office to
demonstrate patentability using data
obtained from research or testing carried
out as part of the FDA regulatory
process should be rare.
Nevertheless, in the situation in
which there is a rejection such as lack
of utility under 35 U.S.C. 101 (and/or
consequently for lack of enablement
under 35 U.S.C. 112, ¶ 1) in an
application claiming subject matter in
such an unpredictable art, the Office
will likely grant a petition under
§ 1.78(d)(1)(vi) or 1.114(f) if, in a
continuing application or request for
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continued examination, the evidence or
data to demonstrate utility or
enablement just became available or
could not have been otherwise earlier
presented, and the evidence or data
resulted from research or testing that
was commenced with reasonable
diligence. However, this presupposes
that the applicant has taken reasonable
steps to resolve the issue during the
prosecution of the initial (or divisional)
application, its two continuing
applications, and a request for
continued examination in each
application family. In particular, the
Office will consider, inter alia, whether
the applicant: (1) Sought review of the
rejection via an appeal that proceeded to
at least the appeal conference stage and
resulted in an examiner’s answer (rather
than simply filing continuing
applications or a request for continued
examination without the evidence or
data to again argue patentability before
the examiner); (2) initiated the research
or testing promptly (rather than waiting
for a decision to initiate the FDA
regulatory review process); and (3)
sought suspension of action (§ 1.103(a)
or (c)) or deferral of examination if
applicable (§ 1.103(d)) in the continuing
applications or the request for
continued examination and alerted the
Office of the research or testing.
Comment 93: Several comments
sought clarification whether the Office
would grant a petition for an additional
continuing application or request for
continued examination to correct the
inventorship of the application due to
information discovered after
prosecution of the application has
closed.
Response: The Office will likely not
grant such a petition. Applicant should
make the correction early in the
examination process. Furthermore, the
Office has recently proposed changes to
§ 1.312 to provide that the Office may
permit a correction of the inventorship
filed in compliance with § 1.48 after the
mailing of a notice of allowance if
certain requirements are met, such as if
the correction is filed before or with the
payment of the issue fee or if the
correction is filed with the processing
fee set forth in § 1.17(i) and in sufficient
time to permit the patent to be printed
with the correction. See Changes To
Information Disclosure Statement
Requirements and Other Related
Matters, 71 FR at 38817–8, 38823, 1309
Off. Gaz. Pat. Office at 32, 37. Finally,
after the patent has issued, applicant
may correct the inventorship by filing a
reissue application under 35 U.S.C. 251
or pursuant to 35 U.S.C. 256.
Comment 94: One comment discussed
that the limitations on continuing
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applications may create due process
issues because there may be different
treatment of joint inventors of an
application. The comment provided an
example of an application filed naming
joint inventors, e.g., Inventors C and D,
and ensuing problems caused by the
proposed rules as follows: Inventor C
files a continuation application to
prosecute his or her invention. Inventor
D may be deprived of filing a
continuation application on his
invention because the filing by Inventor
D would be a second or subsequent
continuing application that would
require a petition under § 1.78(d)(1).
Response: This final rule permits
applicants to file two continuation or
continuation-in-part applications plus
one request for continued examination
without justification. Applicants may
file a third or subsequent continuation
or continuation-in-part application or a
second or subsequent request for
continued examination with a petition
and showing. Under § 1.78(d)(1)(i),
Inventor C is permitted to file a
continuation application (the first
continuation application) to prosecute
his or her invention, and Inventor D is
permitted to file a continuation
application (the second continuation
application) to prosecute his or her
invention.
Comment 95: Several comments
sought clarification whether the Office
will grant a petition for an additional
continuing application or request for
continued examination for the purpose
of provoking an interference.
Response: The Office will likely not
grant a petition with a showing that the
additional continuation or continuationin-part application or request for
continued examination is solely for the
purpose of provoking an interference. In
most situations, applicants should have
sufficient opportunity to provoke an
interference and copy claims in a timely
manner in compliance with 35 U.S.C.
135(b)(2) in the initial application, two
continuation or continuation-in-part
applications, and one request for
continued examination, all of which are
available without any justification. In
any event, the Office is likely to require
that a request for a statutory invention
registration under § 1.293 be submitted
as a condition of granting any petition
under § 1.78(d)(1)(vi) in the situation
where a third or subsequent
continuation or continuation-in-part
application or second or subsequent
request for continued examination is for
the purpose of provoking an
interference. The Office, however,
would likely grant a petition under
§ 1.78(d)(1)(vi) (without requiring a
request for a statutory invention
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registration under § 1.293) in a limited
situation where an interference is
declared in a second continuation or
continuation-in-part application that
contains both claims corresponding to
the count and claims not corresponding
to the count, and the BPAI suggests that
the claims not corresponding to the
count be canceled from the application
subject to the interference and pursued
in a separate application.
Comment 96: Several comments
sought clarification as to whether the
Office will grant a petition for an
additional continuing application or
request for continued examination when
the Office changes the examiner
assigned to the application either on its
own initiative or in response to the
applicant’s request.
Response: The Office will not grant
such a petition. The mere fact that the
Office changes the examiner assigned to
the application would not be a sufficient
showing under § 1.78(d)(1)(vi) or
1.114(g).
Comment 97: Several comments
sought clarification as to whether the
Office will grant a petition for an
additional continuing application or
request for continued examination when
applicant changes the practitioner of
record, when applicant states that the
change of practitioner was made in good
faith and certifies that the applicant was
dissatisfied with the prior practitioner’s
claim drafting, or when the delay in
filing claims was due to practitioner’s
error or inaction and was not the fault
of the applicant. One comment
expressed concern that if changing the
practitioner of record is an acceptable
reason, it will promote attorney
swapping.
Response: The Office will not grant
such a petition for these circumstances.
A change of practitioner, or errors or
delays caused by the practitioner, would
not be considered sufficient showings.
An applicant is bound by the
consequences of the acts or omissions of
the applicant’s duly authorized and
voluntarily chosen legal representative.
See Link v. Wabash R. Co., 370 U.S. 626,
633–34 (1962).
Comment 98: One comment suggested
that an applicant should be permitted to
file an additional continuation or
continuation-in-part application when
the practitioner does not present the
claims in the prior application because
of excusable neglect.
Response: Rule 60(b) of the Federal
Rules of Civil Procedure (Rule 60(b))
does provide ‘‘excusable neglect’’ as a
basis (among others) for relieving a
party of a judgment or order. See Fed.
R. Civ. P. 60(b)(1). Rule 60(b), however,
further provides that a motion based
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upon ‘‘excusable neglect’’ must be
‘‘made within a reasonable time,’’ and
‘‘not more than one year after the
judgment, order, or proceeding was
entered or taken.’’ See Fed. R. Civ. P.
60(b). Sections 1.78(d)(1) and 1.114 as
adopted in this final rule permit an
applicant to file an initial application,
two continuation or continuation-inpart applications, and a request for
continued examination in any one of
these three applications without
justification. Given the numerous
opportunities provided in §§ 1.78(d)(1)
and 1.114 to prosecute an application
for patent, the ‘‘mistake, inadvertence,
surprise, or excusable neglect’’ standard
set forth in Rule 60(b)(1) is not an
appropriate basis for seeking yet another
opportunity to prosecute the
application. Therefore, the Office is not
likely to grant a petition under
§ 1.78(d)(1)(vi) or 1.114(g) solely on the
basis of ‘‘excusable neglect.’’
Rule 60(b)(6), however, does provide
for relief on the ‘‘catchall’’ basis of ‘‘any
other reason justifying relief from the
operation of the judgment.’’ See Fed. R.
Civ. P. 60(b)(6). While this language
appears to be open-ended, this
provision is typically limited to
exceptional or extraordinary
circumstances suggesting that a party
was faultless in the delay. See Marquip,
Inc. v. Fosber Am., Inc., 198 F.3d 1363,
1370, 53 U.S.P.Q.2d 1015, 1020 (Fed.
Cir. 1999) (citing Pioneer Inv. Serv. Co.
v. Brunswick Assocs. Ltd. P’ship, 507
U.S. 380, 393 (1993)). The patent rules
of practice (§ 1.183) provide that ‘‘in an
extraordinary situation’’ in which
‘‘justice requires,’’ the Office may waive
or suspend any requirement of the
regulations in 37 CFR part 1, which is
not a requirement of statute. The Office
does not anticipate granting petitions
under § 1.78(d)(1)(vi) or 1.114(g) on a
basis other than a showing that the
amendment, argument or evidence
sought to be entered could not have
been previously submitted. However, in
the rare exceptional or extraordinary
situation in which an applicant was
faultless in the delay, and the situation
does not meet the standard that the
amendment, argument or evidence
sought to be entered could not have
been previously submitted, the Office
may grant relief pursuant to § 1.183.
Comment 99: Several comments
sought clarification as to whether the
Office will likely grant a petition for an
additional continuing application or
request for continued examination if the
prior-filed application was abandoned
in favor of a continuing application that
was filed using the Office electronic
filing system or if the request for
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continued examination was filed using
the Office electronic filing system.
Response: The Office will likely not
grant such a petition. The mere fact that
a continuing application or request for
continued examination is electronically
filed via the Office electronic filing
system would not be a sufficient
showing as to why the amendment,
argument or evidence sought to be
entered could not have been previously
submitted.
Comment 100: A few comments
sought clarification as to whether the
Office will likely grant a petition for an
additional continuing application or
request for continued examination if the
applicant becomes disabled for a
lengthy time during pendency of
application.
Response: The Office will likely not
grant such a petition on the mere
showing that the applicant becomes
disabled for a lengthy time during
pendency of application. The changes
being adopted in this final rule permit
applicants to file two continuation or
continuation-in-part applications and a
request for continued examination,
without a petition and showing.
Applicant may also file a third or
subsequent continuation or
continuation-in-part application or a
second or subsequent request for
continued examination with a petition
and showing. Furthermore, applicant
may file a petition for suspension of
action under § 1.103(a) or a request for
deferral of examination under
§ 1.103(d), when necessary.
Comment 101: Several comments
suggested an applicant should be
permitted to file an additional
continuation or continuation-in-part
application or a request for continued
examination for patent term extension
reasons.
Response: No patent term extension
benefits under 35 U.S.C. 154 and 156
will accrue to applicant by filing a third
or subsequent continuing application or
a second or subsequent request for
continued examination. Therefore, a
desire to obtain a patent term extension
would not be a sufficient reason to
permit a third or subsequent continuing
application or a second or subsequent
request for continued examination. In
fact, the filing of a continuing
application or request for continued
examination may result in the loss of a
patent term adjustment under 35 U.S.C.
154(b).
Comment 102: A number of
comments expressed concern regarding
an example provided by the Office that
would meet the showing under
§§ 1.78(d)(1) and 1.114 to permit the
filing of an additional continuing
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application or request for continued
examination. This example permits the
applicant to file an additional
continuing application or request for
continued examination when the
applicant can show that collection of
the data necessary to demonstrate
unexpected results was started after the
applicant received the rejection for the
first time, and was completed only
shortly before filing the petition for an
additional filing. A number of
comments stated that granting a petition
should only depend on when the
information becomes available and not
when the tests begin. One other
comment stated that experiments are
typically ongoing from the date of
invention and that it would be
inappropriate for the Office to require
experimentation to overcome an
obviousness rejection to commence only
after the rejection has been made for the
first time. One comment suggested
removing the language, ‘‘could not have
been anticipated by applicant,’’ from the
example provided by the Office of an
adequate showing under § 1.78(d)(1) or
1.114. The comment expressed concern
that the Office’s example is vague and
subjective, and that removal of the
language, ‘‘could not have been
anticipated by applicant,’’ would make
the standard less arbitrary.
Response: The example is merely one
illustration of when a petition under
§ 1.78(d)(1)(vi) or 1.114(g) will likely be
granted. Other appropriate showings
could result in a petition under
§ 1.78(d)(1)(vi) or 1.114(g) being granted.
As discussed previously, the Office will
focus on whether the evidence or data
submitted was obtained and presented
in a reasonably diligent manner.
Comment 103: One comment
expressed concern regarding the
requirement under § 1.78(d)(1) that an
applicant must submit a petition within
four months from the actual filing date
of the later-filed continuing application,
stating that applicant may need more
time to complete the experimentation or
to prepare the submission in response to
a rejection or a requirement for
information. This comment suggested
that the Office should accept an interim
statement from the applicant when more
time is needed, such as a statement that
the experimentation is progressing, but
is not completed.
Response: Applicant should prepare a
reply diligently upon receiving the final
Office action in the prior application,
which provides a six-month statutory
period for reply. There is no reason why
an applicant should delay preparing a
petition under § 1.78(d)(1)(vi) until a
third or subsequent continuing
application has been filed. Applicants
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should not rely solely upon the fourmonth time period under § 1.78(d)(1)(vi)
to prepare and file a petition under
§ 1.78(d)(1)(vi) for a third or subsequent
continuing application. Therefore, the
four-month time period from the actual
filing date of a third or subsequent
continuing application is a reasonable
deadline to file a petition under
§ 1.78(d)(1)(vi).
Comment 104: A number of
comments requested clarification
regarding who will decide the petitions
under §§ 1.78(d)(1) and 1.114. Several
comments argued that examiners should
not decide the petitions under
§§ 1.78(d)(1) and 1.114. Furthermore, a
number of comments argued that there
is a danger that the standard would be
applied differently in different
Technology Centers. Several comments
suggested that the Office of Petitions
should decide the petitions to encourage
consistency, ensure uniform
interpretation of the rules, and reduce
the impact on examining resources. Yet
another comment suggested that the
BPAI should review the showing
required under §§ 1.78(d)(1) and 1.114.
The comments further argued that there
is a potential for both disparate
treatment and inconsistent application
of §§ 1.78(d)(1) and 1.114 depending on
who decides the petitions and that the
potential of either would violate the
concept of equal protection under the
law.
Several comments requested
clarification regarding the procedures
for appealing the denial of a petition
under § 1.78(d)(1)(vi) or 1.114(g).
Specifically, the comments questioned
whether a denial of a petition should be
appealed to the BPAI or petitioned to
the Director. The comment further
requested that the Office publish the
decisions to encourage consistency and
understanding of the standard. One
comment sought clarification on the
remedies available to an applicant if the
Office denies a petition for an additional
continuing application or request for
continued examination when the
examiner introduced new prior art in a
final Office action. One comment
questioned whether petitions under
§§ 1.78(d)(1) and 1.114 could be decided
objectively due to the Office’s desire to
dramatically curtail continuing
applications and requests for continued
examination.
Response: The Office is making every
effort to become more efficient, to apply
the rules and statutes uniformly, and to
allocate Office resources properly. The
authority to decide petitions under
§§ 1.78(d)(1)(vi) and 1.114(g) has been
delegated to the Deputy Commissioner
for Patent Examination Policy (who may
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further delegate this authority to
officials under the Deputy
Commissioner for Patent Examination
Policy). A decision on a petition under
§ 1.78(d)(1)(vi) or 1.114(g) is not
appealable to the BPAI. The denial of a
petition under § 1.78(d)(1)(vi) or
1.114(g) may be viewed as a final agency
action for the purposes of judicial
review under 5 U.S.C. 704. See MPEP
§ 1002.02. Final decisions of the Office
of the Commissioner for Patents are
accessible in the Freedom of
Information Act (FOIA) section of the
Office’s Internet Web site at (https://
www.uspto.gov/web/offices/com/sol/
foia/comm/comm.htm).
The Deputy Commissioner for Patent
Examination Policy and officials under
the Deputy Commissioner for Patent
Examination Policy will decide
petitions under §§ 1.78(d)(1)(vi) and
1.114(g) on their merits and the facts in
the record and apply the standard in a
consistent manner. The officials who
will decide petitions under
§§ 1.78(d)(1)(vi) and 1.114(g) are
professionals who perform their duties
within the framework of the law, rules,
and examination practice. The Office
only desires to curtail continuing
applications and requests for continued
examination in situations in which the
continued examination filing is for the
purpose of presenting an amendment,
argument or evidence that could have
been, but was not, submitted earlier.
The Office recognizes the need for
continued examination filings for
presenting an amendment, argument or
evidence that truly could not have been
submitted earlier.
Comment 105: A number of
comments requested that the Office set
a time limit for rendering decisions on
petitions under §§ 1.78(d)(1) and 1.114.
The comments suggested that the Office
should set up an adequately staffed
office to decide the petitions promptly,
and in any event, before the close of
prosecution of the parent application so
that applicants are advised of their
prosecution options. The comments
further suggested that the Office should
grant the petition if it is not decided
prior to the close of prosecution.
Response: The Office is continuing to
ensure prompt and consistent decisions
on petitions. It is the general policy of
the Office that petitions are decided in
the order that they are filed in the
Office. Moreover, the Office will likely
deny any petition under § 1.78(d)(1)(vi)
or 1.114(g) filed before the close of
prosecution because applicant may still
submit the amendment, argument, or
evidence in the application if the
prosecution is open. Further, in such
situation, it is unlikely that applicants
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will be able to show that the
amendment, argument, or evidence
sought to be entered could not have
been previously submitted.
Comment 106: One comment sought
clarification regarding the status of an
application during consideration of the
petition. Specifically, the comment
questioned whether an applicant who
had filed a petition under § 1.78(d)(1) or
1.114 would be permitted to file a notice
of appeal under § 41.31(a) within the
time period provided in § 1.134 to avoid
abandonment of the application if the
petition is dismissed. The comment also
inquired whether the notice of appeal
fee would be refunded if the petition
were granted. Several other comments
suggested that the filing of a petition
under § 1.78(d)(1) or 1.114 should serve
as a notice of appeal if the petition is
dismissed. In the alternative, several
comments suggested that the Office
should allow applicants additional time
to file a notice of appeal after the
dismissal of a petition.
Response: The Office will make every
effort to decide the petitions in a timely
manner. The rules have not changed the
time period for filing a notice of appeal
or an appeal brief. Pursuant to
§ 41.31(a)(1), an applicant must file a
notice of appeal accompanied by the fee
set forth in § 41.20(b)(1) within the time
period for reply set forth in the Office
action. The notice of appeal fee is set by
statute and is non-refundable. If the
Office grants the petition prior to a
decision on the merits by the BPAI, the
fees paid for the notice of appeal and
the appeal brief can be applied to a later
appeal on the same application. See
MPEP § 1207.04. Additionally, the filing
of a petition will not serve as a notice
of appeal, and the Office will not allow
more time to file a notice of appeal. The
filing of a petition, moreover, does not
toll the period for reply to any
outstanding Office action. An applicant
should not use the continued
examination practice as a substitute for
an appeal. Rather, an applicant should
appeal the decision if warranted.
Comment 107: One comment sought
clarification of the status of the
application if, after filing a notice of
appeal under § 41.31(a), an applicant
later files a petition under § 1.114 with
a request for continued examination
(with a submission and the appropriate
fees), which is dismissed. The comment
questioned whether the application
would be abandoned given that the
filing of a request for continued
examination would be treated as a
request to withdraw the appeal.
Response: In the situation described
in the comment, the application would
be abandoned if the application has no
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allowed claims because the request for
continued examination would be treated
as a request to withdraw the appeal. See
MPEP § 1215.01.
In the situation where applicant
already filed a request for continued
examination in the application family, a
better alternative is for applicant to file
the request for continued examination
with a petition under § 1.114(g), and
then if the petition is not decided prior
to the expiration of the statutory period
for reply to the final Office action,
applicant may file a notice of appeal
within the period for reply (and petition
for any extension of this period under
§ 1.136(a) or (b), if necessary) to avoid
abandonment of the application. If the
Office subsequently dismisses the
petition, the request for continued
examination will be treated as an
improper request for continued
examination. However, the request for
continued examination will not be
treated as a request to withdraw the
appeal because the request for
continued examination was filed before
the notice of appeal (i.e., the application
was not on appeal at the time of filing
the request for continued examination).
E. Treatment of Multiple Applications
Comment 108: A number of
comments suggested the four-month
time period provided in § 1.78(f)(1) for
identifying to the Office applications
that meet the criteria set forth in
§ 1.78(f)(1) is unreasonably short and is
impractical in view of the time often
required by the Office to assign
application numbers and communicate
these numbers to the applicants. One
comment suggested the time period
provided in § 1.78(f)(1) for identifying to
the Office applications that meet the
criteria set forth in § 1.78(f)(1) does not
permit an applicant to timely identify
an international application designating
the United States of America that
entered the national stage thirty months
after the filing date of a nonprovisional
application filed under 35 U.S.C. 111(a)
when these two applications meet the
criteria set forth in § 1.78(f)(1).
Response: The Office notes the
concerns expressed in the public
comments concerning the proposed
changes to § 1.78(f)(1). The Office has
modified this provision relative to the
proposed changes such that § 1.78(f)(1)
as adopted in this final rule provides
applicant four months from the actual
filing date of a nonprovisional
application filed under 35 U.S.C. 111(a),
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
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after compliance with 35 U.S.C. 371, or
two months from the mailing date of the
initial filing receipt in the other
nonprovisional application, to identify
other nonprovisional applications in
compliance with § 1.78(f)(1).
Comment 109: A number of
comments requested identification of
any consequences for failing to identify
one or more applications that meet the
criteria set forth in § 1.78(f)(1), or for
failing to identify such applications
within the time period set forth in
§ 1.78(f)(1).
Response: If applicant inadvertently
fails to identify the other nonprovisional
applications in compliance with
§ 1.78(f)(1)(i) within the time period
provided in § 1.78(f)(1)(ii), applicant
should submit the identification to the
Office as soon as practical. If the
submission necessitates a new rejection
based upon double patenting (including
an obviousness-type double patenting
rejection) in a second or subsequent
Office action on the merits, the
examiner may make such an action final
(assuming that the conditions for
making a second or subsequent action
final are otherwise met). The Office may
also refer any registered practitioner
who repeatedly fails to comply with the
rule requirements to the Office of
Enrollment and Discipline for
appropriate action. Applicants and
practitioners are strongly encouraged to
revise their practices to ensure timely
submissions of the required
identification. Applicants and registered
practitioners are reminded of their
duties under § 10.18 and other
professional responsibility rules, and
the consequences of any violations (e.g.,
§§ 10.18(c), 10.18(d) and 10.23).
Comment 110: A number of
comments requested clarification of
§ 1.78(f)(1) and how it interacts with
§ 1.56, including the preexisting duty of
an applicant to disclose similar
information to the Office under § 1.56.
Several comments stated that § 1.78(f)(1)
imposes burdens on the applicants that
provide a new basis for inequitable
conduct allegations.
Response: Section 1.78(f)(1) provides
that an applicant must identify other
pending applications or patents that are
commonly owned, have a common
inventor, and have a claimed filing or
priority date within two months of the
claimed filing or priority date of the
application. This requirement does not
supplant an applicant’s duty to bring
other applications that are ‘‘material to
patentability’’ of an application (e.g.,
applications containing patentably
indistinct claims) to the attention of the
examiner. Section 1.78(f)(1) does not
provide a new basis for allegations of
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inequitable conduct when § 1.78(f)(1) is
considered in light of the duties
concurrently imposed on applicants and
practitioners by § 1.56 and the ethics
rules in 37 CFR Part 10, such as § 10.18.
See also Dayco, 329 F.3d at 1365–69, 66
U.S.P.Q.2d at 1806–08 (individuals
covered by § 1.56 cannot assume that
the examiner of a particular application
is necessarily aware of other
applications which are ‘‘material to
patentability’’ of the application under
examination, but must instead bring
such other applications to the attention
of the examiner).
Comment 111: Several comments
requested clarification regarding the
applications that must be identified
pursuant to § 1.78(f)(1) when common
inventor(s) and common ownership
exist.
Response: Applicant must identify
those pending nonprovisional
applications that are filed within two
months of each other taking into
account any filing date for which benefit
is sought, that name at least one
common inventor, and that are owned
by the same person or subject to an
obligation of assignment to the same
person. For example, the applicant for
application A is required to identify
application B and the applicant for
application B is required to identify
application A in the following situation:
The actual filing date of application A
is August 8, 2006. Application A claims
priority of a foreign application filed on
August 10, 2005. The actual filing date
of application B is April 11, 2006.
Application B claims the benefit of a
prior-filed nonprovisional application
filed on October 4, 2005, and claims the
benefit of a prior-filed provisional
application filed on January 4, 2005.
Application A and application B have at
least one common inventor and
common ownership. Each applicant
must identify the other application
because application A has a filing date
(August 10, 2005, the foreign priority
date) within two months of a filing date
of application B (October 4, 2005, the
filing date of the nonprovisional
application whose benefit is claimed by
application B). ‘‘Filing date’’ includes
the actual filing date, foreign priority
date, and the filing date of a provisional,
nonprovisional, or international
application whose benefit is sought
under title 35, United States Code.
Comment 112: A number of
comments objected that §§ 1.78(f)(1) and
(2) require applicants to identify and
resolve a possible double patenting
issue prior to a rejection being issued by
the examiner. One comment suggested
that the rebuttable presumption in
§ 1.78(f)(2) was akin to saying that if an
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applicant submits prior art, there is a
presumption of obviousness. One
comment suggested that § 1.78(f)(2) was
unnecessary because § 1.78(f)(1)
provides the Office with sufficient
information to require a terminal
disclaimer or require the cancellation of
claims. One comment stated that many
applicants will attempt to circumvent
§ 1.78(f)(2) by filing multiple
applications that meet the criteria set
forth in § 1.78(f)(2), but that include
both patentably distinct claims and
patentably indistinct claims.
Response: The rebuttable
presumption set forth in § 1.78(f)(2) is a
procedural tool requiring the applicant
to help focus and consolidate the
examination process and thus is not
akin to a presumption of obviousness.
The examination is more efficient when
double patenting issues are identified
and resolved early in the process. 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. Although the ultimate
determination of double patenting rests
with the Office, applicants are in a far
better position than the Office to
identify applications that may raise
double patenting concerns.
Section 1.78(f)(2) requires applicant to
resolve the double patenting issues early
in the prosecution by either: (1) Filing
a terminal disclaimer and an
explanation as to why the multiple
applications containing patentably
indistinct claims are necessary; or (2)
explaining how the application contains
only claims that are patentably distinct
from the claims of other related
applications. Therefore, with the benefit
of § 1.78(f)(2), double patenting issues
could be resolved more expeditiously
before the first Office action on the
merits, thus saving the examiner time by
eliminating the need to search for
related applications, analyze the
potentially conflicting claims, and make
the rejection. Merely identifying the
other applications under § 1.78(f)(1)
would not result in these benefits.
If the criteria set forth in § 1.78(f)(2)
are met, the rebuttable presumption
would apply regardless of whether a few
of the claims are patentably distinct
from the claims in the other related
applications because § 1.78(f)(2)
provides that ‘‘a rebuttable presumption
shall exist that a nonprovisional
application contains at least one claim
that is not patentably distinct * * * .’’
To rebut this presumption, applicant
must explain how the application
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contains only claims that are patentably
distinct. Merely explaining that some of
the claims are patentably distinct would
not be sufficient to rebut this
presumption.
Comment 113: One comment objected
that § 1.78(f)(2) would impose an undue
burden on inventors because it creates
a presumption that commonly owned
patent applications which share a
common disclosure and at least one
inventor, are patentably indistinct. The
comment further asserted that the
presumption is not in the interest of
American competitiveness as American
companies often file numerous patent
applications with claims directed to
different features of the same new
product. One comment suggested that
§ 1.78(f)(1) places an excessive burden
on applicants to anticipate all the
unique claims that could be filed at the
time of filing the initial application.
Response: Section 1.78(f)(2)(i)
requires that the related applications
must have the same claimed filing or
priority date in addition to being
commonly owned with one inventor in
common and with substantial
overlapping disclosure. Multiple patent
applications related to the same product
are not precluded by § 1.78(f)(2). In the
situation where § 1.78(f)(2)(i) actually
applies and the multiple applications
relate to patentably distinct features of
the same new product, it should not be
difficult to explain how the applications
contain patentably distinct claims under
§ 1.78(f)(2)(ii)(A), and thereby rebut the
presumption. Thus, the presumption of
§ 1.78(f)(2)(i) does not impose an undue
burden on inventors.
None of the criteria under § 1.78(f)(1)
for identifying certain related
applications has anything to do with
claims that could be filed in the initial
application as suggested by the
comment. Instead, § 1.78(f)(1) merely
requires identification of applications
that meet the identified criteria.
Accordingly, there is no such burden
placed on applicants.
Comment 114: Several comments
requested clarification of the language
‘‘taking into account any filing date for
which a benefit is sought under title 35,
United States Code,’’ in § 1.78(f)(1).
Those comments also inquired whether
this language includes provisional
applications for which benefit is sought,
merely the first nonprovisional
application for which benefit is sought,
or every nonprovisional application for
which benefit is sought.
Response: Section 1.78(f)(1) requires
applicant to consider all provisional,
nonprovisional, international, and
foreign applications for which benefit is
sought. If the filing date of an
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application whose benefit is claimed in
a nonprovisional application is within
two months of the filing date of another
pending nonprovisional application,
and the nonprovisional applications
name at least one inventor in common
and are owned by the same person or
subject to an obligation of assignment to
the same person, each applicant of the
nonprovisional applications must
identify the other nonprovisional
application to the Office. For example,
if two nonprovisional applications
claim priority of the same foreign
application (or two foreign applications
filed within two months of each other),
name at least one inventor in common,
and are owned by the same person, then
each applicant of the nonprovisional
applications must identify the other
nonprovisional application, no matter
the difference in time between their U.S.
filing dates.
Comment 115: A number of
comments suggested that § 1.78(f)(1)
could be eliminated if the Office
assigned all related applications to the
same examiner.
Response: The Office attempts to
assign related applications to the same
examiner where possible. However,
applicant is in the best position to
determine and identify when
applications are related, not the Office.
By meeting the provisions of § 1.78(f),
applicants will reduce the burden on
the Office to identify which applications
are related and facilitate examination of
the related application by the examiner.
Comment 116: Several comments
suggested that § 1.78(f)(1) would be
burdensome to applicants who file a
large number of applications in related
areas of research. These comments
suggested that the examiners working in
these areas of technology will also
experience a significant burden. A
number of comments suggested that the
Office has not sufficiently justified how
the benefits of § 1.78(f) outweigh the
added costs for both applicants and the
Office. These comments suggested that
the existing rules relating to double
patenting and the filing of terminal
disclaimers are sufficient to solve the
problems of patentably distinct claims,
and that the Office’s searchable database
of applications makes the § 1.78(f)
changes unnecessary. The comments
argued that examiners can perform
common inventor searches as easily as
applicants. A number of comments
doubted the Office’s reasoning that
duplicative applications containing
‘‘conflicting or patentably indistinct
claims’’ are having a crippling effect on
the Office’s ability to examine noncontinuing applications. A number of
comments making such an objection
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stated that in fiscal year 2005, less than
three percent of the patents granted
contained a terminal disclaimer, and
accordingly there is no basis for the
rebuttable presumption of patentably
indistinct claims. One comment
suggested that § 1.78(f)(2) would not
reduce examiner workloads because
examiners would still be required to
make their own separate determinations
regarding whether claims are patentably
distinct in order to evaluate and address
arguments made by applicants pursuant
to § 1.78(f)(2).
Response: Multiple applications with
patentably indistinct claims divert
patent examining resources from the
examination of new applications. This
final rule encourages applicants to
submit all of the claims that are
patentably indistinct in one single
application. See §§ 1.78(f) and
1.75(b)(4). By presenting all of the
patentably indistinct claims in one
application, applicants can alleviate the
Office’s burden of searching for multiple
applications containing patentably
indistinct claims, analyzing the
applications for double patenting issues,
and requiring cancellation of the claims
or a terminal disclaimer. This will also
ensure that one single examiner will
examine the same invention to provide
consistent and focused examination.
Furthermore, it will preclude applicant
from submitting multiple applications
to the same subject matter (with claims
that are patentably indistinct), each with
five or fewer independent claims or
twenty-five or fewer total claims, for the
purpose of avoiding the requirement to
submit an examination support
document.
It is envisioned that many applicants
will be proactive by filing fewer
applications containing patentably
indistinct claims, unless there is a good
and sufficient reason to do so. By
minimizing such filings, applicants will
reduce the Office’s burden of examining
multiple applications containing
patentably indistinct claims. Applicants
are in a far better position than the
Office to identify related applications
pursuant to § 1.78(f)(1). The Office’s
searchable database is not a sufficient
substitute for applicant’s knowledge of
related applications, particularly in
view of the fact that ownership
identification is not required when an
application is filed, and the fact that
applications are often filed without
executed declarations that correctly
name all of the inventors.
The terminal disclaimer statistic cited
in the comment covers all granted
patents. It does not specifically relate to
the limited situation covered by
§ 1.78(f)(2). Furthermore, double
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patenting issues must be considered in
every application where the applicant
filed another related application, not
only those applications in which
applicant filed a terminal disclaimer.
For example, the statistic cited in the
comment does not include applications
in which the applicants canceled the
patentably indistinct claims.
The burden on the examiner to
evaluate arguments presented by
applicant is less compared to the burden
of independently identifying and
reviewing each application that meets
the criteria set forth in § 1.78(f)(2).
Furthermore, the issues would be
resolved earlier in the prosecution.
Without the presumption of at least one
patentably indistinct claim and
applicant’s assistance under § 1.78(f)(2),
it is more difficult to resolve potential
double patenting situations.
Comment 117: Several comments
suggested that the two-month window
between filing dates set forth in
§ 1.78(f)(1) is overly burdensome on
both the Office and the applicant.
Response: The identification
requirement under § 1.78(f)(1) is
consistent with the duty to disclose
information that is material to
patentability under § 1.56. The twomonth window set forth in § 1.78(f)(1)
merely provides guidance to applicants
for at least those applications that must
be identified to the Office. Often, related
applications filed outside the twomonth window should also be
identified to the Office under § 1.56.
Comment 118: One comment stated
that compliance with § 1.78(f)(1) would
be difficult for corporations that employ
multiple law firms to handle their
patent prosecution portfolios.
Response: Each corporation typically
has a person or a group of people who
oversees its outside counsel and
manages its patent portfolio. It is not
unreasonable for the Office to assume
that the person(s) managing the patent
portfolio is aware of the contents of the
corporation’s applications being
prosecuted by different law firms. In
any event, it is appropriate for the
corporation to bear the burden of
tracking applications for compliance
with § 1.78(f)(1).
Comment 119: One comment
suggested that some docketing systems
currently used by practitioners do not
permit searching by inventor names in
a manner that would enable
practitioners to identify applications
with common inventors that were filed
within two months of each other.
Response: The fact that some
practitioners do not have a docketing
system to identify applications with
common inventors that were filed
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within two months of each other is not
a sufficient reason for the Office to not
require the information under
§ 1.78(f)(1) that would assist the Office
in identifying applications that
potentially have double patenting
issues. Practitioners should have the
required information even though their
docketing system may not keep track of
applications with common inventors.
Practitioners should have more reliable
information regarding applications with
common inventors than the Office’s
database because many applications are
filed without an executed oath or
declaration and the actual inventors are
not often identified to the Office for a
number of months after the filing date.
Furthermore, ownership is not required
to be identified when an application is
filed.
Comment 120: One comment
questioned whether extensions of time
would be available for applicants
attempting to comply with the
requirements of § 1.78(f)(1).
Response: Section 1.78(i) as adopted
in this final rule provides that ‘‘[t]he
time periods set forth in [§ 1.78] are not
extendable.’’
Comment 121: A number of
comments questioned why applicants
would need to identify to the Office
applications with a common inventor
under § 1.78(f)(1) that contain
patentably distinct claims because those
applications are not candidates for an
obviousness-type double patenting
rejection.
Response: Applicant is in the best
position to identify to the Office
applications with potentially conflicting
claims. By taking responsibility for
identifying such applications, applicant
will be reducing the burden on the
Office so that the Office can focus its
limited examining resources on
examining new applications. The
ultimate determination of obviousnesstype double patenting remains with the
Office, which is why it is critical that
applications that meet the criteria of
§ 1.78(f)(1) be identified to the Office.
Comment 122: A number of
comments suggested that while an
applicant is in a better position to know
of related applications that have been
filed, they are not in the position to
determine whether the claims of these
applications are patentably distinct.
This is a function of the Office. One
comment argued that the Office is
making an unsupported assumption that
the applicant 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.
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Response: The applications whose
specifications possibly contain
patentably indistinct claims were made
by or on behalf of the inventor or
applicant, and not the Office or the
examiner. See 35 U.S.C. 111(a). Thus,
the applicant is in a better position than
the Office or examiner to know when
such related applications have been
filed. While the ultimate determinations
of double patenting and patentability
remain with the Office, the Office rejects
the position that the applicant has no
responsibility to facilitate those
decisions. The information provided by
applicant in compliance with
§ 1.78(f)(1) is reasonably necessary for
the Office to determine double patenting
issues. With the information provided
before the first Office action on the
merits, the Office could make the
patentability determination more
efficiently and thereby reduce
pendency. For example, the examiner
could identify and resolve any double
patenting issues earlier in the
prosecution.
Comment 123: One comment
suggested that the requirements of
§ 1.78(f)(1) would raise inventorship
and ownership issues when entities
have entered into a confidential
research agreement.
Response: The identification of such
applications is reasonably necessary for
an efficient and effective examination.
This requirement is similar to that
imposed upon applicants having
knowledge of material prior art that
became known to them via information
covered by a confidentiality agreement.
In such an instance, the existence of a
confidentiality agreement does not
relieve applicants from their duty to
disclose this prior art information to the
Office. In any event, § 1.78(f)(1) requires
identification of only the commonly
owned applications (if certain
conditions are met), but not
identification of the owner. 35 U.S.C.
115 requires that the inventors identify
themselves.
Comment 124: One comment
suggested that § 1.78(f) will have the
greatest adverse impact on small
entities.
Response: The rules apply equally to
both non-small entities and small
entities. The comment did not provide
persuasive data or other evidence
supporting the conclusion. The Office’s
experience is that small entities do not
file a larger percentage of multiple
applications than non-small entities.
Thus, it is doubtful that any impact, if
adverse, will affect small entities the
most.
Comment 125: Several comments
questioned whether the Office should
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even concern itself with obviousnesstype double patenting rejections. They
suggested that essentially no harm at all
to the public exists through the grant of
plural applications having the same, or
roughly the same, filing dates, while the
technical traps for the unwary and the
undue examination burdens established
by double patenting rejections unduly
complicate procurement and burden the
Office.
Response: There are two reasons why
the Office still needs to make
obviousness-type double patenting
rejections in applications filed on or
after June 8, 1995, and that are subject
to a twenty-year term under 35 U.S.C.
154(a)(2). First, 35 U.S.C. 154 does not
ensure that any patent issuing on a
utility or plant application will
necessarily expire twenty years from the
earliest filing date for which a benefit is
claimed under 35 U.S.C. 120, 121, or
365(c) because 35 U.S.C. 154(b) includes
provisions for patent term extension
based upon prosecution delays during
the application process. Second,
§ 1.321(c)(3) requires that a terminal
disclaimer filed to obviate an
obviousness-type double patenting
rejection based on commonly owned
patentably indistinct claims include a
provision that any patent granted on
that application be enforceable only for
and during the period that the patent is
commonly owned with the application
or patent which formed the bases for the
rejection. This requirement prevents the
potential for harassment of an accused
infringer by multiple parties with
patents covering the same patentable
invention. See MPEP § 804.02. If
applicant files all of the patentably
indistinct claims in one application,
applicant could alleviate the Office’s
burden of searching for multiple
applications containing patentably
indistinct claims, analyzing the
applications for double patenting issues,
and requiring cancellation of the claims
or a terminal disclaimer.
Comment 126: One comment
suggested that § 1.78(f)(2) prevents an
applicant from claiming different
embodiments unless the embodiments
are patentably distinct.
Response: Under this final rule,
applicant may present claims during the
prosecution of an initial application and
two continuation or continuation-inpart applications plus one request for
continued examination in the
application family, without any
justification. Applicant therefore should
have sufficient opportunity to present
claims to different embodiments of an
invention in these filings. Furthermore,
applicant is not required to provide an
explanation under § 1.78(f)(2)(ii)(B) for a
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continuation application or
continuation-in-part application of a
prior-filed application that has been
allowed.
Comment 127: One comment
suggested that examiners would not
have any incentive to find claims
patentably distinct.
Response: Examiners are
professionals who perform their duties
within the framework of the current
patent laws, rules and examination
practices. No persuasive explanation
was given in support of the suggestion
that examiners would be less likely to
find claims patentably distinct.
Comment 128: One comment
suggested that the rebuttable
presumption set forth in § 1.78(f)(2) was
inconsistent with the Office’s restriction
practice. The comment suggested that it
was inconsistent to presume that claims
are patentably indistinct when, if the
claims were filed in one application,
they would be found to be patentably
distinct, and subject to a restriction
requirement.
Response: The changes to § 1.78(f)(2)
and restriction practice encourage
applicant to file a single application for
each patentably distinct invention. For
example, if two or more independent
and distinct inventions are claimed in a
single application, the examiner may
make a restriction requirement. See
§ 1.142. The filing of multiple
applications that together claim only
one patentable invention (i.e., the
applications contain patentably
indistinct claims), however, is diverting
the Office’s limited examining resources
from examining new applications.
Applicant should file a single
application claiming one patentable
invention rather than multiple
applications claiming the same
patentable invention. Applicant may
rebut the presumption that claims in
multiple applications are not patentably
distinct by explaining how the
application contains only claims that
are patentably distinct from the claims
in each of the other applications.
Similar to the restriction practice,
applicant may maintain multiple
applications if the applications contain
patentably distinct claims (i.e., each
application is claiming one patentably
distinct invention).
Comment 129: One comment objected
that remarks by applicants under
§ 1.78(f)(2) to rebut the double patenting
presumption would create prosecution
history estoppel before the Office issued
a rejection that could impact on the
certainty and quality of the patent.
Response: First, applicant remarks
under § 1.78(f)(2) would be akin to
remarks set forth in response to a double
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patenting rejection. The Office does not
consider the possibility of prosecution
history estoppel to be a sufficient reason
to forego the presumption built into
§ 1.78(f)(2). Second, such remarks
would not be required if all patentably
indistinct claims are included in one
application.
Comment 130: One comment
suggested that the rebuttable
presumption in § 1.78(f)(2) would
require applicants who normally file
multiple utility applications within two
months of each other, each with more
than the threshold number of claims
and each claiming benefit of the same
provisional application, to now file an
examination support document for their
applications. The comment suggested
that this would be especially true for
those applications forming a portfolio
being developed for a new technology.
Response: The rebuttable
presumption provision of § 1.78(f)(2)
would apply only if the nonprovisional
applications have the same filing date,
taking into account any filing date for
which a benefit is sought, name at least
one inventor in common, are owned by
the same person or are subject to an
obligation of assignment to the same
person, and contain substantial
overlapping disclosure. The rebuttable
presumption provision of § 1.78(f)(2)
does not apply simply because
commonly owned applications are filed
within two months of each other. In
addition, § 1.78(f)(2) provides for a
rebuttable presumption that
applications contain patentably
indistinct claims. The applications thus
will be treated as containing patentably
indistinct claims for claim counting
purposes under § 1.75(b)(4) if the
applicant does not explain how the
applications do not contain patentably
indistinct claims or if the examiner does
not agree with the explanation. If an
applicant files multiple applications
that contain patentably indistinct
claims, there is no reason why the
Office should treat an applicant who
spreads patentably indistinct claims
among multiple applications differently
than an applicant who presents all of
the patentably indistinct claims in a
single application.
Comment 131: Several comments
suggested that the filing of multiple
applications having at least one
common inventor and specifications
with overlapping disclosures cannot be
presumed to be bad faith prosecution
because these applications typically
claim distinct inventions that relate to
the same product or service and such
applications are not used to delay
prosecution. One such comment stated
that the rebuttable presumption under
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§ 1.78(f)(2) represents an overreaction to
tactics engaged in by a small minority
of applicants. Another such comment
took offense to § 1.78(f)(2) as appearing
to be based on underlying presumptions
that applicants are gaming the system
and their representatives are acting in
bad faith whenever applications are
filed meeting the criteria of the rule.
Response: There is no presumption of
bad faith on the part of applicant. The
rebuttable presumption is simply a
procedural tool requiring the applicant
to help focus and consolidate the
examination process. This will help
examiners to resolve double patenting
issues early in the examination process
and contribute to examination efficiency
by eliminating the need to search for
related applications.
Comment 132: A number of
comments stated that the § 1.78(f)(2)
criteria do not automatically lead to the
conclusion the claims are patentably
indistinct and that applicants may
easily maintain multiple applications by
preparing claims that are uniquely
supported only in the application in
which they appear. One comment
objected that the mere presence of
specifications with overlapping
disclosures does not create a prima facie
case of patentably indistinct claims as
evidenced by the fact that an
obviousness-type double patenting
rejection requires a comparison between
the claims of the application being
examined and those of the co-owned
application or patent, not a comparison
of their disclosures.
Response: The § 1.78(f)(2) criteria lead
to a rebuttable presumption, which is
rebuttable that patentably indistinct
claims exist. The rebuttable
presumption is not a merits
determination of patentability, but is
simply a procedural tool requiring the
applicant to help focus and consolidate
the examination process. Further, an
overlapping disclosure is not the only
condition for the presumption under
§ 1.78(f)(2). Section 1.78(f)(2) also
specifies that the applications must
have the same claimed filing or priority
date, name at least one inventor in
common, and have common ownership.
Accordingly, the presumption is limited
so that it only applies to applications
that most likely contain patentably
indistinct claims. The rebuttable
presumption does not equate to a prima
facie case of patentably indistinct
claims. An applicant may rebut the
presumption by explaining how the
application contains claims that are
patentably distinct from the claims in
each of the other applications or
patents. If the applicant cannot rebut the
presumption, applicant must submit a
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terminal disclaimer in accordance with
§ 1.321(c) and explain why there are two
or more pending nonprovisional
applications which contain patentably
indistinct claims.
Comment 133: One comment
suggested that the rebuttable
presumption should be provisional as
the scope of the claims in question may
change during the course of
prosecution.
Response: Section 1.78(f)(2) as
adopted in this final rule requires the
appropriate action within the later of:
(1) Four months from the actual filing
date of an application filed under 35
U.S.C. 111(a) or four months from the
date on which the national stage
commenced under 35 U.S.C. 371(b) or
(f); or (2) the date on which a claim that
is not patentably distinct from at least
one of the claims in the other
applications is presented. For example,
if the presumption under § 1.78(f)(2)
applies, applicant must rebut this
presumption within four months from
the actual filing date of an application
filed under 35 U.S.C. 111(a) for the
original claims presented on the filing
date of the application. If applicant
subsequently files an amendment that
adds a new claim after four months from
the filing date of the application,
applicant must rebut this presumption
for such a claim when applicant files
the amendment.
Comment 134: One comment
suggested that since the Office has
stated in MPEP § 804.02 that patent
applications which give rise to
obviousness-type double patenting
rejections are in the public interest, it
stands to reason that the rules that seek
to preclude such applications are
against public interest.
Response: The Office stated that the
use of a terminal disclaimer in
overcoming an obviousness-type double
patenting rejection is in the public
interest because it encourages the
disclosure of additional developments,
the earlier filing of applications, and the
earlier expiration of patents whereby the
inventions covered become freely
available to the public. See MPEP
§ 804.02. The Office did not state that
the public interest was served by all
applications that contain patentably
indistinct claims.
Comment 135: One comment
questioned whether applications subject
to the requirements of § 1.78(f)(2) would
increase examination pendency or add
to the Office’s backlog since the
rejections set forth in applications with
patentably indistinct claims are
typically overcome by a properly
drafted terminal disclaimer.
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Response: The changes to § 1.78(f)(2)
in this final rule are aimed at reducing
pendency and the Office’s backlog.
Specifically, § 1.78(f)(2) requires
applicant to resolve the double
patenting issues early in the prosecution
(e.g., four months from the actual filing
date of the application) by either: (1)
Filing a terminal disclaimer and an
explanation as to why the multiple
applications containing patentably
indistinct claims are necessary; or (2)
explaining how the application contains
only claims that are patentably distinct
from the claims of other related
applications. Therefore, double
patenting issues could be resolved
before the first Office action on the
merits, thus saving the examiner time by
eliminating the need to search for
related applications, analyze the
potentially conflicting claims, and make
the rejection. As a result, examination
can be more focused on prior art and
other patentability issues.
Without the rebuttable presumption
of § 1.78(f)(2), it would be harder for the
examiner to identify and resolve the
potential double patenting situation. In
addition, if an Office action in an
application to which the rebuttable
presumption applies must include a
double patenting rejection, it is because
the applicant has not helped to resolve
the double patenting situation pursuant
to § 1.78(f)(2). Accordingly, a double
patenting rejection made for the first
time in a second or subsequent Office
action will not preclude the Office
action from being made final (assuming
that the conditions for making a second
or subsequent action final are otherwise
met). Thus, applicants’ responsibility to
take the initiative under § 1.78(f)(2) to
resolve double patenting situations will
expedite examination, even if this
responsibility does not result in the
prompt resolution of the double
patenting situation. Further, the Office
envisions that many applicants will file
fewer applications containing
patentably indistinct claims in light of
§ 1.78(f)(2) unless there is a good and
sufficient reason to do so. Therefore, the
Office expects that the requirements of
§ 1.78(f)(2) will not increase
examination pendency or add to the
Office backlog.
Comment 136: One comment
suggested that the strategy for
circumventing the claim requirement set
forth in § 1.75 by filing multiple
applications in order to receive
substantive examination on more than
the threshold number of claims conflicts
with § 1.78(f)(2).
Response: As suggested by the
comment, some applicants might
attempt to circumvent the requirements
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in § 1.75(b)(1) by filing multiple
applications. Such a strategy would be
ineffective as a result of the provisions
of § 1.75(b)(4) and § 1.78(f). For the
purpose of determining whether each of
the multiple applications exceeds the
five independent claim and twenty-five
total claim threshold, the Office will
treat each application as having the total
number of all of the claims (whether in
independent or dependent form) from
all of the multiple applications. See
§ 1.75(b)(4).
Comment 137: Several comments
objected that applicants are being
required to explain or justify why they
are filing patent applications. Some of
the comments stated that such a
requirement is unnecessarily
burdensome and forces applicants to
make statements that could lead to
prosecution history estoppel issues. One
of the comments questioned why
§ 1.78(f)(2)(ii) requires applicants to
explain why the filing of two
applications is necessary if a terminal
disclaimer has been filed.
Response: The filing of multiple
applications containing patentably
indistinct claims is impairing the
Office’s ability to examine new
applications. Applicant has the
opportunity to avoid drafting and filing
applications that satisfy the criteria of
§ 1.78(f)(2) by filing a single application
containing all of the patentably
indistinct claims. Furthermore,
§ 1.78(f)(2)(i) gives applicant the option
to rebut the presumption of patentably
indistinct claims rather than filing a
terminal disclaimer and an explanation.
Also note that the § 1.78(f)(3) provision
was similarly set forth in former
§ 1.78(b).
Comment 138: Several comments
were critical of § 1.78(f)(2) and stated
that the rule would merely result in
applicants filing jumbo patent
applications with multiple claim sets
drawn to patentably distinct inventions
in order to force the Office to issue
restrictions instead of filing multiple
applications on the same day that meet
the criteria of § 1.78(f)(2).
Response: Section 1.78(f)(2) permits
applicant to file multiple applications
claiming patentably distinct inventions.
Applicant may rebut the presumption
by arguing that the applications claim
patentably distinct inventions.
Applicant also has the option of filing
a single application to claim patentably
distinct inventions or when applicant is
unsure whether the inventions are
patentably distinct. As noted in Berg,
140 F.3d at 1434, 46 U.S.P.Q.2d at 1231,
applicants achieve no advantage by
choosing to file patentably indistinct
claims in separate applications because
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the claims would be subject to a
rejection under the one-way double
patenting analysis. The Berg court stated
that ‘‘[i]f a potential applicant is unsure
whether it has more than one patentably
distinct set of claims, the PTO advises
that it file all of the claims as one
application.’’ See id. at 1435, 46
U.S.P.Q.2d at 1232. The option
presented by the Office was considered
by the court to be reasonable,
notwithstanding the possibility that the
examiner might not make a restriction
requirement.
Comment 139: One comment
suggested that applicants will be
unfairly disadvantaged if they fail to
convince the examiner that the claims
are patentably distinct, as they will
likely be simultaneously subject to a
final rejection with the probability of
just a single continuation application to
gain allowance of the claims.
Response: This final rule permits
applicant to file two continuation or
continuation-in-part applications and
one request for continued examination
in an application family, without any
justification. If a timely rebuttal under
§ 1.78(f)(2) is filed before the application
is taken up for initial examination, the
applicant will not be subject to a final
rejection in the first Office action on the
merits. Only if the rebuttal is not timely
filed would the applicant be subject to
a final rejection in the succeeding Office
action in the event the examiner makes
a determination of patentably indistinct
claims.
Comment 140: One comment stated
that the § 1.78(f)(2) rebuttable
presumption of patentably indistinct
claims is overreaching and its burden on
the applicant cannot be justified since it
is very common for an applicant to file
multiple applications having a single
specification and patentably distinct
claims drawn to different inventions.
Response: The rebuttable
presumption of § 1.78(f)(2) is not
overreaching as it applies only to
applications that have the same filing
date, taking into account any filing date
for which a benefit is sought, name at
least one inventor in common, are
owned by the same person or are subject
to an obligation of assignment to the
same person, and contain substantial
overlapping disclosure. Thus, it applies
only to applications that most likely
contain patentably indistinct claims.
Applicant who files multiple
applications claiming patentably
distinct inventions may simply rebut
the presumption. Applicant also has the
option of filing a single application to
claim patentably distinct inventions or
when applicant is unsure whether the
inventions are patentably distinct. If an
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application claims two or more
independent and distinct inventions,
the examiner may make a restriction
requirement. See § 1.142.
Comment 141: Several comments
requested clarification as to the standard
for ‘‘patentably indistinct’’ as the term
appears in § 1.78 and whether this
applies to ‘‘same invention’’ double
patenting under 35 U.S.C. 101, or
‘‘obviousness-type’’ double patenting, or
something different. Several comments
requested clarification concerning what
would be an adequate explanation
under § 1.78(f)(2)(i) to rebut the
presumption of patentably indistinct
claims.
Response: The standard for
‘‘patentably indistinct’’ as the term
appears in § 1.78 is one-way
distinctness in an obviousness-type
double patenting analysis. See MPEP
§ 804(II)(B)(1)(a). The presumption
under § 1.78(f)(2) may be rebutted by
showing that the application claims are
directed to a separate invention, or by
pointing to a unique claim element(s) in
the independent claim(s) that patentably
distinguishes them from the claims in
the application(s) that gave rise to the
§ 1.78(f)(2) presumption.
Comment 142: A number of
comments questioned whether all
patentably indistinct claims in multiple
applications meeting the conditions of
§ 1.78(f)(2) are required to be submitted
in a single application absent good and
sufficient reason.
Response: If all patentably indistinct
claims can be filed in a single
application and there is no good and
sufficient reason for the patentably
indistinct claims to be filed in multiple
applications, then applicant should file
the patentably indistinct claims in a
single application. Section 1.78(f)(3)
provides that the Office may require
elimination of the patentably indistinct
claims meeting the conditions of
§ 1.78(f)(3) in all but one of the
applications in the absence of a good
and sufficient reason for there being two
or more applications containing
patentably indistinct claims.
Comment 143: Several comments
suggested that § 1.78(f)(2) be changed to
provide that the presumption of
patentably indistinct claims be applied
to all related applications only when a
double patenting rejection is made in
one of the related applications.
Response: The suggested change
would delay triggering the presumption
of patentably indistinct claims and not
help reduce the burden on examiners
with respect to reviewing and analyzing
related applications with potentially
conflicting claims.
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Comment 144: One comment stated
that by requiring more than a terminal
disclaimer to overcome an obviousnesstype double patenting rejection, the
Office is outside its authority.
Response: No more than a terminal
disclaimer is required to overcome
obviousness-type double patenting if the
reference is a patent. However, if the
obviousness-type double patenting
reference is a pending application,
consideration of patentably indistinct
claims can be expedited in a single
application. Such a requirement is
consistent with the Office’s statutory
authority under 35 U.S.C. 2(b)(2).
Nothing in the patent statutes requires
the Office to accept patentably
indistinct claims in multiple
applications absent a good and
sufficient reason.
Comment 145: Several comments
suggested eliminating the presumption
of double patenting in § 1.78(f)(2) and
identification of similar applications in
§ 1.78(f)(1) as such requirements are
already in the rules.
Response: The former rules of practice
did not expressly require the
identification of applications based on
filing dates, inventorship and
ownership conditions. Some of the
applications identified pursuant to
§ 1.78(f)(1) may be applications with the
potential to be material to patentability
as prosecution progresses. Section
1.78(f)(2) as adopted in this final rule
explicitly sets forth for the first time a
presumption of patentably indistinct
claims among related applications
meeting certain conditions.
Comment 146: Several comments
suggested permitting ‘‘voluntary’’
divisional applications instead of
requiring an explanation adequate to
rebut the § 1.78(f)(2) presumption of
patentably indistinct claims.
Response: It is unclear how such a
strategy would reduce pendency and
promote quality. Anytime a terminal
disclaimer is filed under the conditions
of § 1.78(f)(2), the applicant would also
have to file a satisfactory explanation of
why there are two or more commonly
owned pending nonprovisional
applications naming at least one
inventor in common which contain
patentably indistinct claims. The
alternative to filing a terminal
disclaimer with the explanation is to
rebut the § 1.78(f)(2) presumption with
a showing that the application contains
only patentably distinct claims.
Comment 147: Several comments
requested clarification as to what
constitutes ‘‘substantial overlapping
disclosure’’ and whether it
encompasses, for example, a single
common sentence or disclosed element,
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or an incorporation by reference to
another application.
Response: As discussed previously,
§ 1.78(f)(2)(i) provides that substantial
overlapping disclosure exists if the
other pending or patented
nonprovisional application has written
description support under 35 U.S.C.
112, ¶ 1, for at least one claim in the
nonprovisional application. This
written description support may be
either by express disclosure or by an
incorporation by reference to another
application. A single common sentence
or disclosed element most likely would
not, by itself, constitute ‘‘substantial
overlapping disclosure.’’
Comment 148: One comment was
critical that § 1.78(f)(2)(i) will force
applicants to prove a negative in order
to show that there are no patentably
indistinct claims among the pending
nonprovisional applications.
Response: To rebut the presumption
under 1.78(f)(2)(i), applicant could
identify claim elements that patentably
distinguish the applications from one
another. It is not required that the
applicant prove a negative.
Comment 149: Several comments
objected that § 1.78(f)(3) could
effectively promote a ban on
continuation applications with
patentably indistinct claims, and may
unnecessarily limit claim broadening in
continuation applications.
Response: Section 1.78(f)(3) is a
restatement of former § 1.78(b), which
previously gave the Office the same
discretion to require elimination of
patentably indistinct claims in all but
one of the pending nonprovisional
applications. The only difference is that
the Office will now have the benefit of
§ 1.78(f)(2)(i) to evaluate when to
properly exercise that discretion.
Comment 150: A number of
comments noted that § 1.78(f)(3)
essentially restates former § 1.78(b) and
questioned whether § 1.78(f)(3) would
achieve anything beyond what former
§ 1.78(b) achieved during its existence
for over thirty-five years.
Response: This provision will be more
effectively utilized with the other
changes to § 1.78(f).
Comment 151: A number of
comments requested clarification of the
procedure for reviewing a determination
of multiple applications with patentably
indistinct claims. One comment
requested clarification as to whether an
adverse determination is redressed by
way of appeal to the BPAI or to a district
court.
Response: Applicants may petition
the Director for review of administrative
requirements by an examiner or other
Office official, such as a requirement for
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an examination support document
under § 1.265 when claims in multiple
applications are determined to be
patentably indistinct thus causing the
involved applications to exceed the five
independent claim and twenty-five total
claim threshold set forth in
§§ 1.75(b)(1), (b)(3), and (b)(4), as well as
a requirement that claims in multiple
applications that are determined to be
patentably indistinct be canceled from
all but one application.
The BPAI’s jurisdiction and appeal
procedure in general has not been
changed as a result of this final rule. As
before, applicant may appeal the
decision of the examiner to the BPAI
under 35 U.S.C. 134 and § 41.31 if at
least one claim has been twice rejected
(see § 41.31(a)), including an
obviousness-type double patenting
rejection.
Comment 152: A number of
comments were critical of the ‘‘may
require elimination’’ in § 1.78(f)(3),
suggesting that the discretion would be
arbitrarily applied by individual
examiners and inconsistently applied by
the Patent Examining Corps. Some
comments requested clarification of the
procedure and questioned whether the
Office will make a double patenting
rejection and/or require elimination of
patentably indistinct claims. Some
comments questioned whether a
requirement to eliminate patentably
indistinct claims would apply to all but
a single application.
Response: Section 1.78(f)(3) provides
that, in the absence of good and
sufficient reason for there being
multiple commonly owned applications
that contain patentably indistinct
claims, the Office may require
elimination of the patentably indistinct
claims from all but one of the
applications. The term ‘‘may’’ provides
both the Office and applicants with the
necessary discretion and flexibility
either to eliminate the identified claims
found to be patentably indistinct, or to
merge multiple applications into one.
Substantively, § 1.78(f)(3) is a
restatement of former § 1.78(b).
Comment 153: A number of
comments stated that requirements to
eliminate patentably indistinct claims
from all but one of the applications will
lead to applicant appeals or petitions
before examination resulting in a
substantial increase in pendency while
consuming Office and applicant
resources. Some comments stated that
§ 1.78(f)(3) requirements will discourage
applicants from acknowledging claims
that are patentably indistinct and result
in increased challenges to double
patenting rejections.
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Response: As discussed previously, it
is envisioned that many applicants will
file fewer applications containing
patentably indistinct claims unless there
is a good and sufficient reason to do so.
Because any requirement under
§ 1.78(f)(3) would be made during
examination, there can be no petitions
to the Director, or appeals, filed before
examination as suggested by the
comment. The comment provided no
reasoning as to why § 1.78(f)(3) would
have the negative impact anticipated by
the comment when § 1.78(f)(3) is a
restatement of former § 1.78(b).
Comment 154: One comment
suggested allowing multiple related
applications, keeping the requirement to
identify related applications, and
adding a requirement for applicant to
briefly explain the subject matter
claimed in each related application.
Response: The proposed solution
would not meet the objectives of these
rules and would not prevent the Office
from unnecessarily expending the
Office’s resources in the examination of
multiple applications with patentably
indistinct claims.
Comment 155: Several comments
questioned whether excess claim fees
would be refunded upon elimination of
patentably indistinct claims pursuant to
§ 1.78(f)(3).
Response: Applicant may request a
refund of any excess claims fees paid on
or after December 8, 2004, if applicant
cancels the claim before an examination
on the merits has been made of the
application. See § 1.117.
Comment 156: Several comments
questioned why there is different
language in §§ 1.78(f)(3) and 1.75(b)(4),
and questioned whether the language
should be the same.
Response: As the comment noted, the
proposed provisions that the Office may
require elimination of the patentably
indistinct claims from all but one of the
applications in §§ 1.78(f)(3) and
1.75(b)(4) were duplicative and might
have appeared different. In view of the
comment, the Office did not adopt the
proposed provision that the Office may
require elimination of the patentably
indistinct claims from all but one of the
applications in § 1.75(b)(4). The Office
adopted this provision in § 1.78(f)(3)
which is substantively a restatement of
former § 1.78(b). See the discussion of
§§ 1.75(b)(4) and 1.78(f)(3).
Comment 157: Several comments
requested that implementation of
§ 1.78(f)(3) be delayed until other rule
changes can be evaluated.
Response: Section 1.78(f)(3) is a
restatement of former § 1.78(b) which
has been in effect since April 30, 1971.
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See Conflicting Claims, 36 FR 7312
(April 17, 1971) (final rule).
Comment 158: One comment stated
that the patentably indistinct claims in
multiple applications are a necessary
and desirable component of United
States patent law.
Response: The comment did not
provide a reason why the need for
applicants to have separate applications
with patentably indistinct claims
outweighs the needs of the Office to
reduce the resources exhausted during
the examination of different
applications with patentably indistinct
claims.
Comment 159: One comment stated
that § 1.78(f)(3) imposes an overly
stringent standard that jeopardizes
applicant’s ability to ensure patented
claims will be held valid if challenged
during litigation. One comment stated
that the § 1.78(f) changes are based on
the presumption that all patentably
indistinct claims can be supported and
examined in the same application, but
that is not always the case.
Response: Section 1.78(f)(3) is a
restatement of former § 1.78(b), which
previously gave the Office the same
discretion to require elimination of
patentably indistinct claims in all but
one of the pending nonprovisional
applications. Therefore, § 1.78(f)(3) does
not introduce a new standard as
suggested in the comment. Applicant
may file multiple applications, but
applicant must, in each application,
submit a terminal disclaimer in
accordance with § 1.321(c) and explain
why there are two or more pending
nonprovisional applications containing
patentably indistinct claims.
Comment 160: One comment
suggested allowing applicants to add
patentably indistinct claims to an
application after determination that an
original set of claims is allowable.
Response: Patentably indistinct
claims should not be added to an
application upon allowance of the
original claims, but should instead be
presented earlier.
Comment 161: One comment
questioned whether it is really a burden
on the examiner to search two
applications with patentably indistinct
claims versus one application with the
claims of both.
Response: It is less burdensome to the
Office to have patentably indistinct
claims in a single application. A related
application with conflicting claims
would have to be identified, reviewed
and analyzed for double patenting
issues.
Comment 162: One comment
suggested providing for immediate and
expedited review of all decisions
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relating to new submissions required by
§ 1.78.
Response: The Office will strive to
promptly act on all petitions related to
the changes to § 1.78 in this final rule.
Comment 163: One comment
suggested that § 1.78(g) should be
amended to require that in response to
a statutory or obviousness-type double
patenting rejection, 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 to indicate which named
inventor(s) is/are the prior inventor,
unless applicant traverses the rejection.
Response: Section 1.78(g) contains the
provisions of former § 1.78(c). The
Office believes that these provisions, as
well as the information that may be
required, are currently sufficient for the
Office to achieve its goals with respect
to identifying commonly owned cases
that come within the provisions of 35
U.S.C. 103(c) or with respect to
determining the prior invention.
F. Changes to Practice for Examination
of Claims
Comment 164: Several comments
supported the concept of representative
claims. One comment stated that the
rules promote more focused
examination, reduce delay and help
conserve scarce Office resources, require
little effort on the part of most
applicants, and still make certain that
no patent claims will issue without a
complete examination. The comments
also expressed support for limiting the
number of claims that need to be
examined and encouraged the Office to
reduce overwhelming numbers of
claims in favor of quality examinations.
One comment suggested that the Office
should adopt a rule that only
independent claims are examined.
A number of comments, however,
argued in a variety of terms that the
‘‘representative claims’’ examination
approach would lead to piecemeal
examination and prolonged
examination, would require additional
searching when features from nondesignated dependent claims are added
to designated dependent or independent
claims, and would lead to additional
filings, increased appeals, and less
thorough examination. Several
comments suggested that the number of
claims examined should not be limited
per se because the line of novelty in a
claim family often falls between the
broad independent claims and the
narrowest dependent claim. One
comment stated that the ‘‘representative
claims’’ examination approach may
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adversely affect the treatment given to
dependent claims in court. One
comment argued that the Office’s
statistics on applications having more
than ten independent claims ignore how
many total claims had to be presented
to lead to those independent claims.
Several comments argued that since
excess claim fees have presumably been
determined based on the resources
necessary to carry out search and
examination of all of the claims, it is not
appropriate for the Office to neglect to
fully search and examine the entire
application for which all fees have been
paid. One comment stated that there is
no basis for limiting the consideration of
a dependent claim during examination
because under 35 U.S.C. 112, ¶ 4, a
dependent claim is treated as a claim
that incorporates all the limitations of
the preceding claims.
A number of comments argued that
the ‘‘representative claims’’ examination
approach may be appropriate in other
proceedings (such as before the BPAI) or
even during examination, but not before
first Office action on the merits. One
comment argued that statistical data
from the appeal stage is misleading
because there are fewer issues during an
appeal than during prosecution of an
application before the examiner. Several
comments stated that the BPAI would
be forced to perform examination on the
merits of the non-representative claims.
A number of comments suggested that
the Office should address excessive
claiming concerns in a simple and
straightforward manner by limiting the
number of claims permitted and fully
examined under the basic fee structure
to, for example, six independent and
thirty total numbered claims, and
allowing multiple dependent claims
that depend on other multiple
dependent claims. Several comments
suggested that the Office specify that
excess claims over a certain number will
only be examined if accompanied by an
independent search report, rather than
burdening all applicants with the
requirement to designate claims. Several
comments suggested that instead of
representative claims, applicants should
be allowed to select claims that stand or
fall together.
Finally, a number of comments also
raised implementation issues, requested
clarification concerning implementation
issues, or provided suggestions
concerning the implementation of the
‘‘representative claims’’ examination
approach.
Response: As a result of the public
comment, the Office is not adopting the
‘‘representative claims’’ examination
approach under which the Office would
limit the initial examination of an
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46787
application to the ‘‘representative
claims’’ (the independent claims and
the dependent claims that are expressly
designated by the applicant for initial
examination). The Office is instead
making the presentation of more than
five independent claims or more than
twenty-five total claims (rather than the
presentation of more than ten
representative claims) the threshold for
invoking the examination support
document requirement. Thus, this final
rule provides that if the number of
independent claims is greater than five
or the number of total claims is greater
than twenty-five, the applicant must
provide additional information to the
Office in an examination support
document covering all of the claims in
the application (whether in independent
or dependent form).
Although, the ‘‘representative claims’’
examination approach is not being
adopted, the Office disagrees that such
an approach amounts to piecemeal
examination or that it would be less
efficient than the current examination
process. Under such an approach, the
Office would have examined a claim
before applicant could seek review of
any rejection of the claim on appeal,
regardless of whether the claim was
designated or non-designated under the
‘‘representative claims’’ examination
approach.
Regarding escalating fees, the Office
previously proposed a system of
escalating fees and it was
overwhelmingly opposed by user
groups. The Office has also determined
that charging higher fees for large
numbers of claims would likely still not
result in the desired increase in quality
since many applicants would simply
pay the higher fees. Furthermore, claim
fees are set by statute, not the Office. As
discussed previously, 35 U.S.C. 112, ¶ 5,
prohibits multiple dependent claims
depending on other multiple dependent
claims.
Comment 165: One comment stated
that examining many claims aids in
understanding the invention.
Response: The experience of those
who actually examine applications is
that examining a large number of claims
does not aid in understanding the
invention but rather obfuscates the
invention. In addition, the issuance of
patents containing an excessive number
of claims has also long been considered
an abuse of the courts and the public,
rather than an aid in understanding the
invention. See Carlton v. Bokee, 84 U.S.
(17 Wall) 463, 471–72 (1873) (needless
multiplication of nebulous claims
deemed calculated to deceive and
mislead the public); Wahpeton Canvas
Co. v. Frontier, Inc., 870 F.2d 1546, 1551
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n.6, 10 U.S.P.Q.2d 1201, 1206 n.6 (Fed.
Cir. 1989) (presentation of the
infringement issue on an overgrown
claims jungle to a jury and judge at trial
is an unprofessional exercise in
obfuscation).
Comment 166: A number of
comments argued that more claims are
needed to protect an applicant’s
invention adequately, especially in light
of restrictions on the doctrine of
equivalents, decisions by the Federal
Circuit on unclaimed subject matter, the
proposed limitations on continuation
practice, and because the complexity of
some inventions requires more claims to
protect the subject matter appropriately.
One comment argued that the effects of
prosecution history estoppel and the
constraints put on reissue applicants by
the recapture doctrine demand a broad
range of claims. Several comments
argued that the proposed changes
disproportionately affect the
biotechnology and pharmaceutical
industries. One comment argued that in
chemical or pharmaceutical
applications full protection requires
applicant to claim a chemical substance,
a composition containing the substance,
method of making the substance, the
chemical substance prepared by a
claimed process and at least one method
of use, where there is varying scope
within each category of invention. The
comments argued that individuals and
small businesses would be unable to
afford the costs of pursuing their
inventions and may be discouraged
from using the patent system due to the
financial and procedural burdens they
must overcome to obtain adequate
patent protection of their invention.
Several comments argued that the
proposed rules would have a
disproportionate impact on small
entities. One comment stated that in the
post-Festo environment, patent-drafting
techniques would suggest filing a large
number of picture claims in multiple
statutory classes for easy understanding
of the invention by the Federal Circuit.
One comment stated that the primary
reason why large numbers of claims are
filed is that the applicants or their
representatives do not want the effort
and responsibility of determining the
differences between the prior art and the
invention, and that another reason is
that attorneys who are paid a flat fee for
applications attempt to induce a
restriction requirement.
Response: This final rule provides
that if the number of independent
claims is greater than five or the number
of total claims is greater than twentyfive (a strategy based upon whether an
application contains more than a given
number of independent and total
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claims), the applicant must provide
additional information to the Office in
an examination support document
under § 1.265. The overall goal of these
changes is to promote early presentation
of claimed inventions, enhance quality
and improve pendency. The rules do
not impose a per se limit on the number
of claims which can be presented to
protect applicant’s inventions. Rather,
applicant may file any desired number
and scope of claims necessary to
adequately protect the applicant’s
invention as long as an examination
support document is provided before
the issuance of the first Office action on
the merits of an application that present
more than five independent claims or
twenty-five total claims.
The Office notes that, during fiscal
year 2006, the percentage of small entity
applications that exceeded the five
independent claim and twenty-five total
claim threshold appeared slightly higher
than the percentage of total applications
that exceeded the five independent
claim and twenty-five total claim
threshold (24.4 percent as opposed to
23.7 percent). The Office does not
consider this slight differential as
establishing that the changes in this
final rule have a disproportionate
economic impact on small entities.
While it is possible to engage in a
mathematical exercise to exaggerate the
significance of any slight differential,
these percentages are based upon data
that is available in the Office’s PALM
system for applications filed during the
most recent fiscal year, and this slight
differential is not sufficient to establish
that the changes in this final rule have
a disproportionate economic impact on
small entities. In addition, there is no
apparent reason why small entity
applicants would inherently require
more claims to adequately cover their
inventions. Thus, even higher
differences in these percentages could
easily be explained by the fact that
small entity applicants pay only onehalf of the fees that other applicants pay
for excess claims. Moreover, the five
independent claim and twenty-five total
claim threshold adopted in this final
rule has a smaller differential than other
alternatives suggested in the comments.
For example, in fiscal year 2006: (1) 17.1
percent of small entity applicants
exceeded a six independent claim and
thirty total claim threshold where only
15.7 percent of all applications
exceeded a six independent claim and
thirty total claim threshold; (2) 10.3
percent of small entity applicants
exceeded a six independent claim and
forty total claim threshold where only
9.2 percent of all applications exceeded
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a six independent claim and forty total
claim threshold; and (3) 5.0 percent of
small entity applicants exceeded a ten
independent claim and fifty total claim
threshold where only 4.1 percent of all
applications exceeded a ten
independent claim and fifty total claim
threshold.
The remaining explanations (postFesto patent-drafting techniques, not
wanting the responsibility of
determining the differences between the
prior art and the invention, and
attempts to induce a restriction
requirement) may be ‘‘reasons’’ why
some applicants submit a large number
of claims. These reasons, however, do
not justify not going forward with a
change to the rule of practice to require
applicants who place an extensive
burden on the Office to help focus
examination by providing additional
information in the form of an
examination support document to the
Office.
Comment 167: One comment argued
that choosing dependent claims to
designate at the outset of prosecution
forces applicant to make a threshold
decision regarding claim scope without
the benefit of analyzing cited prior art
following an Office action. Thus,
applicants either have to guess, or
perform their own prior art search prior
to filing, which puts a burden on
applicant and results in the need to file
a previously unnecessary information
disclosure under § 1.56.
Response: The Office is not adopting
the proposed ‘‘representative claim’’
approach. Therefore, no designation is
required by this final rule. This final
rule requires applicants who present
more than five independent claims or
more than twenty-five total claims to
file an examination support document
before the issuance of a first Office
action on the merits of an application.
Applicants are encouraged to conduct a
preexamination search and review the
references uncovered from the
preexamination search so applicants can
better understand where their invention
fits in the overall patent landscape.
Such action would facilitate
presentation of claims more likely to be
patentable over the closest prior art,
thereby alleviating some of the burden
on Office resources. Nevertheless, if
applicant chooses not to conduct a
preexamination search and does not
submit an examination support
document before the first Office action
on the merits of the application, this
does not constitute a justification for
filing more than five independent
claims or more than twenty-five total
claims.
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Comment 168: One comment stated
that it is unclear as to whether all
claims, or only independent (or
designated) claims, are counted for the
purposes of § 1.75(b)(4).
Response: Pursuant to § 1.75(b)(4) as
adopted in this final rule, the Office will
count all of the claims in copending
applications containing patentably
indistinct claims (including
applications having a continuity
relationship) but not in issued patents
containing patentably indistinct claims,
in determining whether each such
application contains more than five
independent claims or more than
twenty-five total claims and thus
whether an examination support
document in compliance with § 1.265 is
required. Claims withdrawn from
consideration under §§ 1.141 through
1.146 or § 1.499 as drawn to a nonelected invention or inventions,
however, will not, unless they are
reinstated or rejoined, be taken into
account in determining whether an
application exceeds the five
independent claim and twenty-five total
claim threshold set forth in
§§ 1.75(b)(1), (b)(3), and (b)(4). See
§ 1.75(b)(5). As discussed previously,
this final rule does not implement a
‘‘representative claims’’ examination
approach.
Comment 169: One comment stated
that the rules do not provide speedy and
economical administrative relief when
the Office errs in determining whether
claims are patentably indistinct, or
whether there is adequate support in an
application for a claim filed in another
application.
Response: As discussed previously,
the Office already has timely and
efficient procedures in place that
provide for an applicant to seek relief
with respect to matters subject to appeal
(e.g., the rejection of claims) by way of
an appeal to the BPAI under 35 U.S.C.
134 and § 41.31 et seq., and to seek
relief with respect to actions or
requirements not subject to appeal by
way of a petition to the Director under
§ 1.181. For example, if a double
patenting rejection is made because the
claims of two applications are
patentably indistinct, applicant may
seek relief by way of an appeal to the
BPAI. If the Office issues a notice under
§ 1.75(b) requiring an examination
support document in each of the
multiple applications that contain
patentably indistinct claims, applicant
may seek relief by way of a petition to
the Director under § 1.181. A grant of
relief in a petition, however, does not
preclude a subsequent double patenting
rejection.
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Comment 170: One comment argued
that the rule will create more work for
examiners by requiring review of all
patents and applications assigned to one
assignee of an application under
examination, and that if certain
examiners fail to do so, the rule will be
unfairly applied within the Office. One
comment argued that implementation of
the rules will have a disproportionate
effect on assignees holding small patent
portfolios because due to time
constraints, examiners will be able to
review small patent portfolios more
thoroughly than large ones.
Response: The rules do not require
examiners to review all patents and
applications assigned to the same
assignee, but rather require applicant to
identify certain commonly assigned
applications having a common inventor.
See § 1.78(f)(1). Examiners already face
the situation of having to evaluate a
potentially large number of commonly
assigned patents and applications for
the purpose of determining whether a
prior art or double patenting rejection is
warranted. The rules will enable the
examiners to do this analysis more
thoroughly and in less time, thus
enhancing quality and reducing
pendency.
Comment 171: One comment argued
that implementation of the rules will
create an additional area of contention
between examiners and applicants, and
an additional drain on examiners’ time.
The comment further argued that the
drain will be greater than that associated
with double patenting because double
patenting rejections can be overcome by
filing terminal disclaimers.
Response: No new issues between the
examiner and the applicant are
introduced by the changes being
adopted in this final rule. Rather, the
rules allow the examiner to identify and
address issues more thoroughly.
Furthermore, as a result of the rules,
applicants will be made aware of issues
earlier in the prosecution, thus giving
applicants more time to formulate
appropriate responses. Terminal
disclaimers will continue to be available
for use as appropriate to obviate nonstatutory double patenting rejections.
Comment 172: One comment argued
that the changes concerning claims are
superfluous in view of the rule changes
concerning continuation practice, and
that a penalty for filing excessive
continuations is already provided in the
continuations rules.
Response: The changes to the practice
for examination of claims will operate
in concert with the changes to the
practice for continuing applications and
requests for continued examination. The
changes for the continued examination
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filing practice do not by themselves act
to lessen the examiner’s burden when
faced with a large number of claims for
examination.
Comment 173: One comment
questioned how the Office will
implement review of two applications
containing claims to the same invention.
Response: If two or more commonly
assigned applications contain
patentably indistinct claims, the Office
will track the applications via the PALM
system. The applicant may explain why
the claims of one application are
patentably distinct from the claims of
the other(s). If at least one claim is not
patentably distinct and there are a total
of more than five independent claims or
more than twenty-five total claims in
the applications, the applicant will be
required to file an examination support
document before the first Office action
on the merits in each application.
Applicant may file a terminal disclaimer
to obviate an obviousness-type double
patenting rejection.
Comment 174: One comment
suggested that the requirement that
claims differ substantially according to
§ 1.75(b) should only apply to
independent claims.
Response: The provision that ‘‘[m]ore
than one claim may be presented
provided they differ substantially from
each other and are not unduly
multiplied’’ has been set forth in
§ 1.75(b) even prior to this final rule.
The comment provides no reason why
the requirement that claims differ
substantially from each other and not be
unduly multiplied should not also
apply to dependent claims.
Comment 175: One comment inquired
about designation of claims during
reexamination. The comment stated that
the rules should not apply to
reexaminations of patents granted prior
to enactment of the rules.
Response: The changes to § 1.75
adopted in this final rule do not apply
to reexamination proceedings.
Furthermore, this final rule does not
adopt the ‘‘representative claims’’
examination approach (which provided
for a designation of dependent claims).
Comment 176: A number of
comments argued that the changes limit
the protection paid for by applicant.
One comment argued that as a result of
the limitation on the number of claims,
companies that invest in research and
development could be expected to keep
more inventions as trade secrets due to
the threat posed by ‘‘free riders’’ who
make minor modifications in an attempt
to avoid infringement.
Response: The patent statute requires
that an applicant pay certain filing fees
(the filing, search, examination, excess
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claims, and application size fees) on
filing an application for patent. See 35
U.S.C. 41(a). The payment of these
patent filing fees does not amount to a
purchase of patent protection but are
simply to help cover the costs of
examination and application processing.
Section 1.75 does not limit the
number of claims that applicant can
present in an application. Section
1.75(b)(1) permits an applicant to
present five independent claims and
twenty-five total claims for examination
without the need for an examination
support document. An applicant who
considers five independent claims or
twenty-five total claims to be
insufficient may present more than five
independent claims or twenty-five total
claims by submitting an examination
support document under § 1.265 before
the first Office action on the merits of
an application.
Comment 177: One comment
suggested that if the rules are
implemented, the Office should reduce
the examination fee and wait to charge
the excess claim fees, or refund the
excess claim fees if the application goes
abandoned.
Response: The basic filing, search,
examination, and excess claims fees are
set by statute, which the Office cannot
change by rule making. The filing fees
are due upon filing of the application
and the excess claims fees are due when
the claims are presented. See 35 U.S.C.
41. Applicant may request a refund of
any previously paid search and excess
claims fees if applicant expressly
abandons an application filed under 35
U.S.C. 111(a) on or after December 8,
2004, by filing a petition under
§ 1.138(d) before an examination has
been made of the application. An
‘‘examination has been made of the
application’’ for purposes of § 1.138(d)
once there has been a requirement for
restriction including an election of
species, requirement for information
under § 1.105, first Office action on the
merits, notice of allowability or
allowance, or action under Ex parte
Quayle. Applicant may also request a
refund of any excess claims fees paid on
or after December 8, 2004, if an
amendment canceling the excess claims
is filed before an examination on the
merits has been made of the application.
See § 1.117. An ‘‘examination on the
merits has been made of the
application’’ for purposes of § 1.117(a)
once there has been a first Office action
on the merits, notice of allowability or
allowance, or action under Ex parte
Quayle.
Comment 178: One comment argued
that the small number of problematic
cases with excessive claims that confuse
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or obscure the invention can be
adequately handled through the use of
undue multiplicity rejections.
Response: Undue multiplicity
rejections based on 35 U.S.C. 112, ¶ 2,
are rare. See MPEP § 2173.05(n). The
rule changes are designed to provide a
more focused quality examination of all
applications. The Office would not be
able to obtain the desired gains in
efficiency and quality by merely relying
on the use of undue multiplicity
rejections.
Comment 179: One comment argued
that the impact of the rules on the
backlog will be minimal and referred to
the Inspector General Report of 2004
which identified suboptimal incentives
for examiners as the cause of the
backlogs, not the excess number of
claims.
Response: The September 2004
Inspector General Report (Final
Inspection Report No. IPE–15722),
available at https://www.oig.doc.gov/oig/
reports/2004/USPTO–IPE–15722–09–
04.pdf, concluded that the Office should
reevaluate patent examiner production
goals, appraisal plans, and award
systems. The September 2004 Inspector
General Report was not the result of a
general study of the causes of the
growing backlog of unexamined patent
applications, but was the result of a
review of only patent examiner
production goals, appraisal plans, and
award systems. Thus, the September
2004 Inspector General Report does not
discuss other causes of the growing
backlog of unexamined patent
applications (e.g., changes in applicant
filing tendencies) and does not warrant
the conclusion that the September 2004
Inspector General Report identifies
suboptimal incentives for examiners as
the sole cause of the growing backlog of
unexamined patent applications. In any
event, the Office is in the process of
reassessing patent examiner production
goals, appraisal plans, and award
systems as recommended in the
September 2004 Inspector General
Report. Absent significant changes to
the patent examination process, the
Office does not consider it reasonable to
expect that changes to patent examiner
production goals, appraisal plans, and
award systems alone will be sufficient
to address the growing backlog of
unexamined patent applications while
maintaining a sufficient level of quality.
Comment 180: One comment argued
that the Office admitted to previously
abandoning a proposal to limit the
number of total and independent
claims. The comment argued that if
such a proposal was deemed
inappropriate, it is difficult to see how
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limiting claims before initial
examination is also not inappropriate.
Response: The previous proposal was
not abandoned because it was deemed
inappropriate; rather, it was abandoned
because it was unpopular. The Office
subsequently sought increases in excess
claims fees via legislative change. There
was insufficient public support for all
the fee increases that the Office
considered necessary and the current
fees are not adequately addressing the
problem of large numbers of claims. The
comments submitted in response to the
Claims Proposed Rule indicate that
many view an approach similar to that
proposed in 1998 to be preferable. The
changes being adopted in this final rule
(in contrast to the changes proposed in
1998) do not place a limit on the
number of claims (independent or
dependent) that may be presented in an
application. These changes adopted in
this final rule simply require the
submission of an examination support
document if an applicant chooses to
present more than five independent
claims or more than twenty-five total
claims in an application. Furthermore,
the backlog of unexamined applications
has increased from 224,446 at the end
of fiscal year 1998 to 701,147 at the end
of fiscal year 2006. The Office expects
the backlog of unexamined applications
to continue to increase without
significant changes to the patent
examination process. In addition, the
average number of claims per
application has not decreased since
1998. Thus, the Office does not consider
the fact that the changes being adopted
in this final rule may not be popular to
be an adequate reason for not going
forward at this time.
Comment 181: One comment pointed
out inconsistencies between proposed
§ 1.75(b)(3)(iii), which requires a
suggested restriction to be drawn to ‘‘no
more than ten’’ claims, and the
preamble to the proposed rule, which
requires the restriction to be drawn to
‘‘fewer than ten’’ claims.
Response: Proposed § 1.75(b)(3)(iii)
provided that an applicant may file a
suggested requirement for restriction
accompanied by an election without
traverse of an invention to which there
are drawn no more than ten
independent claims and no more than
ten representative claims. This final rule
did not adopt the proposed
‘‘representative claims’’ examination
approach, but requires applicant to file
an examination support document when
the application contains more than five
independent claims or more than
twenty-five total claims. Under
§ 1.142(c) as adopted in this final rule,
applicant may file a suggested
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requirement for restriction accompanied
by an election without traverse of an
invention to which there are no more
than five independent claims and no
more than twenty-five total claims.
Comment 182: One comment argued
that applicants would circumvent the
proposed rules by designating a ‘‘picture
claim’’ in all applications, thereby
forcing the examiner to perform a
complete search and examination, thus
obviating any time or effort saved
through the proposed changes.
Response: The Office has no objection
to an applicant presenting a claim that
recites in detail all of the features of an
invention (i.e., a ‘‘picture’’ claim) in an
application. Nevertheless, the mere fact
that a claim recites in detail all of the
features of an invention is never, in
itself, justification for the allowance of
such a claim. See MPEP § 706.
Comment 183: One comment argued
that according to In re Wakefield, 422
F.2d 897, 164 U.S.P.Q. 636 (C.C.P.A.
1970), applicant should be allowed to
determine the necessary number and
scope of claims.
Response: The changes adopted in
this final rule do not set a per se limit
on the number of claims that an
applicant may file in an application.
The applicant is free to file as many
claims as necessary to adequately
protect the invention. Applicant may
present more than five independent
claims or more than twenty-five total
claims in an application if applicant
files an examination support document
before the first Office action on the
merits of the application. The
information provided by the applicant
in the examination support document
will assist the examiner in
understanding the claimed invention,
determining the effective filing date of
each claim and the claim interpretation
before the prior art search,
understanding the state of the art and
the most closely related prior art cited
by the applicant, and determining the
patentability of the claims. Thus, the
examiner will be able to perform a better
examination on the claims.
Comment 184: A number of
comments argued that the rules would
lessen the applicant’s ability to file
applications due to budget constraints
and would increase costs for counseling
applicants to get the best patent
protection. One comment argued that
the rules will increase applicant’s costs
to such an extent that individual
inventors and small companies will not
be able to afford patent protection.
Furthermore, the costs to comply with
the rules will cause many people with
technology that can spur innovation to
be frozen out of the patent process.
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Response: The current rules will only
impact those applications that are filed
with more than five independent claims
or more than twenty-five total claims. If
applicant presents more than five
independent claims or more than
twenty-five total claims, then applicant
will be required to submit an
examination support document under
§ 1.265. If an application is so
significant that the applicant must
present more than five independent
claims or more than twenty-five total
claims, then the additional costs should
not be a deterrent.
Comment 185: One comment
suggested that if the Office were to
follow Muncie Gear Works v. Outboard
Marine & Mfg Co., late claiming of
applications would likely decrease.
Response: In Westphal v. Fawzi, 666
F.2d 575, 577 (C.C.P.A. 1981), the Court
of Customs and Patent Appeals
discredited the idea that Muncie Gear
Works v. Outboard Marine & Mfg. Co.,
315 U.S. 759 (1942) should be read as
announcing a new ‘‘late claiming’’
doctrine. Rather, the Court of Customs
and Patent Appeals interpreted the
Muncie Gear Works holding of
invalidity as grounded in the statutory
prohibition against new matter.
Comment 186: A number of
comments suggested that claims written
in alternative form should not be treated
differently from other claims, and that
the Office should use election of species
practice to identify alternatives to be
used as representative claims. Several
comments stated that claims drafted
using Markush or other alternative
language should be treated as single
claims rather than treating each
alternative as a separate claim. One
comment stated that if members of
Markush groups are counted separately,
biotechnology and chemical applicants
will file more multiple parallel
applications. One comment requested
clarification as to whether each element
of a Markush claim would be
considered to be an independent claim.
One comment stated that Markush
claims are beneficial to both the Office
and applicants, and stated that the
proposed changes would unfairly
disadvantage members of the
pharmaceutical community. One
comment suggested that encouraging
applicants to adhere more closely to
existing 35 U.S.C. 112, ¶ 1 and 35 U.S.C.
101 requirements is a better means of
managing the breadth of Markush
claims than individualized claim
counting schemes and required
showings. One comment suggested that
the Office should treat a Markush claim
as a broad or generic claim. One
comment asserted that the Office has
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not provided any study or anecdotal
evidence that identifies an abuse of
Markush practice. One comment stated
that the MPEP has never required that
individual elements in a Markush group
be treated separately, and that it is
unfair to an applicant to use up claim
designations on the individual elements
of a Markush group because a reference
teaching one element is applied to all.
Several comments argued that the
proposed rule relating to determining
the presence of separate claims in a
Markush grouping will slow down
prosecution, in part due to an increased
number of petitions to review.
Response: The Office requested
comments on how claims written in the
alternative form, such as claims in an
alternative form permitted by Ex parte
Markush, 1925 Dec. Comm’r Pat. 126
(1924), should be counted for purposes
of proposed § 1.75(b). See Changes to
Practice for the Examination of Claims
in Patent Applications, 71 FR at 64,
1302 Off. Gaz. Pat. Office at 1331. This
final rule does not change the practice
of the Office with regard to claims
containing Markush or other alternative
language. That is, a claim containing
Markush or other alternative language
would be considered as one claim for
the purposes of determining whether an
application exceeds the five
independent claim and twenty-five total
claim threshold set forth in § 1.75(b).
However, the Office is evaluating
changes to Markush practice, which
could be implemented in a separate rule
making.
The Office is also clarifying second
action final practice with respect to
using alternative language (e.g.,
Markush claims). MPEP § 803.02
indicates that if an applicant amends a
rejected Markush claim to exclude
species anticipated or rendered obvious
by the prior art, a second action on the
rejected claims can be made final unless
the examiner introduces a new ground
of rejection that is neither necessitated
by applicant’s amendment of the claims
nor based on information submitted in
an information disclosure statement
filed under § 1.97(c) with the fee set
forth in § 1.17(p). MPEP § 803.02
provides this instruction in the context
of the situation in which the examiner
has determined that the Markush claim
encompasses at least two independent
or distinct inventions, has required
applicant to make a provisional election
of a single species, and has rejected the
Markush claim on prior art grounds.
This has led to some confusion as to
when a second action on the rejected
claims can be made final when the
examiner has not found that the claim
encompasses at least two independent
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or distinct inventions and applicant
amends a claim to exclude unpatentable
alternatives. If a Markush claim or other
claim that sets forth alternatives is
rejected under 35 U.S.C. 102 or 103 on
the basis of prior art that anticipates or
renders obvious the claim with respect
to any one of the alternatives or on any
other basis (e.g., 35 U.S.C. 101 or 112)
with respect to any one of the
alternatives, a second or any subsequent
Office action on the merits may be made
final. However, such an Office action
may not be made final if it contains a
new ground of rejection that is not: (1)
Necessitated by applicant’s amendment
of the claims (including amendment of
a claim to eliminate unpatentable
alternatives); (2) necessitated by
applicant’s providing a showing that a
claim element that does not use the
phrase ‘‘means for’’ or ‘‘step for’’ is
written as a function to be performed
and does not otherwise preclude
application of 35 U.S.C. 112, ¶ 6; (3)
based on information submitted in an
information disclosure statement filed
during the period set forth in § 1.97(c)
with the fee set forth in § 1.17(p); or (4)
based upon double patenting (statutory
or obviousness-type double patenting).
The provision in MPEP § 904.02 that a
search should cover the claimed subject
matter and should also cover the
disclosed features which might
reasonably be expected to be claimed
does not preclude an examiner from
making the second or any subsequent
Office action on the merits final if the
Office action contains a new ground of
rejection that was necessitated solely by
applicant’s amendment of the claims to
eliminate the unpatentable species.
Comment 187: A number of
comments supported the appropriate
use of the proposed requirement in
§ 1.105(a)(1)(ix) where this information
is needed to resolve a reasonable
question which is relevant to the
determination of a patentability issue
before the examiner.
Response: The Office is adopting the
change to § 1.105.
Comment 188: One comment argued
that the provision in § 1.105(a)(1)(ix)
serves no purpose and may be abused.
The comment argued that examiners
could simply shift the burden on
applicant to prove support when there
is no basis for making a rejection under
35 U.S.C. 112, ¶ 1. One comment argued
that the changes to § 1.105(a)(1)(ix) are
unnecessary since examiners already
have the power to request such
information.
Response: One purpose of the
provision in § 1.105(a)(1)(ix) is to assist
the examiner in properly examining the
application when it is not readily
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apparent where the specification of the
application provides support under 35
U.S.C. 112, ¶ 1, for a claim or a
limitation of a claim. This is
information that the applicant should be
aware of and should be able to provide
to the examiner. The Office considers
this authority to be inherent under the
patent statute and rules existing prior to
this rule change, including the previous
version of § 1.105, and thus there is no
reason to expect such provision to be
abused. The Office agrees that
examiners inherently have the authority
to request this information. See Star
Fruits S.N.C. v. United States, 393 F.3d
1277, 73 USPQ2d 1409 (Fed. Cir. 2005).
The Office is amending § 1.105 to make
the authority explicit.
Comment 189: One comment
suggested that the Office should
encourage examiners to use § 1.105 to
require a concise, plain-English
explanation of the invention and claim
set when the application contains large
claim sets or the invention cannot be
understood.
Response: The examination support
document will assist the examiner when
there are large numbers of claims. If the
invention cannot be understood, the
examiner could use § 1.105 to require an
explanation.
Comment 190: Several comments
suggested that language should be
added to the rules to indicate that the
information required by § 1.105(a)(1)(ix)
is not to be used to read limitations into
the claims.
Response: Such a change is not
necessary. It is well established that the
meaning of the terms in the claims is to
be ascertained in light of the
specification but that limitations from
the specification are not to be read into
the claims. See Phillips v. AWH Corp.,
415 F.3d 1301, 1316, 75 U.S.P.Q.2d
1321, 1329 (Fed. Cir. 2005); In re
American Academy of Science Tech
Center, 365 F.3d 1359, 1369, 70
USPQ2d 1827, 1834 (Fed. Cir. 2004); In
re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989).
Comment 191: A number of
comments supported the extension of
the Office’s refund authority beyond the
expiration date of the legislation and
encouraged the Office to accelerate
implementation of § 1.117.
Response: The Office is working to
make the patent fee and fee structure
provisions of the Consolidated
Appropriations Act, 2005 (Pub. L. 108–
447, 118 Stat. 2809 (2004)), permanent.
The Revised Continuing Appropriations
Resolution, 2007 (Pub. L. 110–5, 121
Stat. 8 (2007)), keeps the patent fee and
fee structure provisions of the
Consolidated Appropriations Act, 2005,
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in effect during fiscal year 2007. The
Office is implementing § 1.117 in this
final rule.
Comment 192: Several comments
questioned whether excess claim fees
would be refunded if claims are
eliminated pursuant to § 1.78(f)(3).
Response: Applicant may request a
refund of any excess claims fees paid on
or after December 8, 2004, if an
amendment canceling the excess claims
is filed before an examination on the
merits has been made of the application.
See § 1.117. Applicant may also request
a refund of any previously paid search
and excess claims fees if applicant
expressly abandons an application filed
under 35 U.S.C. 111(a) on or after
December 8, 2004, by filing a petition
under § 1.138(d) before an examination
has been made of the application.
Comment 193: One comment
suggested that the Office should refund
eighty percent of the fees for claims that
are withdrawn because of a restriction
requirement.
Response: The Office does not have
the statutory authority to refund the
excess claims fees for claims that are
still pending in an application where
the fees were properly paid. The
Consolidated Appropriations Act, 2005,
authorizes a refund only for a claim that
has been canceled before an
examination on the merits has been
made of the application under 35 U.S.C.
131. See 35 U.S.C. 41(a)(2)(C). Claims
that are withdrawn due to a restriction
requirement are still pending in the
application. Applicant may cancel the
withdrawn claims prior to a first Office
action on the merits of the application
and request for a refund of any excess
claims fees paid on or after December 8,
2004. See § 1.117.
Comment 194: A number of
comments noted that since very few
examination support documents are
likely to be filed, there is not likely to
be any opportunity to reduce a patent
term adjustment.
Response: The Office is not adopting
the changes in this final rule for the
purpose of reducing patent term
adjustment. The Office simply does not
want an applicant to obtain patent term
adjustment by delaying compliance
with the examination support document
requirements.
Comment 195: Several comments
argued that it was unfair to reduce
patent term adjustment for not
complying with the rules for
applications pending before the
effective date.
Response: Section 1.704(c)(11) as
adopted in this final rule is applicable
only to applications under 35 U.S.C.
111(a) filed on or after November 1,
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2007, or international applications that
have commenced the national stage after
compliance with 35 U.S.C. 371 on or
after November 1, 2007. Thus, other
applications for which an examination
support document (or other appropriate
action) is required would not encounter
a patent term adjustment reduction
unless the applicant failed to properly
reply to an Office notice requiring an
examination support document (or other
appropriate action) within three months
of the date the notice was mailed to the
applicant.
Comment 196: One comment argued
that § 1.704(c)(11) is contrary to statute
because 35 U.S.C. 154(b)(2)(C)(ii)
guarantees a minimum of three months
to respond before patent term
adjustment is lost.
Response: 35 U.S.C. 154(b)(2)(C)(ii)
provides that ‘‘[w]ith respect to
adjustments to patent term made under
the authority of [35 U.S.C. 154(b)(1)(B)],
an applicant shall be deemed to have
failed to engage in reasonable efforts to
conclude processing or examination of
an application for the cumulative total
of any periods of time in excess of 3
months that are taken to respond to a
notice from the Office making any
rejection, objection, argument, or other
request, measuring such 3-month period
from the date the notice was given or
mailed to the applicant.’’ See 35 U.S.C.
154(b)(2)(C)(ii). The patent term
adjustment reduction provision of 35
U.S.C. 154(b)(2)(C)(ii) is applicable
where the applicant’s failure to engage
in reasonable efforts to conclude
processing or examination of an
application involves a failure to reply to
an Office action or notice within three
months of the date the Office action or
notice is mailed or given to the
applicant. 35 U.S.C. 154(b)(2)(C),
however, contemplates other
circumstances that may constitute an
applicant’s failure to engage in
reasonable efforts to conclude
processing or examination, by further
providing that ‘‘[t]he Director shall
prescribe regulations establishing the
circumstances that constitute a failure of
an applicant to engage in reasonable
efforts to conclude processing or
examination of an application.’’ See 35
U.S.C. 154(b)(2)(C)(iii). The provisions
of § 1.704(c), including § 1.704(c)(11),
are promulgated under the Office’s
authority in 35 U.S.C. 154(b)(2)(C)(iii) to
prescribe regulations establishing the
circumstances that constitute a failure of
an applicant to engage in reasonable
efforts to conclude processing or
examination of an application. For
example, an examination support
document is required to be filed before
the issuance of a first Office action on
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the merits when the application
contains or is amended to contain more
than five independent claims or more
than twenty-five total claims. See
§ 1.75(b)(1). Therefore, § 1.704(c)
provides for a reduction of any patent
term adjustment when there is a failure
to comply with § 1.75(b), e.g., a failure
to file an examination support
document in compliance with § 1.265
when necessary under § 1.75(b). The
Office does not issue a notice requiring
an examination support document (or
other appropriate action) until the
Office has determined that an
examination support document is
required under § 1.75(b), but applicant
failed to submit an examination support
document.
Comment 197: Several comments
argued that § 1.704(c)(11) would
adversely affect small businesses. One
comment argued that some patents
owned by universities and small
biotechnology companies have values of
one million dollars per day, and these
patents often have hundreds of days of
patent term extension. The comment
argued that the proposed reductions in
patent term would easily cost small
businesses one hundred million dollars
per year.
Response: An applicant can avoid a
reduction in patent term adjustment
simply by providing an examination
support document in compliance with
§ 1.265 before the first Office action on
the merits or taking other appropriate
action (if necessary) in a timely manner.
Comment 198: One comment
questioned whether the proposed
changes to § 1.75 (the ‘‘representative
claims’’ examination approach) as
applied to national stage applications
violate the PCT. Another comment
suggested that the proposed changes to
§ 1.75 are contrary to PCT Article 17.
Response: As discussed previously,
this final rule does not implement a
‘‘representative claims’’ examination
approach. Nevertheless, nothing in the
PCT or the regulations under the PCT
requires a designated Office to examine
all claims presented (in any particular
order or at a particular stage) in a
national stage application. Furthermore,
PCT Article 27(6) provides that the
national law may require that the
applicant furnish evidence in respect of
any substantive condition of
patentability prescribed by such law.
Under this final rule, applicant is free to
submit as many claims as he or she
chooses, as long as applicant files an
examination support document before
the first Office action on the merits if
there are more than five independent
claims or more than twenty-five total
claims. Article 17 of the PCT concerns
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procedures before the international
searching authorities. The changes to
§ 1.75 do not apply to international
searching authorities and, accordingly,
do not conflict with Article 17.
G. Number of Independent and Total
Claims Permitted Without an
Examination Support Document
Comment 199: A number of
comments argued that the proposed
change in the definition of an
independent claim for determining the
number of designated claims and
calculating additional claims fees would
be complicated and confusing. A
number of comments argued that the
statutory classes of invention are not
necessarily mutually exclusive. A
number of comments expressed the
opinion that the proposed changes to
the way claims are treated for fee
purposes will further burden the Office.
One comment stated that it would cause
disputes and slow down the
examination process. One comment
argued that it would likely produce
inconsistent results. One comment
argued that the rule change makes it
very difficult to calculate claim fees for
anyone other than a registered
practitioner. Several comments opined
that as a result of the proposed rule, the
fee calculation process would no longer
be merely administrative, but would
involve a legal opinion. The comments
questioned whether fee calculations will
be handled by examiners, and what the
process for dispute resolution will be. A
number of the comments also argued
that the change would effectively
increase fees.
Response: Designation of claims for
initial examination is not required
because this final rule did not adopt the
‘‘representative claims’’ examination
approach. This final rule, however,
requires applicant to file an examination
support document in compliance with
§ 1.265 before the issuance of a first
Office action on the merits of an
application that contains more than five
independent claims or twenty-five total
claims, counting all of the claims in any
other copending application having a
patentably indistinct claim. If an
examination support document in
compliance with § 1.265 is not filed
before the issuance of a first Office
action on the merits of the application,
the application may not contain or be
amended to contain more than five
independent claims or more than
twenty-five total claims.
This final rule adopts the proposed
changes to § 1.75(b)(2) to provide that a
claim that refers to a claim of a different
statutory class of invention will also be
treated as an independent claim for fee
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calculation purposes and for purposes
of determining whether an application
exceeds the five independent claim and
twenty-five total claim threshold under
§ 1.75(b). Section 1.75(b) (introductory
text) as adopted in this final rule
clarifies that a dependent claim must
contain a reference to a claim previously
set forth in the same application,
incorporate by reference all the
limitations of the previous claim to
which such dependent claim refers, and
specify a further limitation of the
subject matter of the previous claim. See
35 U.S.C. 112, ¶ 4; see also Pfizer, 457
F.3d at 1291–1292, 79 U.S.P.Q.2d at
1589–1590. If a claim does not
incorporate by reference all the
limitations of the previous claim to
which it refers, it is not a dependent
claim under 35 U.S.C. 112, ¶ 4. It would
be proper for the Office to consider such
a claim as an independent claim for fee
calculation purposes and for purposes
of determining whether an examination
support document is required. The
determination of whether a claim is
independent or dependent could be
difficult when applicant did not clearly
draft the claim as an independent claim
or a dependent claim under 35 U.S.C.
112, ¶ 4. Applicant may minimize
issues related to fee calculation for
claims by drafting claims that are in
compliance with 35 U.S.C. 112, ¶ 4, and
§ 1.75(b) (e.g., not presenting claims that
refer to another claim of a different
statutory class of invention or claims
that refer to another previous claim but
do not incorporate by reference all of
the limitations of the previous claim).
Once a determination of whether a
claim is independent or dependent has
been made, the fee calculation is simple.
If applicant disagrees with the Office’s
determination that a claim is an
independent claim, applicant should
provide a showing of how the claim is
a dependent claim in compliance with
35 U.S.C. 112, ¶ 4, and § 1.75(b) either
in a reply to a notice requiring a claim
fee or a request for a refund.
Comment 200: One comment stated
that a claim that does not make
reference to another claim is an
independent claim, and a claim that
does make reference to another claim is
a dependent claim. One comment stated
that the Office cannot charge
independent claim fees for dependent
claims because to do so would violate
statute. One comment questioned how a
claim can fail to incorporate by
reference all of the limitations of the
claim to which it refers, and yet be
statutory. The comment suggested that
the proposed rule is unnecessary and
not supported by the case law cited by
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the Office. One comment suggested that
the changes to § 1.75(b)(2) (e.g., treating
a claim that refers to a claim of a
different statutory class of invention as
an independent claim for fee calculation
purposes and for purposes of
determining whether an examination
support document is required) might be
contrary to judicial precedent set forth
in In re Ochiai, 71 F.3d 1565, 37
U.S.P.Q.2d 1127 (Fed. Cir. 1995). The
comment also argued that these changes
would create a ‘‘tricky fee structure’’
and a ‘‘trap for the unwary’’ and would
increase the administrative/nonsubstantive workload on the examiner.
Response: A claim that merely refers
to another claim is not a dependent
claim in compliance with 35 U.S.C. 112,
¶ 4. A proper dependent claim must
also incorporate by reference all the
limitations of the claim to which it
refers and specify a further limitation of
the subject matter in the claim to which
the dependent claim refers. Some
applicants present claims that refer to a
previous claim, but fail to comply with
the requirements of 35 U.S.C. 112, ¶ 4.
See e.g., Pfizer, 457 F.3d at 1291–1292,
79 U.S.P.Q. 2d at 1589–1590. The
provisions of § 1.75(b)(2) are consistent
with 35 U.S.C. 112, ¶ 4, and judicial
precedent including Ochiai (the use of
per se rules in determining
nonobviousness under 35 U.S.C. 103). A
claim that refers to a previous claim of
a different statutory class of invention
could require a separate search and
patentability determination because the
patentability of such a claim might not
stand or fall together with the previous
claim. For example, if claim 1 recites a
specific product, a claim for method of
making the product of claim 1 in a
particular manner would require a
separate patentability determination
because in accordance with Ochiai,
there is no per se rule in applying the
test for obviousness under 35 U.S.C.
103. Furthermore, a claim that refers to
a previous claim of a different statutory
class of invention does not comply with
35 U.S.C. 112, ¶ 4, because such a claim
does not further limit the subject matter
of the previous claim.
Comment 201: A number of
comments recommended that the Office
issue guidance for use by Office
employees as well as the public in
distinguishing among statutory classes
of invention. One comment stated that
it is unclear how ‘‘a different statutory
class of invention’’ will be applied. The
comment questioned whether the last
sentence of § 1.75(b)(2) would apply
only to combination method-apparatus
claims or whether it might also be
applied to regular dependent claims
which add additional limitations of a
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similar kind such as a method limitation
for a method claim or an apparatus
limitation for an apparatus claim. One
comment stated that § 1.75(b)(2)
provides clarification that claims which
refer to a claim of a different statutory
class would be regarded as independent.
One comment stated that § 1.75(b)(2)
appears to be a statement of the current
state of the law.
Response: The statutory classes of
invention are set forth in 35 U.S.C. 101.
If a method claim depends from another
method claim, incorporates by reference
all of the limitations of the method
claim from which it depends, and adds
additional method limitations, such a
claim will be considered as a dependent
claim. However, if a method claim refers
to a composition claim (e.g., ‘‘A method
of using the composition of claim 1
comprising * * *’’), it will be treated as
an independent claim. The Office will
issue any guidance as necessary and
appropriate for the implementation of
the rules.
Comment 202: Several comments
argued that § 1.75(b) is a problem for
software-based inventions because it is
common for applications to include
claims to different classes of invention.
The comments argued that there is no
reason to discourage a claim drawn to
one class of invention which depends
from a claim drawn to another class
when little additional work is required
of the examiner to examine both claims,
citing the example of a claim drawn to
a manufacture which depends from a
claim drawn to a process for making a
manufacture.
Response: The rule does not
discourage an applicant from submitting
whatever claims may be considered
desirable for protection of the invention,
and does not discourage submission of
claims to any statutory class of
invention. Rather, the rule clarifies how
claims will be treated for the purposes
of fee calculation and determination
whether an examination support
document is required under § 1.75(b)(1).
Comment 203: A number of
comments argued that ten representative
claims are not sufficient for adequate
patent protection and suggested various
numbers for the representative claim
limit including at least twenty claims,
twenty-five claims, or at least thirty
claims. Several comments suggested
twenty claims, with a maximum of three
independent claims, as being more
consistent with the fee schedule.
Several comments suggested that the
limit should be six independent and
forty total claims. One comment
suggested that the limit should be
twelve independent claims and fifty
total claims. One comment suggested
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that the limit should be ten independent
claims and sixty total claims. Several
comments suggested that there should
be no limit. One comment suggested
that there should be no limit on
dependent claims.
Several comments stated that the
rules affect the vast majority of
applications that contain an ordinary
number of claims, rather than targeting
the small number of problem
applications with excessive claims. One
comment stated that it was unclear why
all applicants should be limited to
representative claims when
approximately ninety percent of all nonprovisional applications currently filed
contain six or fewer independent claims
and forty or fewer total claims. The
comment argued that examining forty or
fewer claims does not appear to
constitute an undue examination
burden. One comment suggested that
the rule changes should be more
narrowly tailored with respect to the
technology areas where the inventions
are not capable of being adequately
protected using only twenty claims. One
comment inquired about the need for
establishing a separate procedure for
examination of claims if only 1.2
percent of applications fall within the
category of excess claims. Several
comments argued that there is a lack of
statistical analysis relating to the
number of applications containing more
than ten total claims.
Response: The Office notes the
concerns expressed in the public
comments concerning the proposed
‘‘representative claims’’ examination
approach. The Office did not adopt this
approach in this final rule. This final
rule provides that if the number of
independent claims is greater than five
or the number of total claims is greater
than twenty-five, the applicant must
provide additional information to the
Office in an examination support
document under § 1.265 covering all of
the claims in the application (whether
in independent or dependent form).
The Office received a significant
number of comments suggesting a
threshold of six independent claims and
thirty total claims. The Office also
received a number of comments
suggesting independent claim
thresholds ranging from three to ten and
total claim thresholds ranging from
twenty to sixty (or no limit). The
comments, however, provided no
justification for deeming any particular
independent and total claim threshold
to be the ideal threshold or even
superior to any other possible
independent and total claim threshold.
The Office arrived at the five
independent claim and twenty-five total
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claim threshold primarily for the
following reasons.
First, a significant number of
comments suggested a threshold of six
independent claims and thirty total
claims, but did not suggest such a
threshold if it were not considered
sufficient to provide adequate patent
protection for an invention.
Second, the majority of applications
contain no more than five independent
claims and no more than twenty-five
total claims. Specifically, over 92
percent of the applications filed in fiscal
year 2006 contained no more than five
independent claims, and over 78
percent of the applications filed in fiscal
year 2006 contained no more than
twenty-five total claims. These figures
do not take into account that many
applications contained claims to more
than one distinct invention, and the
changes in this final rule permit an
applicant to suggest a restriction
requirement and elect an invention to
which there are drawn no more than
five independent and twenty-five total
claims. In addition, the majority of
applications in every Technology Center
contain five or fewer independent
claims and twenty-five or fewer total
claims. Therefore, there is no support
for the position that there are
technology areas that are just not
capable of being adequately protected
with five or fewer independent claims
and twenty-five or fewer total claims.
Finally, the Office notes that the most
common number of independent claims
presented in an application is three, and
the most common number of total
claims presented in an application is
twenty.
Third, an applicant may present up to
fifteen independent claims and seventyfive total claims via an initial
application and two continuation or
continuation-in-part applications that
are prosecuted serially without
providing either an examination support
document or a justification as discussed
previously. Only about five percent of
the applications filed in fiscal year 2006
were in an application family that
contained more than fifteen
independent claims or more than
seventy-five total claims.
Finally, this final rule does not
preclude an applicant from presenting
more than five independent claims or
more than twenty-five total claims.
Rather, an applicant may present more
than five independent claims or more
than twenty-five total claims in an
application with an examination
support document in compliance with
§ 1.265 if the applicant considers it
necessary or desirable in the particular
application. Specifically, this final rule
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requires applicant to file an examination
support document in compliance with
§ 1.265 before the issuance of a first
Office action on the merits of an
application that contains more than five
independent claims or twenty-five total
claims, counting all of the claims in any
other copending application having a
patentably indistinct claim. If an
examination support document in
compliance with § 1.265 is not filed
before the issuance of a first Office
action on the merits of the application,
the application may not contain or be
amended to contain more than five
independent claims or more than
twenty-five total claims.
Comment 204: A number of
comments suggested that the Office
should explore the possibility of
examining multiple dependent claims
that are dependent on other multiple
dependent claims to reduce
examination burden and better focus the
examination process. The comments
argued that most foreign countries
permit such claims and that this would
significantly reduce the number of
claims. One comment argued that if the
Office adopts representative claims
rules, it will move towards the
European style of claim sets, but
without the benefit of multiple
dependent claims and claims stated in
the alternative. Several comments
expressed the opinion that multiple
dependent claims should be encouraged
because examining a multiple
dependent claim is no more work than
examining a single dependent claim.
Response: As discussed previously,
the Office did not adopt the
‘‘representative claims’’ examination
approach in this final rule. Further, 35
U.S.C. 112, ¶ 5, prohibits multiple
dependent claims that are dependent on
other multiple dependent claims.
Moreover, the examination of multiple
dependent claims that are dependent on
other multiple dependent claims would
be at least as burdensome as if these
claims were presented as a plurality of
single dependent claims or as permitted
multiple dependent claims. The Office
disagrees that permitting multiple
dependent claims that depend on other
multiple dependent claims would
reduce the examination burden or better
focus the examination process. The
Office’s experience is that multiple
dependent claims are significantly more
difficult to search and evaluate than a
plurality of single dependent claims.
Multiple dependent claims that depend
on other multiple dependent claims
would be even more burdensome. While
the use of multiple dependent claims
may be a convenient shorthand
mechanism, a multiple dependent claim
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is considered to be that number of
claims to which direct reference is made
therein and must be considered in the
same manner as a plurality of single
dependent claims. See MPEP
§ 608.01(n), paragraph I. The same
would be true for multiple dependent
claims that are dependent on other
multiple dependent claims.
Comment 205: One comment
suggested that there should be a limit of
twenty claims in every application with
no exceptions and no requirement for an
examination support document.
Another comment suggested that the
Office should limit the number of
claims of any application to twenty or
thirty total claims, and two or three
independent claims. One comment
suggested that there should simply be a
hard cap without an option to file an
examination support document to have
additional claims examined. The
comment argued that this would not
take away any substantive rights, as long
as applicant’s right to file continuing
applications and requests for continued
examination is preserved.
Response: This final rule
appropriately balances applicants’
interests to have an adequate number of
claims to protect their inventions and
the need to reduce the large and
growing backlog of unexamined patent
applications, improve the quality of
issued patents, and make the patent
examination process more effective. The
changes to § 1.75 in this final rule
permit an applicant to present five or
fewer independent claims and twentyfive or fewer total claims in the
application without submitting an
examination support document in
compliance with § 1.265. The changes to
§ 1.75 in this final rule also permit an
applicant to present more than five
independent claims or more than
twenty-five total claims if the applicant
files an examination support document
in compliance with § 1.265.
Comment 206: Several comments
suggested that the Office should adjust
the fees if excess claims fees are
insufficient to permit examination of the
claims for which they are paid. One
comment suggested that there should be
higher fees for claims in excess of ten.
Several comments suggested that there
should be higher fees for claims in
excess of twenty. One comment
suggested higher fees for independent
claims in excess of three. One comment
suggested that there should be a higher
fee for independent claims in excess of
ten and total claims in excess of fifty.
Several comments suggested that there
should be escalating fees for increasing
numbers of claims. One comment
argued that applicants should be
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permitted to designate a number of
claims, without an examination support
document, that varies with the filing fee
paid. One comment suggested that
applicants should be charged in
proportion to the number of designated
claims, and that, optionally, an upper
bound on the number of claims (e.g.,
twenty-five total claims, no more than
twelve independent claims) could be
established.
Response: Excess claims fees are set
by statute. See 35 U.S.C. 41(a). The
Office sought a legislative change to
increase excess claims fees, and while
some increases were made in the
Consolidated Appropriations Act, 2005,
the Office did not obtain the increases
that it considered necessary. In any
event, the changes adopted in this final
rule will help to focus examination and
increase quality.
Comment 207: Several comments
suggested that excessive claiming
should be dealt with on a case-by-case
basis, rather than by penalizing all
applicants. One comment suggested that
the Office should consider strategies
under present § 1.105 to address
problem applications on a case-by-case
basis. A number of comments suggested
that the requirement for an examination
support document should be imposed
on a case-by-case basis, only in those
situations that impose a unique burden
on the Office.
Response: As discussed previously,
the Office is not adopting the
‘‘representative claims’’ examination
approach under which the majority of
applicants would have been required to
either designate dependent claims for
initial examination or file an
examination support document. The
changes adopted in this final rule
require the applicant to file an
examination support document under
§ 1.265 only if the applicant presents
more than five independent claims or
more than twenty-five total claims. If an
examination support document in
compliance with § 1.265 is not filed
before the issuance of a first Office
action on the merits of the application,
the application may not contain or be
amended to contain more than five
independent claims or more than
twenty-five total claims. The majority of
applications do not contain more than
five independent claims or more than
twenty-five total claims. Therefore, as a
result of the public comment, this final
rule adopts an approach that avoids
requiring a majority of applicants to
make the choice between designating
dependent claims for initial
examination and filing an examination
support document.
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Comment 208: One comment
suggested that one of the representative
claims should be in Jepson format.
Another comment suggested that fees
should be increased on all non-Jepson
claims. One comment suggested that the
Office should charge less for claims
written in Jepson format.
Response: There is no persuasive
explanation as to why Jepson claims
should be treated differently from nonJepson claims. Furthermore, fees are set
by statute and the statute does not
provide the authority to charge higher or
lower fees for Jepson claims.
Comment 209: One comment
suggested that there should be an
expedited procedure for an application
with a limit of five claims, a 1200-word
specification, and four drawings, (with
the filing fee being $1000 for a small
entity or $3000 for a non-small entity),
where the application could issue as a
patent in fifteen months or less. One
comment argued that the representative
claim proposal should be an option for
applicants and those applications with
ten or fewer representative claims
should be assigned a higher priority for
examination. One comment argued that
the examination support document
should only be used as an optional
procedure for an applicant to advance
the application out of turn.
Response: The proposed
‘‘representative claims’’ examination
approach is not adopted in this final
rule. Further, the Office has revised its
accelerated examination program with
the goal of completing examination
within twelve months of the filing date
of the application. The application must
contain three or fewer independent
claims and twenty or fewer total claims,
and the applicant must provide an
accelerated examination support
document and meet a number of other
requirements. See Changes to Practice
for Petitions in Patent Applications To
Make Special and for Accelerated
Examination, 71 FR 36323 (June 26,
2006), 1308 Off. Gaz. Pat. Office 106
(July 18, 2006) (notice). However,
requiring an examination support or
similar document only as an optional
procedure for applicant to advance the
application out of turn would not result
in the desired gains in efficiency and
quality.
Comment 210: One comment
suggested that if examination is limited
to a certain number of claims, the Office
should not be allowed to make a
restriction requirement that is not
linked to the burden of searching. Thus,
the comment suggested that where
different statutory classes or
independent claims within a class do
not really impose an additional burden,
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they should not be counted against the
examination limit.
Response: Under the current
restriction practice, the burden of the
search and examination in an
application is considered before a
requirement for restriction is made. See
MPEP section 803. This includes where
there are different statutory classes of
invention or independent claims within
a class that do not impose a search
burden.
Comment 211: A number of
comments argued that the one-month
time period to reply to a notification of
more than ten representative claims was
too short to prepare and submit an
adequate examination support
document. One comment suggested that
the time period should be at least two
months with extensions of time being
permitted. One comment suggested that
the time period should be three months
with extensions of time being permitted.
Response: The proposed
‘‘representative claims’’ examination
approach is not adopted in this final
rule. Under this final rule, applicant is
required to provide an examination
support document if applicant presents
more than five independent claims or
more than twenty-five total claims in an
application. If an examination support
document in compliance with § 1.265 is
not filed before the issuance of a first
Office action on the merits of the
application, the application may not
contain or be amended to contain more
than five independent claims or more
than twenty-five total claims. The time
period provided in the notice requiring
an examination support document is
only applicable where it appears that
the omission of an examination support
document was inadvertent. Therefore,
applicant should prepare and file an
examination support document when
applicant presents more than five
independent claims or more than
twenty-five total claims in an
application. Applicant should not rely
on the notification from the Office and
a new period within which to prepare
an examination support document.
Nevertheless, the Office is revising this
provision to provide a two-month time
period that is not extendable under
§ 1.136(a), which should be sufficient
for those situations in which an
applicant inadvertently omitted an
examination support document.
Comment 212: A number of
comments argued that the notice to the
applicant under § 1.75(b)(3) would
impose costs because it would have to
be generated by an examiner and
another round of communications
would be needed if applicant suggests a
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restriction requirement and it is not
accepted by the Office.
Response: Since the examination
support document is required whenever
applicant presents more than five
independent claims or more than
twenty-five total claims and the notice
only applies when it appears that the
omission of the examination support
document was inadvertent, the Office
expects that the number of notices
would be relatively low. Furthermore,
the Office plans to have a notice under
§ 1.75(b)(3) generated by someone other
than the examiner. While it may be
necessary on occasion for the examiner
to communicate with the applicant if a
suggested restriction requirement is not
accepted, this additional
communication is far outweighed by the
benefits of focused examination and
increased quality.
Comment 213: Several comments
requested that the Office explain the
procedures for how the Office will
evaluate a suggested restriction
requirement. Some comments
questioned how an examiner will
approve a suggested restriction
requirement. One comment questioned
what would occur if the restriction
requirement was not accepted by the
examiner.
Response: As discussed previously, if
the applicant submits a suggested
restriction requirement, the suggested
restriction requirement is accepted, and
there are five or fewer independent
claims and twenty-five or fewer total
claims to the elected invention, the
Office will simply treat the non-elected
claims as withdrawn from consideration
and proceed to act on the application
(assuming the application is otherwise
ready for action). The Office action will
set out the requirement for restriction
under § 1.142(a), e.g., in the manner that
an Office action on the merits would
contain a written record of a
requirement for restriction previously
made by telephone. See MPEP section
810.
The refusal to accept a suggested
requirement for restriction may result in
the examiner making a different
restriction requirement or making no
restriction requirement. If the examiner
makes a restriction requirement
(different from the suggested restriction
requirement), the applicant will be
notified (a notice under § 1.75(b)(3)
coupled with a restriction requirement)
and given a time period within which
the applicant must make an election. In
addition, if there are more than five
independent claims or more than
twenty-five total claims to the elected
invention and/or species, the applicant
must also: (1) Amend the application
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such that it contains no more than five
independent claims and no more than
twenty-five total claims to the elected
invention and/or species; or (2) file an
examination support document in
compliance with § 1.265 that covers
each claim (whether in independent or
dependent form) to the elected
invention and/or species.
Comment 214: Several comments
argued that the rules should provide
guidance on how the non-extendable
deadline would be treated in the event
of a petition or appeal relating to the
requirement for an examination support
document. Several comments
questioned how the notice and time
period would be set when there are
multiple applications that have
patentably indistinct claims that are
being considered together for purposes
of determining the number of claims in
an application.
Response: Applicant may file a
petition under § 1.181 if the applicant
disagrees with a determination that an
application contains more than five
independent claims or more than
twenty-five total claims, or a
determination that an examination
support document does not comply
with § 1.265. As stated in § 1.181(f), the
mere filing of a petition will not stay
any time period that may be running
against the application. Applicant must
file a reply in compliance with
§ 1.75(b)(3) within the two-month time
period to avoid abandonment even
when applicant files a petition under
§ 1.181. If there are multiple
applications with at least one patentably
indistinct claim, the Office will issue a
notice under § 1.75(b)(3) in each
application and set a separate time
period in each application.
Comment 215: Several comments
argued that applicants would file more
applications in parallel with fewer
claims to avoid having to file an
examination support document and this
would create more work for the Office.
Response: This final rule provides
that if multiple applications contain at
least one patentably indistinct claim,
the Office will treat the multiple
applications as a single application for
purposes of determining whether each
of the multiple applications exceeds the
five independent claim and twenty-five
total claim threshold. See § 1.75(b)(4).
For example, if one of the claims in an
application is patentably indistinct from
at least one of the claims in another
application, the Office will treat each
application as containing the total of all
of the claims in both applications when
determining whether each application
exceeds the five independent claim and
twenty-five total claim threshold. This
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provision is intended to prevent an
applicant from submitting multiple
applications to the same subject matter,
each with five or fewer independent
claims or twenty-five or fewer total
claims, for the purposes of avoiding the
requirement to submit an examination
support document. Furthermore, under
§ 1.78(f), applicant is required to
identify such applications if they: (1)
Have filing dates that are the same as or
within two months of each other, taking
into account any filing date for which a
benefit is sought under title 35, United
States Code; (2) name at least one
inventor in common; and (3) are owned
by the same person, or subject to an
obligation of assignment to the same
person. If the applications also have the
same claimed filing or priority date and
substantially overlapping disclosures,
applicant must rebut a presumption that
the applications contain patentably
indistinct claims or file a terminal
disclaimer and provide good and
sufficient reasons why two or more such
pending applications are required rather
than one. See §§ 1.78(f)(2) and (f)(3).
Comment 216: One comment
questioned whether the Office would
require an examination support
document if a parent application issues
as a patent with ten claims and a
continuation application is filed with
indistinct claims.
Response: The Office has revised
§ 1.75(b)(4) to provide that if there are
multiple applications containing at least
one patentably indistinct claim the
Office will treat each of such
applications as containing the total of
all of the claims (both independent and
dependent) present in all of the multiple
applications containing patentably
indistinct claims for purposes of
determining whether each such
application contains more than five
independent claims or more than
twenty-five total claims. Under
§ 1.75(b)(4), the Office will count the
claims in copending applications
containing patentably indistinct claims
(including applications having a
continuity relationship) but not in
issued patents containing patentably
indistinct claims, in determining
whether each such application contains
more than five independent claims or
more than twenty-five total claims and
thus whether an examination support
document in compliance with § 1.265 is
required. As discussed previously, this
provision is to preclude an applicant
from submitting multiple applications
to the same subject matter (with claims
that are patentably indistinct), each with
five or fewer independent claims or
twenty-five or fewer total claims, for the
purposes of avoiding the requirement to
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submit an examination support
document in compliance with § 1.265.
Although claims in an issued patent are
not counted for the purposes of
§ 1.75(b)(4), the pending application
may still be subject to a double
patenting rejection.
Comment 217: One comment
questioned how the Office would
determine when an examination
support document was ‘‘inadvertently’’
omitted.
Response: If the omission of an
examination support document is an
isolated instance, then generally the
omission would be considered
inadvertent. Where, however, a
particular individual (e.g., applicant or
attorney) has a pattern of not including
an examination support document when
required, then the Office would be less
inclined to consider such an omission
as being inadvertent. The Office will not
generally question whether the omission
of an examination support document
was inadvertent unless there is a reason
to do so.
H. Examination Support Document
Requirements
Comment 218: Several comments
supported the concept of an
examination support document. One
comment agreed that the examination
support document would help the
Office to reduce the backlog.
Response: The Office is adopting the
concept of an examination support
document in this final rule. Under this
final rule, an examination support
document is required if applicant
presents more than five independent
claims or more than twenty-five total
claims in an application.
Comment 219: A number of
comments argued that the search and
analysis necessary to prepare an
examination support document would
add significant cost to the preparation of
an application, that the cost would be
significantly more than the $2,500
predicted by the Office, and that this
would significantly disadvantage
independent inventors and small
businesses. Several comments argued
that it would be unaffordable for
independent inventors and small
entities. Several comments argued that
the patentability search done by most
practitioners is limited to United States
patents and United States published
applications and does not generally set
forth in detail the patentability of each
claim element by element. A number of
comments argued that the examination
support document was more like a
validity search and opinion and
included various estimates of the cost of
preparing an examination support
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document, which ranged from $5,000 to
$30,000. One comment argued that it
would cost a minimum of $30,000 for a
biotechnology application. One
comment argued that even if the Office’s
estimate is accurate, it would cost a
small entity applicant $3,000 to have
twenty claims examined, which would
be a six hundred percent increase over
current costs and would have a
significant economic impact.
Response: As discussed previously,
the Office has modified the proposed
rules with respect to claims. Under the
proposed rules, applicants who wished
to have more than ten representative
claims examined in the initial Office
action would have had to file an
examination support document. Under
the changes in this final rule, applicants
may have up to five independent and
twenty-five total claims examined in an
application without filing an
examination support document.
The Office was given feedback that
the costs for preparing an examination
support document could be anywhere
from $5,000 to $100,000. No data to
support the alleged costs were
submitted. Contrary to some of the
comments, the Office is not requiring a
validity search and opinion. The prefiling preparation of an application that
contains more than five independent
claims or more than twenty-five total
claims should involve obtaining a
patent novelty search, analysis and
opinion. Preparation of an examination
support document requires that this
information be reduced to writing in a
particular format.
The Office commissioned a detailed
analysis of the final rule’s impacts on
small entities. This analysis indicated
that the cost of an examination support
document is likely to be in the range of
$2,563 to $13,121. This analysis also
concludes that this final rule is not
expected to result in a significant
economic impact on a substantial
number of small entities. This final rule
does provide an exemption from the
requirement (§ 1.265(a)(3)) that an
examination support document must,
for each reference cited in the listing of
the references required under
§ 1.265(a)(2), include an identification
of all the limitations of each of the
claims that are disclosed by the
reference that applies to applications by
a small entity as defined by the
Regulatory Flexibility Act (5 U.S.C. 601
et seq.). See § 1.265(f).
Comment 220: Several comments
argued that the examination support
document is substantially more
burdensome than the current procedure
for accelerated examination because the
search and examination support
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document must separately address every
claim for which examination is sought,
and the rule contains substantial
additional burdens. One comment
argued that the accelerated examination
procedure is too onerous as shown by
the very small number of applicants
who used the procedure, and the
examination support document is even
more stringent. Several comments
argued that a petition to make special is
voluntary, not mandatory. Furthermore,
such a petition does not foreclose
applicant’s opportunity to pursue
additional inventive subject matter to
protect against design-arounds, as
would happen in view of the concurrent
continuation proposed rule changes.
Response: The Office has reduced the
requirements for an examination
support document under § 1.265 as
adopted in this final rule. The Office
proposed to require applicants to
provide a detailed explanation of how
each independent and dependent claim
was patentable over the cited art
(proposed § 1.261(a)(4)). Section
1.265(a)(4) as adopted in this final rule
requires applicants to provide the same
explanation for the independent claims
only. The Office also proposed to
require applicants to provide statements
of utility of the invention as defined in
each independent claim (proposed
§ 1.261(a)(5)). Section 1.265 as adopted
in this final rule does not include such
a requirement. These changes reduce
the requirements for applicants who
wish to file an examination support
document while still providing
examiners with valuable information to
assist in the examination of
applications.
Furthermore, an examination support
document in compliance with § 1.265 is
required under § 1.75(b) only when an
applicant presents more than five
independent claims or more than
twenty-five total claims. It is not
required in applications that contain
five or fewer independent claims and
twenty-five or fewer total claims. Thus,
the majority of applications would not
need an examination support document
since a majority of applications contain
five or fewer independent claims and
twenty-five or fewer total claims.
In addition, the accelerated
examination procedure was recently
revised. The accelerated examination
procedure has more requirements than
are contained in § 1.265. See Changes to
Practice for Petitions in Patent
Applications To Make Special and for
Accelerated Examination, 71 FR at
36323–27, 1308 Off. Gaz. Pat. Office
106–09. For example, the accelerated
examination support document must
also identify any cited references that
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may be disqualified as prior art under
35 U.S.C. 103(c) as amended by the
Cooperative Research and Technology
Enhancement (CREATE) Act (Pub. L.
108–43, 118 Stat. 3596 (2004)).
Comment 221: Several comments
argued that due to the cost and ‘‘duty to
search,’’ the requirement for an
examination support document is
tantamount to imposing a de facto limit
on the number of claims in an
application.
Response: The Office has not placed
a de facto limit on the number of claims.
If an applicant wants to present more
than five independent claims or more
than twenty-five total claims, the
applicant simply needs to submit an
examination support document in
compliance with § 1.265 before the first
Office action on the merits. As
discussed previously, the accelerated
examination procedure has more
requirements than are contained in
§ 1.265. However, over four hundred
applications have been filed under the
revised accelerated examination
procedure in the last nine months.
Comment 222: One comment
suggested that § 1.265 should be
replaced by a requirement that applicant
comply with the rules for a petition to
make special. Another comment argued
that applicants will file a petition to
make special after going through the
effort and expense to prepare and file an
examination support document.
Response: As discussed previously,
the Office has recently revised its
accelerated examination program with
the goal of completing examination
within twelve months of the filing date
of the application. An application
containing more than five independent
claims or more than twenty-five total
claims would not be eligible for the
revised accelerated examination
program. Nevertheless, the Office has no
objection to every applicant filing his or
her application under the revised
accelerated examination program.
Comment 223: A number of
comments argued that the requirement
for an examination support document
transfers to the applicant the costs and
responsibilities of the examination
process for which fees have been paid.
One comment questioned why applicant
must pay a search fee and perform a
search of their own in order to prepare
an examination support document. One
comment suggested that the Office
should consider eliminating the search
and examination fee when an
examination support document is
provided. One comment argued that the
excess claims fees that are paid are more
than enough to cover the associated
extra expense and burden placed on the
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Office in examining the excess claims.
One comment suggested that the excess
claims fee should be increased rather
than requiring applicants to submit an
examination support document.
Response: Applications which
contain a large number of claims absorb
an inordinate amount of patent
examining resources, and such
applications are extremely difficult to
process and examine properly. An
applicant who presents more than five
independent claims or more than
twenty-five total claims will be required
to assist the Office with the examination
by providing an examination support
document in compliance with § 1.265.
The Office will still conduct a search
and examine an application in which an
examination support document is filed.
Furthermore, the search and
examination fees and excess claims fees
do not recover the costs of searching
and examining an application. The
higher cost estimates provided in the
comments on the Claims Proposed Rule
confirm that the cost of conducting a
search and preparing an analysis far
exceeds the search and examination
fees. The Office, however, cannot
increase these fees because they are set
by statute.
Comment 224: Several comments
argued that the examination support
document imposes extra burdens on the
applicants that are not performed by the
Office since applicants are required to
translate any foreign documents not in
the native language of the applicant and
rejections by the Office do not comply
with most of the requirements imposed
under the rule.
Response: Examiners frequently
obtain translations of foreign documents
that they consider to be pertinent.
Examiners must obtain a translation of
any document that is in a language other
than English if the examiner seeks to
rely on that document in a rejection. See
MPEP § 706.02. During examination,
examiners cite references that are most
closely related to the subject matter of
the claims, identify the limitations of
the claims that are disclosed by the
references being relied upon in a
rejection, explain how each of the
independent claims are being rejected
over the references being applied, and
make determinations regarding utility
and 35 U.S.C. 112, ¶ 1, support and
enablement. The requirements in
§ 1.265 are intended to assist the
examiner with the examination process.
Comment 225: Several comments
stated that the costs and requirements of
an examination support document
would encourage applicants to seek the
services of the least qualified searchers.
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Response: The Office is not
encouraging applicants to seek the
services of the least qualified searchers.
An applicant who decides to file an
examination support document has the
option to seek the services of any
searcher he or she chooses or to conduct
the preexamination search on his or her
own. Applicant should have an
incentive to hire the most qualified
searchers since a better search is more
likely to result in a more thorough
examination. The requirements of an
examination support document are
clearly set forth in § 1.265 and an
applicant who chooses to file an
examination support document must
satisfy these requirements. If the
preexamination search is poor, then
applicant runs the risk that the
preexamination search or the
examination support document will be
deemed insufficient. If the
preexamination search or examination
support document is deemed
insufficient, applicant will be given
only a two-month time period that is not
extendable under § 1.136(a) in which to
file a corrected examination support
document to avoid abandonment of the
application. See § 1.265(e).
Comment 226: One comment argued
that the Office’s estimate that the
burden imposed by the rule change will
equate to an additional one minute and
forty-eight seconds to twelve hours was
unrealistic for applications having
multiple independent claims and
hundreds of pieces of prior art to be
reviewed.
Response: The one minute and fortyeight seconds to twelve hours response
time provided in the notice of proposed
rule making covered each activity that
may occur during the processing of an
application for patent (OMB control
number 0651–0031). The specific
estimate for an examination support
document was twelve hours (which has
subsequently been increased to twentyfour hours). While the Office received
comments suggesting that the Office’s
cost estimate for an examination
support document was low, these
comments provided only conclusory
statements and contained few facts or
information.
Comment 227: A number of
comments argued that it was almost
impossible to determine the extent to
which the prior art must be searched to
satisfy the preexamination search
requirement. Several comments argued
that there is no way to meet the search
requirements. One comment argued that
it would be impossible to prove the
‘‘non-existence’’ of more pertinent art. A
number of comments argued that the
search should not be required to go
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beyond the resources that are publicly
available in the Office’s search room.
One comment suggested that the
Office’s search room would need to be
upgraded to allow access to all foreign
patents, periodicals and publications as
well as all United States patents to meet
the examination support document
requirements. Several comments argued
that applicant would be required to
conduct a search that is beyond the
scope of the searches performed by
examiners and that this was unfair and
burdensome to the applicants. Some
comments argued that the information
that must be identified is significantly
more than what the Office provides to
an applicant for a search and that a
requirement for a statement that
applicant has searched on the Office’s
database, the resources available to
examiners, should be sufficient.
Response: The standard for the
preexamination search that is required
is the same standard that the Office uses
to examine patent applications, which is
set forth in MPEP §§ 904–904.03. The
information that applicant must identify
is the same information that the
examiner must record in the application
file as set forth in MPEP § 719.05. If
applicant follows the search guidelines
set forth in the MPEP, then the
preexamination search should be
sufficient. The Office has published
patent search templates to define the
field of search, search tools, and search
methodologies that should be
considered when performing a search.
The search templates are published on
the Office’s Internet Web site at https://
www.uspto.gov/web/patents/
searchtemplates/. The Office has
requested comments on the patent
search templates. See Request for
Comments on Patents Search
Templates, 71 FR 94 (May 16, 2006),
1307 Off. Gaz. Pat. Office 22 (Jun. 6,
2006).
The accelerated examination
procedure has more requirements than
are contained in § 1.265. See Changes to
Practice for Petitions in Patent
Applications To Make Special and for
Accelerated Examination, 71 FR 36232
(June 26, 2006), 1308 Off. Gaz. Pat.
Office 106 (July 18, 2006) (notice). Thus,
the information concerning the
requirements for a preexamination
search document under the revised
accelerated examination procedure can
be applied to fulfill the requirements for
a preexamination search under § 1.265.
See samples of a preexamination search
document and an accelerated
examination support document on the
Office’s Internet Web site at https://
www.uspto.gov/web/patents/
accelerated/.
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Finally, a statement that applicant has
searched on the Office’s database and
the resources available to examiners
would not be sufficient. A mere
statement that the applicant has
searched on the Office’s database and
the resources available to examiners
would not identify the field of search,
the date of the search, and, for database
searches, the search logic or chemical
structure or sequence used as a query,
the name of the file or files searched and
the database service, and the date of the
search. See § 1.265(a)(1).
Comment 228: One comment argued
that the fact that foreign search reports
are not sufficient for the preexamination
search or examination support
document seemed at odds with the
objective of promoting greater reliance
on and use of work done by other
competent patent offices. One comment
questioned whether an international
search report is sufficient to satisfy the
search requirement, and if it is, then
why are foreign patent office searches
not sufficient.
Response: Neither foreign search
reports nor international search reports
are per se excluded. If a foreign search
report or an international search report
satisfies the requirements for a
preexamination search set forth in
§ 1.265, then it would be accepted.
Comment 229: One comment argued
that the preexamination search
requirement that the search must cover
all the features of the designated
dependent claims separately from the
claim or claims from which the
dependent claim depends makes no
sense. The comment argued that if a
dependent claim adds an element to the
combination in an independent claim, a
search for prior art references that
disclose the additional element
separately from the elements of the
independent claim is likely to produce
many references that have no relation to
the invention. The comment suggested
that the language of the rule be revised
to clarify that the preexamination search
must include a separate search for each
independent claim and each designated
dependent claim.
Response: As discussed previously,
the Office did not adopt the
‘‘representative claims’’ examination
approach. Under this final rule, if the
application contains more than five
independent claims or more than
twenty-five total claims, applicant is
required to file an examination support
document in compliance with § 1.265
that covers each of the claims (whether
in independent or dependent form)
before the first Office action on the
merits. If an examination support
document in compliance with § 1.265 is
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not filed before the issuance of a first
Office action on the merits of the
application, the application may not
contain or be amended to contain more
than five independent claims or more
than twenty-five total claims. The Office
has revised § 1.265(b) to delete the
phrase ‘‘separately from the claim or
claims from which the dependent claim
depends.’’ Section 1.265(b) as adopted
in this final rule requires that the
preexamination search must encompass
all of the features of the claims (whether
independent or dependent), giving the
claims the broadest reasonable
interpretation. For example, if
independent claim 1 recites elements
ABC and dependent claim 2 depends on
claim 1, incorporates all the limitations
of claim 1 and additionally recites
element D, then, even if applicant
cannot find elements ABC and believes
elements ABC to be novel, applicant
must still search for element D.
Comment 230: One comment argued
that the requirement that the search
encompass the ‘‘disclosed features that
may be claimed’’ should be deleted
because it gives examiners carte blanche
to reject preexamination searches on
essentially arbitrary grounds.
Response: The Office notes the
concerns expressed in the public
comment. The Office has modified the
proposed provision such that § 1.265(b)
as adopted in this final rule does not
require that the preexamination search
must encompass the disclosed features
that may be claimed. For any
amendment to the claims that is not
encompassed by the examination
support document, however, applicants
are required to provide a supplemental
examination support document that
encompasses the amended or new
claims at the time of filing the
amendment.
Comment 231: Several comments
suggested that there should be an
exemption from the limits on the
number of claims for independent
inventors. One comment argued that
many individual inventors lack the
skills and requisite knowledge to
perform an adequate preexamination
search and prepare an examination
support document.
Response: The applicant of a patent
application should have sufficient
knowledge of his or her own invention.
Performing a preexamination search and
preparing an examination support
document should be no more difficult
than preparing and prosecuting the
patent application. Furthermore,
applicants can avoid the need to file an
examination support document by not
presenting more than five independent
claims or more than twenty-five total
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claims in an application. This final rule,
however, provides that a small entity as
defined by the Regulatory Flexibility
Act (5 U.S.C. 601 et seq.) may claim an
exemption from the requirement in
§ 1.265(a)(3) for an identification of all
of the limitations of each of the claims
that are disclosed by the references cited
in the listing of the references required
under § 1.265(a)(2). See § 1.265(f).
Comment 232: One comment
suggested that the Office should hire
experienced searchers to perform the
searching function.
Response: The Office has recently
conducted a pilot using PCT
international applications for
competitively sourcing search functions
to commercial entities, each of which
had experience in providing patent
searches. The purpose of the pilot
program was to demonstrate whether
searches conducted by commercial
entities could meet or exceed the
standards of searches conducted and
used by the Office during the patent
examination process. The pilot was not
proved successful and was concluded
after six months.
Comment 233: A number of
comments argued that the rules
requiring an examination support
document are fraught with dangers in
the form of inequitable conduct
allegations and malpractice. One
comment argued that there would be
challenges on the sufficiency of the
examination support document, the
scope of the search of the examination
support document, and the timing of the
search for the examination support
document. A number of comments
argued that even a good faith attempt is
likely to be attacked on the grounds of
inequitable conduct, and that such a
duty is contrary to Frazier v. Roessel
Cine Photo Tech., Inc., 417 F.3d 1230,
75 U.S.P.Q.2d 1822 (Fed. Cir. 2005). A
number of comments argued that the
risk of inequitable conduct allegations
in litigation would effectively force
applicants to file ten or fewer claims,
which would deny them the right to
adequately protect their inventions.
Several comments argued that each
patent that includes an examination
support document in its file history
would be inherently weak given current
inequitable conduct practices. Several
comments argued that the likelihood of
having to defend against inequitable
conduct would reduce perceived public
confidence in the validity of issued
patents. Several comments also argued
the examination support document will
increase litigation costs. Several
comments also argued that the added
costs in terms of the perceived
reduction in patent quality and the
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potential litigation costs would
outweigh any potential speed of
examination benefit. One comment
argued that forcing applicant’s
representatives to limit the claims to an
arbitrary number is akin to asking them
to commit what amounts to malpractice.
One comment stated that the rules put
applicants in a triple-jeopardy situation
for losing patent rights. First, because
examiners will not consider all initially
filed claims, applicants are put in
jeopardy of having to file continuations
for unexamined claims. Second, if
applicants choose to have more than the
threshold number of claims, applicants
risk inequitable conduct charges. Third,
if only the threshold number of claims
is pursued, applicants will be unable to
adequately protect their inventions.
Response: Applicants may present as
many claims as they feel are necessary
to adequately protect their invention.
Under this final rule, applicant may
present up to five independent claims
and twenty-five total claims for
examination in an application without
providing an examination support
document. As discussed previously, the
Office has also modified the proposed
changes to continuing application
practice and continued examination
practice to permit an applicant to file
two continuation or continuation-inpart applications plus one request for
continued examination in an
application family, without any
justification. Thus, an applicant is
permitted to present up to fifteen
independent claims and seventy-five
total claims for each patentably distinct
invention via an initial application and
two continuation or continuation-inpart applications that are prosecuted
serially without providing either an
examination support document or a
justification. Applicant may also present
additional claims by submitting an
examination support document under
§ 1.265 before the first Office action on
the merits.
The changes in this final rule do not
force an applicant to carry any
affirmative duty that may expose him or
her to a greater risk of inequitable
conduct. The submission of an
examination support document to assist
the Office in gathering information for
use during examination does not expose
an applicant to a greater risk of
inequitable conduct. Inequitable
conduct is a doctrine based, in part,
upon ‘‘intent to deceive.’’ See Molins
PLC v. Textron, Inc., 48 F.3d 1172, 1178,
33 U.S.P.Q.2d 1823, 1826 (Fed. Cir.
1995). To establish inequitable conduct,
a party must provide clear and
convincing evidence of: (1) Affirmative
misrepresentations of a material fact,
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failure to disclose material information,
or submission of false material
information; and (2) an intent to
deceive. See, e.g., Impax Labs., Inc. v.
Aventis Pharm. Inc., 468 F.3d 1366,
1374, 81 U.S.P.Q.2d 1001, 1006 (Fed.
Cir. 2006) (citing Alza Corp. v. Mylan
Labs., Inc., 391 F.3d 1365, 1373, 73
U.S.P.Q.2d 1161, 1167 (Fed. Cir. 2004)).
Absent such ‘‘intent to deceive’’,
inequitable conduct cannot be proven.
Unless the applicant has an ‘‘intent to
deceive’’ when submitting an
examination support document, the
simple submission of an examination
support document, even one containing
erroneous information, to the Office
does not by itself raise an intent to
deceive or mislead the Office. See
Frazier, 417 F.3d at 1236 n.1, 75
U.S.P.Q.2d at 1826 n.1 (the mere
submission of erroneous information to
the Office does not by itself raise an
inference of intent to deceive or
mislead). Moreover, frivolous
allegations in litigation are subject to
professional responsibility rules and
Rule 11 of the Federal Rules of Civil
Procedure.
Comment 234: A number of
comments argued that the Office must
create a ‘‘safe harbor’’ that appropriately
protects the applicant from inequitable
conduct allegations when identifying
and characterizing important prior art.
Several comments argued that changes
to § 1.56 would need to be made to
exempt examination support documents
from it. One comment argued that
legislative reform is needed. Several
comments argued that implementation
of the examination support document
should be delayed until changes to
inequitable conduct are made. A
number of comments suggested that
more meaningful participation by
applicants in prosecution of the
application requires adequate ‘‘safeharbor’’ provisions from inequitable
conduct.
Response: The Office proposed
revising § 1.56 to provide a ‘‘safe
harbor’’ to applicants who make a
reasonable good faith effort to comply
with the proposed requirements. See
Changes To Information Disclosure
Statement Requirements and Other
Related Matters, 71 FR at 38811–12,
38820, 1309 Off. Gaz. Pat. Office at 27,
34. Most of the comments indicated that
such a ‘‘safe harbor’’ at best sets out the
current state of the law of inequitable
conduct, in that a ‘‘safe harbor’’ is
unnecessary for applicants who act in
good faith (i.e., without an intent to
deceive or mislead the Office) because
an intent to deceive or mislead the
Office is a separate and essential
component of inequitable conduct. See
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e.g., Weatherchem Corp. v. J.L. Clark,
Inc., 163 F.3d 1326, 1336, 49 U.S.P.Q.2d
1001, 1009 (Fed. Cir. 1998) (a finding
that the patentee acted without any
intent to deceive disposes of the
inequitable conduct issue), and Manville
Sales Corp. v. Paramount Systems Inc.,
917 F.2d 544, 552, 16 U.S.P.Q.2d 1587,
1593 (Fed. Cir. 1990) (materiality does
not presume intent, which is a separate
and essential component of inequitable
conduct). The comments also expressed
concern that any ‘‘safe harbor’’ would
possibly create new requirements with
respect to an applicant’s duty of
disclosure under § 1.56. It is the Office’s
position that an applicant’s duty of
disclosure under § 1.56 with respect to
an examination support document
under § 1.265 is satisfied if an
individual as defined in § 1.56(c) acted
in good faith to comply with the
requirements in § 1.265 for an
examination support document. The
Office, however, is not adopting changes
to § 1.56 in this final rule to provide a
‘‘safe harbor’’ to applicants because
such a provision would be unnecessary.
The Office notes that patent reform
legislation is pending in the 110th
Congress before both the Senate and
House of Representatives. See Patent
Reform Act of 2007, S. 1145, 110th
Cong. (2007), and H.R. 1908, 110th
Cong. (2007). The Department of
Commerce submitted a letter on May 18,
2007, to the Chairman of the House
Subcommittee on Courts, the Internet,
and Intellectual Property recommending
that H.R. 1908 be amended to address
the doctrine of inequitable conduct and
unenforceability to ensure that patent
applicants are not discouraged from
fully and fairly sharing relevant
information with the Office.
Comment 235: A number of
comments argued that the examination
support document would require the
applicant to make binding admissions
as to the scope of the claims and how
they relate to the prior art references
and thus force applicant to create
prosecution history estoppel and
address rejections that would never
have occurred during prosecution.
Several comments argued that such a
requirement shows a complete lack of
understanding of the pitfalls that
admissions can have in litigation.
Several comments argued that such
statements can be misinterpreted and
distorted in unforeseen ways. One
comment argued that this may cause the
practitioner to unintentionally and
unnecessarily narrow the claims
through the effect of prosecution history
estoppel, which will decrease the
commercial value and the quality of the
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patent. Several comments argued that
the requirement for an examination
support document places applicant in a
precarious position of having to provide
as much information as possible to
support patentability of the claimed
invention while avoiding statements
that can be easily manipulated in
litigation. One comment argued that
applicants would be put in a position of
having to make statements against
interest long before the scope of their
invention is realized. One comment
argued that requiring applicant to
examine his or her own application
creates a conflict of interest, which
would raise a question of concealment
or understatement.
Response: The best way to avoid
prosecution history estoppel is by
knowing what the prior art is and filing
claims that initially define patentable
subject matter without having to file an
amendment. Conducting a
preexamination search and preparing an
examination support document will
help applicants to draft a better written
disclosure and more focused claims,
thereby minimizing any prosecution
history estoppel.
Comment 236: Several comments
argued that the one-month nonextendable time period to respond to a
notice requiring a corrected or
supplemental examination support
document is insufficient. Some
comments suggested that a three-month
time period, which is extendable up to
six months with an extension of time,
should be given. Some comments
suggested that the time period should be
at least three months or extensions of
time should be permitted.
Response: The Office notes the
concerns expressed in the public
comment regarding the time period set
forth in a notice requiring a corrected or
supplemental examination support
document when an examination support
document is deemed to be insufficient.
The Office has revised the proposed
provision such that § 1.265(e) provides
a two-month time period that is not
extendable under § 1.136(a). The twomonth time period should be more than
sufficient to correct any minor
deficiencies. Applicants, however,
should not rely on the two-month time
period in § 1.265(e) to prepare an
examination support document or a
supplemental examination support
document. The requirements for an
examination support document are
clearly set forth in § 1.265. Applicant
should prepare the examination support
document in compliance with the
requirements before presenting more
than five independent claims or more
than twenty-five total claims. Applicant
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should also conduct the preexamination
search to encompass all of the disclosed
features that applicant expects to claim
in order to avoid the need to update the
preexamination search. Applicant
should file a supplemental examination
support document at the time applicant
presents any amendment to the claims
that is not covered by the previous
examination support document.
Applicant also has the option of
canceling the requisite number of claims
(independent or total) that necessitate
an examination support document,
rather than submitting a corrected or
supplemental examination support
document. Furthermore, extensions of
this two-month time period in § 1.265(e)
are available to those for which there is
sufficient cause (§ 1.136(b)).
Comment 237: One comment
suggested that if applicant’s
examination support document is
deemed insufficient, applicant should
be afforded an opportunity to
undesignate claims, and if applicant
fails to undesignate the claims or file a
corrected examination support
document, then the examiner should
undesignate claims and proceed with
examination, rather than holding the
application abandoned.
Response: The Office is not adopting
the ‘‘representative claims’’ examination
approach in this final rule. Thus,
designation (or ‘‘undesignation’’) of
dependent claims for initial
examination is not required in this final
rule. Under this final rule, if applicant
wants to present more than five
independent claims or more than
twenty-five total claims in an
application, applicant simply needs to
submit an examination support
document in compliance with § 1.265
before the first Office action on the
merits. If applicant files an examination
support document and it is insufficient,
the Office will notify the applicant and
give the applicant the options of either:
(1) Filing a corrected or supplemental
examination support document in
compliance with § 1.265 that covers
each of the claims (whether in
independent or dependent form); or (2)
amending the application such that it
contains no more than five independent
claims and no more than twenty-five
total claims.
Comment 238: One comment argued
that applicant should be given the
options available under § 1.75(b)(3) and
not be limited to submission of a
corrected or supplemental examination
support document when an examination
support document is deemed to be
insufficient or in other situations under
§ 1.265(e) (§ 1.261(c) as proposed).
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Response: The Office notes the
concerns expressed in the public
comment regarding the proposed
provision that requires a corrected or
supplemental examination support
document when an examination support
document is deemed insufficient. The
Office has modified this proposed
provision such that § 1.265(e) provides
that if an examination support
document is insufficient, the Office will
notify the applicant and give the
applicant the options of either: (1) Filing
a corrected or supplemental
examination support document in
compliance with § 1.265 that covers
each of the claims (whether in
independent or dependent form); or (2)
amending the application such that it
contains no more than five independent
claims and no more than twenty-five
total claims. However, applicants will
not be given the option to submit a
suggested requirement for restriction.
Such an option would not be
appropriate after applicant has already
submitted an examination support
document.
Comment 239: A number of
comments requested clarification on
how the Office would use an
examination support document. Some
comments questioned whether an
independent search would be
conducted and whether the cited
references would be independently
evaluated by the examiner. One
comment noted that if the examiner
simply adopts the results of the search
and the conclusions of patentability,
there would be a wide variation in
quality and thoroughness of the
searches performed, and in the quality
of analysis of the search results. The
comment further argued that if the
examiner will perform further
searching, then it was difficult to
understand how the objective of
‘‘sharing the burden’’ is accomplished,
since it would not seem to yield time or
cost savings for the Office. Several
comments argued that examiners should
not give any faith and credit to the
information in an examination support
document. One comment argued that if
the examiner does rely on the external
search, the uncertainty of the patent will
be increased. Another comment argued
that the submission of an examination
support document may motivate
examiners to skip doing a thorough
search, thus leading to lower patent
quality. One comment argued that
requiring an examination support
document was a punitive measure
because: (1) The examination support
document requires information that is
rarely if ever required, such as details
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regarding literal support for the claim
elements; (2) the Office does not
indicate that examiners will receive
additional time to review the
examination support document; and (3)
the Office has not indicated that it will
rely on the external search.
Response: Upon taking up an
application for examination, the
examiner will consider the prior art
submitted in an information disclosure
statement in compliance with §§ 1.97
and 1.98 (see § 1.97(b)) and those filed
with an examination support document
in compliance with § 1.265 (required
under § 1.75(b)), and make a thorough
investigation of the available prior art
related to the subject matter of the
claimed invention (see § 1.104(a)(1)).
The examiner will make an independent
patentability determination in view of
the prior art on the record, other
information in the examination support
document, and any other relevant prior
art or evidence. The examination
support document will assist the
examiner in the examination process
and the determination of patentability of
the claims by providing the most
relevant prior art and other useful
information. It will help the examiner in
understanding the invention and to
focus on the relevant issues. The
examination support document will also
assist the examiner in evaluating the
prior art cited by the applicant and in
determining whether a claim limitation
has support in the original disclosure
and in any prior-filed application. The
requirement for an examination support
document is not a punitive measure, nor
is it a substitute for the Office’s
examination. The information required
in an examination support document is
to assist the examiner with the more
extensive examination of an application
having more than five independent
claims or more than twenty-five total
claims.
The Office has reduced the
requirements for an examination
support document under § 1.265 as
adopted in this final rule. The Office
proposed to require applicants to
provide a detailed explanation of how
each independent and dependent claim
was patentable over the cited art
(proposed § 1.261(a)(4)). Section
1.265(a)(4) as adopted in this final rule
requires applicants to provide the same
explanation for the independent claims
only. The Office also proposed to
require applicants to provide statements
of utility of the invention as defined in
each independent claim (proposed
§ 1.261(a)(5)). Section 1.265 as adopted
in this final rule does not include such
a requirement. These changes reduce
the requirements for applicants who
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wish to file an examination support
document while still providing
examiners with valuable information to
assist in the examination of
applications.
Comment 240: Several comments
questioned how the Office would
determine if an examination support
document is insufficient. Some
comments also questioned what would
happen if the Office knows of closer
prior art than that cited by applicant.
One comment questioned whether the
examiner could hold the examination
support document non-compliant if the
examiner objects to the search or the
claim scope and also what would be
applicant’s remedy. Several comments
argued that applicants currently
disregard §§ 1.56, 1.97 and 1.98 and fail
to cite their own work. The comments
argued that applicant will cite generic
references to comply with § 1.265 and
will likely not reveal the most pertinent
art. One comment argued that the
examination support document
requirements are subjective. One
comment suggested that the Office
should institute a petition process for
disputing the requirement for an
examination support document or the
holding that an examination support
document is insufficient. The comment
suggested that the requirement should
be stayed pending the outcome of the
petition, or applicants should at least be
given sufficient time for the petition to
be heard.
Response: The Office will review an
examination support document to
determine if it meets all the
requirements set forth in § 1.265. As
discussed previously, the accelerated
examination procedure has more
requirements than are contained in
§ 1.265. The Office has provided
guidelines for examination support
documents filed under the accelerated
examination procedure. The Office’s
guidelines concerning the accelerated
examination support document may be
helpful to applicants who are preparing
an examination support document
under § 1.265. The guidelines under the
accelerated examination procedure,
search templates, and samples of a
preexamination search document and
an examination support document are
available on the Office’s Internet Web
site at https://www.uspto.gov/web/
patents/accelerated/. The Office will
provide similar guidelines for
examination support documents under
§ 1.265, including the preexamination
search statement, and will post such
guidelines on the Office’s Internet Web
site. These guidelines should minimize
subjectivity in evaluating whether an
examination support document
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complies with the requirements of
§ 1.265.
Section 1.265(a)(2) requires a listing
of references deemed most closely
related to the subject matter of each of
the claims (whether in independent or
dependent form). As discussed
previously, the references that would be
most closely related to the subject
matter of each of the claims include: (1)
A reference that discloses the greatest
number of limitations in an
independent claim; (2) a reference that
discloses a limitation of an independent
claim that is not shown in any other
reference in the listing of references
required under § 1.265(a)(2); and (3) a
reference that discloses a limitation of a
dependent claim that is not shown in
any other reference in the listing of
references required under § 1.265(a)(2).
References that are only relevant to the
general subject matter of the claims
would not be most closely related as
long as there are other references that
are more closely related to the subject
matter of the claims. Applicant may not
exclude a reference from an
examination support document simply
because the reference was not the result
of the preexamination search provided
for in § 1.265(a)(1). References, from
whatever source, that have been brought
to the applicant’s attention must be
considered in determining the
references most closely related to the
subject matter of each of the claims.
Accordingly, if applicant merely cites
generic references and does not cite the
most pertinent art (including applicant’s
own work), then the examination
support document would most likely
not be compliant with § 1.265. Simply
because the Office knows of a closer
prior art reference (that is not
applicant’s own work) than the prior art
cited by the applicant is generally not
enough to hold a preexamination search
insufficient.
An examination support document
could be deemed insufficient based on
an insufficient search. If the
preexamination search or examination
support document is deemed
insufficient, applicant will be given
only a two-month time period that is not
extendable under § 1.136(a) in which to
file a corrected examination support
document or amend the application to
contain five or fewer independent
claims and twenty-five or fewer total
claims to avoid abandonment of the
application. See § 1.265(e). Any
applicant who disagrees with a
requirement for an examination support
document or the holding that an
examination support document or
preexamination search is insufficient
may file a petition under § 1.181. As
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provided in § 1.181(f), the mere filing of
a petition will not stay any period for
reply that may be running against the
application. The Office will make every
effort to decide petitions in a timely
manner.
Comment 241: A number of
comments argued that it was unfair and
inconsistent for the Office to require
applicants to produce an examination
support document when the Office is
not effectively using foreign search
reports. One comment argued that since
the Office is unwilling to accept a
foreign search report or use
international search reports prepared by
the Office itself, the examination
support document would not reduce
pendency. Another comment argued
that since examiners ignore
international search reports they would
not consider an examination support
document.
Response: The Office will consider
any prior art submitted by applicant in
an examination support document in
compliance with § 1.265 (required
under § 1.75(b)) and an information
disclosure statement in compliance with
§§ 1.97 and 1.98 including those that are
filed with a foreign search report or an
international search report. Any
relevant prior art will assist the
examiner in the determination of
patentability of the claims. The
examiner, however, must make an
independent determination of
patentability of the claims in the
application. The examiner cannot
accept the determination of
patentability by another examiner in a
foreign application or an international
application because the patentability
standard of a foreign or international
application is different than the
standard in a U.S. application.
Comment 242: A number of
comments argued that the requirement
for an examination support document
would create more work for the
examiner since the examiner would
have to determine the adequacy of the
examination support document. One
comment argued that complex cases
would continue to be complex and the
Office would just have the additional
tasks of determining whether or not an
examination support document should
be required, and whether or not an
examination support document is
sufficient. One comment argued that
examiners will not have sufficient time
to review the examination support
documents and that examiners would
need more time for reviewing the
examination support documents. The
comment questioned whether this
would take the place of the examiner
reviewing the specification. Several
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comments argued that determining the
adequacy of examination support
documents would divert resources from
examination and prolong pendency.
One comment argued that there would
be additional burdens on the examiner
in having to impose the requirement for
designation of claims, issue
communications challenging the
sufficiency of the examination support
document, perform a different search
after claims are amended in response to
an Office action, and search and
examine the non-designated claims after
allowance of designated claims. One
comment argued that the number of
petitions would increase because of
petitions regarding whether an
examination support document was
needed or defective.
Response: Under this final rule,
applicant is required to file an
examination support document under
§ 1.75(b)(1) if applicant presents more
than five independent claims or more
than twenty-five total claims in an
application. If an examination support
document in compliance with § 1.265 is
not filed before the issuance of a first
Office action on the merits of the
application, the application may not
contain or be amended to contain more
than five independent claims or more
than twenty-five total claims. The
majority of the applicants would not
need to file an examination support
document. The requirements of an
examination support document are
clearly set forth in § 1.265. Applicants
should comply with the requirements at
the time applicant presents more than
five independent claims or more than
twenty-five total claims in an
application. As discussed previously,
any relevant prior art and other
information provided in an examination
support document will assist the
examiner in the examination process
and in the determination of
patentability of the claims. During the
examination process, the examiner will
consider all relevant prior art and
information, and interpret the claims in
light of the specification. The examiner
will review the specification even when
applicant files an examination support
document. Thus, the benefits obtained
by the examination support document
would outweigh the Office’s additional
task of determining whether or not it is
sufficient or is required.
Comment 243: One comment
questioned whether the Office would
give examiners less time to examine
those applications in which an
examination support document is filed
and, if not, then how would the
workload be reduced.
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Response: Changes to patent examiner
production goals are beyond the scope
of the proposed changes to the rules of
practice. Therefore, whether examiners
should be given less time to examine
certain applications is not discussed in
this final rule. The Office expects that
these rule changes will result in a more
focused quality examination. The
information provided in the
examination support document will
assist the examiner with the more
extensive examination of the
application. This information will be
available to the examiner up front and
will include the most closely related
references and a detailed explanation of
how the claims are patentable over these
references. As a result, the exchanges
between examiners and applicants
should be more efficient and effective,
the number of Office actions should be
reduced, prosecution should be
concluded faster, and the need to file a
continuation application or request for
continued examination should be
reduced. Thus, the Office’s workload
would be reduced.
Comment 244: Several comments
argued that the requirement for the
broadest reasonable interpretation of the
claims in conducting the search for an
examination support document is
inconsistent with current case law citing
In re Johnston and In re Donaldson that
require the Office to interpret the claims
reasonably in light of the specification.
Response: The requirement in
§ 1.265(b) is consistent with current case
law. The current case law requires that
during examination the claims must be
given their broadest reasonable
interpretation consistent with the
specification. According to case law,
however, the broadest ‘‘reasonable’’
interpretation is necessarily one that is
consistent with the specification. See,
e.g., Phillips, 415 F.3d at 1316, 75
U.S.P.Q.2d at 1329; In re Morris, 127
F.3d 1048, 1054, 44 U.S.P.Q.2d 1023,
1027 (Fed. Cir. 1997) (‘‘Some cases state
the standard as the broadest reasonable
interpretation, others include the
qualifier consistent with the
specification or similar language. Since
it would be unreasonable for the PTO to
ignore any interpretive guidance
afforded by the applicant’s written
description, either phrasing connotes
the same notion: As an initial matter,
the PTO applies to the verbiage of the
proposed claims the broadest reasonable
meaning of the words in their ordinary
usage as they would be understood by
one of ordinary skill in the art, taking
into account whatever enlightenment by
way of definitions or otherwise that may
be afforded by the written description
contained in the applicant’s
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specification.’’) (citations omitted).
Therefore, the reference in § 1.265(b) to
giving the claims ‘‘the broadest
reasonable interpretation’’ is consistent
with case law.
Comment 245: One comment agreed
that the requirements relating to the
concise statement of utility and the 35
U.S.C. 112 showing is sharing the
burden of examining all of the claims in
the application, but argued that
requiring applicant to characterize the
prior art goes too far and is best left to
the examiner since it is the examiner’s
role to review and analyze the prior art
for patentability purposes in view of
§ 1.104. Several comments argued that
the burden of the examination belongs
with the Office and that it is against the
public interest to shift the burden from
the examiner to the applicant. One
comment argued that the examination
support document requirement asks
applicant to prove that patent claims are
patentable, which is essentially
impossible. One comment argued that
the only purpose of an examination
support document is to force applicants
to do what they already should be
doing, that is, carefully comparing their
claims to every close prior art reference
and adding limitations to distinguish
the claims.
Response: Ultimately it is the Office’s
responsibility to determine
patentability. Nevertheless, it is
appropriate for applicants to provide
information regarding an initial review
of claims to assist the Office in
determining patentability in
applications where they feel they need
to have more than five independent
claims or more than twenty-five total
claims. There is no reasonable
explanation as to why it is against
public interest for an applicant who
presents more than five independent
claims or more than twenty-five total
claims to provide additional
information to the Office. The Office is
not requiring applicants to prove that
their claims are patentable. The Office is
simply requiring applicants who present
more than five independent claims or
more than twenty-five total claims to
provide additional information to the
Office by conducting a preexamination
search and submitting an examination
support document. The Office agrees
that applicants should be comparing
their claims to every close prior art
reference and adding limitations to
distinguish the claims.
Comment 246: One comment stated
the Office should require a showing of
precise written description (35 U.S.C.
112, ¶ 1) support for all amendments
made by applicants.
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Response: Applicant should
specifically point out the support for
any amendments made to the
disclosure. See e.g., MPEP § 2163.06.
Furthermore, when applicant adds a
new claim limitation in an application
that contains more than five
independent claims or more than
twenty-five total claims, applicant is
required to submit a supplemental
examination support document that
includes a showing of where such new
claim limitation finds support under 35
U.S.C. 112, ¶ 1, in the written
description of the specification and in
any parent application. In addition, the
examiner may require the applicant to
show where the specification of the
application or a parent application
provides written description support
under 35 U.S.C. 112, ¶ 1, for a new
limitation. See § 1.105(a)(1)(ix) (as
adopted in this final rule).
Comment 247: One comment argued
that the concise statement of utility and
the 35 U.S.C. 112 showing required in
an examination support document make
no sense. The comment argued that
cross-referencing each line of the claims
back to the specification is a waste of
time. One comment argued that
applicants should not have to admit
what is disclosed, but rather they
should only have to admit what is not
disclosed.
Response: In view of the comments,
the Office is not adopting the
requirement that an examination
support document contain a concise
statement of the utility of the invention
as defined in each of the independent
claims. The showing of where each
limitation of the claims finds support
under 35 U.S.C. 112, ¶ 1, however,
would be helpful to the examiner. The
examiner is responsible for determining
whether or not there is 35 U.S.C. 112,
¶ 1, support in the written description
for claimed subject matter. If applicant
provides this information, it will assist
the examiner in the examination of the
application by making it easier for the
examiner to make the necessary
determinations. See Hyatt v. Dudas,
2007 U.S. App. LEXIS 15350 (Fed. Cir.
Jun. 28, 2007). The applicant should be
aware of where each limitation of the
claims finds support under 35 U.S.C.
112, ¶ 1, in the written description by
virtue of having prepared the
application. There is no justification for
requiring the examiner to duplicate this
effort in an application that exceeds the
five independent claim and twenty-five
total claim threshold set forth in
§ 1.75(b).
Comment 248: One comment argued
that § 1.265(a)(2) through (a)(4)
resurrects provisions that used to be in
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the rules, but were amended out of the
rules in 1992 when they were found to
be unworkable.
Response: The Office proposed a
number of changes to the rules of
practice around 1990 related to the duty
of disclosure and the filing of
information disclosure statements. See
Duty of Disclosure, 56 FR 37321 (Aug.
6, 1991), 1129 Off. Gaz. Pat. Office 52
(Aug. 27, 1991) (proposed rule), and
Duty of Disclosure and Practitioner
Misconduct, 54 FR 11334 (Mar. 17,
1989), 1101 Off. Gaz. Pat. Office 12
(Apr. 4, 1989) (proposed rule). The
Office ultimately adopted changes to the
duty of disclosure provisions of § 1.56
and the information disclosure
statement provisions of §§ 1.97 and 1.98
(and deleted § 1.99) in 1992. See Duty of
Disclosure, 57 FR 2021 (Jan. 17, 1992),
1135 Off. Gaz. Pat. Office 13 (Feb. 13,
1992) (final rule). The changes adopted
in the 1992 final rule concerning the
duty of disclosure provisions of § 1.56
and the information disclosure
statement provisions of §§ 1.97 and 1.98
did not eliminate, or decline to adopt as
final, provisions similar to the
provisions of § 1.265(a).
Comment 249: One comment argued
that the requirement for an examination
support document was contrary to case
law (citing In re Wilder, 736 F.2d 1516,
222 U.S.P.Q. 369 (Fed. Cir. 1984)) that
applicant is not under a duty to search.
Response: Initially, it is noted that
Wilder does not stand for the
proposition that applicant does not have
a duty to search. Wilder involved a
reissue application. That case held that
an attorney’s statement that his error
was a misunderstanding of the scope of
the invention arose resulting from a lack
of a prior art search was a sufficient
explanation to satisfy the requirements
of the reissue rule regarding how the
error arose. There is some case law,
however, that indicates that applicant
does not have a duty to search. See
Nordberg, Inc. v. Telesmith, Inc., 82
F.3d 394, 397, 38 U.S.P.Q.2d 1593,
1595–96 (Fed. Cir. 1996); FMC Corp. v.
Hennessy Indus., Inc., 836 F.2d 521, 526
n.6, 5 U.S.P.Q.2d 1272, 1275–76 n.6
(Fed. Cir. 1987); FMC Corp. v.
Manitowoc Co., 835 F.2d 1411, 1415, 5
U.S.P.Q.2d 1112, 1115 (Fed. Cir. 1987);
Am. Hoist & Derrick Co. v. Sowa & Sons,
Inc., 725 F.2d 1350, 1362, 220 U.S.P.Q.
763, 772 (Fed. Cir. 1984), cert. denied,
469 U.S. 821, 224 U.S.P.Q. 520 (1984).
In view of these cases, the Office has
stated that ‘‘[a]n applicant has no duty
to conduct a prior art search as a
prerequisite to filing an application for
patent.’’ See MPEP § 410. The case law,
however, only discusses applicant’s
responsibility under the rules in 37 CFR
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Part 1 that were in effect at the time that
was relevant to these particular cases.
The case law does not stand for the
proposition that the Office cannot
change the rules in 37 CFR Part 1 to
require a preexamination search, either
generally or, when an applicant presents
more than five independent claims or
more than twenty-five total claims in an
application. Indeed, commentators have
suggested that, especially after Festo X,
a practitioner who declines to conduct
any pre-filing search as a matter of
practice may be falling short of the
responsibility under 37 CFR part 10 to
perform services with competence. See
Schneck, The Duty to Search, 87
J.P.T.O.S. 689, 696–701 (2005).
Comment 250: One comment argued
that an examination support document
is not properly compared to an appeal
brief since, in an appeal brief, the focus
is on the examiner’s rejection and
interpretation of the references, whereas
in an examination support document,
applicant is required to provide a
search, interpret claims, and identify all
issues related to the search results with
respect to each element of each claim.
Response: The Office did not compare
an examination support document to an
appeal brief. The Office simply
indicated that the proposed
‘‘representative claim’’ examination
approach was similar to the BPAI’s
representative claim practice.
Nevertheless, the Office is not adopting
the ‘‘representative claims’’ examination
approach in this final rule.
Comment 251: One comment argued
that the rule changes, especially the
requirement for an examination support
document, are not rationally related to
achieving the stated goals of improving
patent quality and increasing efficiency.
Response: The Office is requiring an
examination support document in those
cases where applicants feel they need to
have more than five independent claims
or more than twenty-five total claims
because these applications are the most
burdensome for the Office. An
examination support document will
help the Office improve quality and
increase efficiency because it will assist
the examiner with the examination of
the application. It should provide the
examiner with the most pertinent prior
art and an analysis of that art. Therefore,
the changes being adopted in this final
rule are related to the goals of improving
quality and increasing efficiency.
Comment 252: One comment argued
that the examination support document
requirement will increase demand for
public searchers and this may drain the
examining pool and worsen retention.
Response: It is the Office’s experience
that only a small number of examiners
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who leave the Office do so to become
public searchers.
Comment 253: One comment argued
that practitioners do not draft patent
applications to claim subject matter that
they believe is not supported by the
specification and thus it should be
sufficient to merely assert that the
claims are supported by the ‘‘entire
specification.’’
Response: The purpose of the
requirement for a showing of where
each limitation of the claims finds
support under 35 U.S.C. 112, ¶ 1, is to
assist the examiner in determining
where the specification provides written
description support for each claim
limitation. An assertion by the
practitioner that the claims are
supported by the entire specification
would not be of any assistance to the
examiner.
Comment 254: Several comments
argued that an examination support
document should not be required until
after the time for issuing a restriction
requirement has passed because it is
unfair to require applicant to prepare
and file an examination support
document when claims may be
restricted such that fewer than ten
representative claims are pending for
examination. One comment suggested
that a time period should be set in
which the examiner must issue a
restriction requirement or indicate that
there will be none, and then the time
period for submission of an examination
support document should be set after
that.
Response: As discussed previously,
an applicant may submit a suggested
restriction requirement accompanied by
an election without traverse of an
invention to which there are no more
than five independent claims and no
more than twenty-five total claims. See
§ 1.142(c) and the discussion of
§ 1.142(c). In this situation, an
examination support document will not
be required if the suggested restriction
requirement is accepted. An
examination support document will be
required only if the suggested restriction
requirement is not accepted, and the
application contains more than five
independent claims or more than
twenty-five total claims, or more than
five independent claims or more than
twenty-five total claims to the elected
invention and/or species if the examiner
makes a restriction requirement that is
different from the suggested restriction
requirement.
Comment 255: One comment
suggested that the Office should give
assurances that: Like an information
disclosure statement, nothing in an
examination support document is an
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admission of prior art; nothing in the
examination support document would
be considered as affecting the scope of
the claims; and the examination support
document would not be published and
examiners would make no references to
it in correspondence. One comment
supported the use of a limited
examination support document that
would require applicants to identify
where in the specification the
corresponding structure, material or acts
for functional claim elements may be
found since this would improve
examination efficiency and have
minimal effects in litigation.
Response: Providing assurances that
the examination support document
would not affect the scope of the claims
would not be appropriate. The showing
of where each limitation of the claims
finds support under 35 U.S.C. 112, ¶ 1,
in the written description of the
specification and the showing that
includes the structure, material, or acts
in the specification that correspond to
each means-(or step-) plus-function
claim element that invokes
consideration under 35 U.S.C. 112, ¶ 6,
may affect the interpretation of the
claims. The determination on
patentability is made on the entire
record of the application. In order to
provide a complete application file
history, the examiner may find that it is
necessary to state on the record any
agreement or disagreement with
applicant’s explanation of how the
claims are patentable over the references
or applicant’s explanation of where each
limitation of the claims finds support
under 35 U.S.C. 112, ¶ 1, in the written
description. The application record is
available to the public upon the
publication of the application under 35
U.S.C. 122(b) and the issuance of a
patent on the application.
Comment 256: One comment
suggested that the Office require
applicants to provide claim charts that
illustrate the differences between
claims. The comment also suggested
that applicants could be required to
identify where support exists in the
specification for the claims, or to
identify groups of claims that are similar
and define similar limitations.
Response: There is no prohibition
against applicants submitting claim
charts to illustrate the differences
between claims. The Office does not
consider it necessary at this time to
make claim charts a requirement.
Comment 257: One comment inquired
why, when claims in excess of ten are
designated, a justification for all
designated claims must be supplied and
not just the number in excess of ten
representative claims.
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Response: The Office is not adopting
the ‘‘representative claims’’ examination
approach in this final rule. Under this
final rule, applicant is required to file an
examination support document when
applicant presents more than five
independent claims or more than
twenty-five total claims in an
application. In order to best assist in
examination, the examination support
document must cover all of the claims
(in independent or dependent form) in
the application, and not just the
independent claims in excess of five or
the total claims in excess of twenty-five.
I. The Office’s Authority To Promulgate
the Changes in This Final Rule
Comment 258: A number of
comments argued that the changes to
the rules of practice being adopted in
this final rule are beyond the Office’s
rulemaking authority under 35 U.S.C.
2(b)(2). The comments argued that the
proposed §§ 1.75(b), 1.78(d), and 1.78(f)
are substantive and not procedural in
nature because they affect an applicant’s
right to receive a patent for an invention
or an applicant’s ability to claim what
the applicant regards as the invention.
Response: The Office has the
authority under 35 U.S.C. 2(b)(2) to
establish regulations, not inconsistent
with law, which shall govern the
conduct of proceedings in the Office.
The ‘‘conduct of proceedings in the
Office’’ provision of 35 U.S.C. 2(b)(2) (as
well as former 35 U.S.C. 6(a)), however,
is not limited to what might be
characterized as ‘‘procedural’’ rather
than ‘‘substantive’’ rules. See United
States v. Haggar Apparel Co., 526 U.S.
380, 387–88 (1999). Simply contending
that a regulation is ‘‘substantive and not
procedural’’ fails to address the issue
because a regulation that relates to
application processing within the Office
and that is not inconsistent with law
falls within the Office’s rulemaking
authority. See In re Van Ornum, 686
F.2d 937, 945, 214 U.S.P.Q.2d 761, 768
(C.C.P.A. 1982) (‘‘Appellants say the
regulation is ‘invalid on its face’ but
they do not explain why beyond
contending it is ‘substantive and not
procedural.’ We can give no weight to
that contention. True, the rule is
substantive in that it relates to a
condition under which a patent will be
granted which otherwise would have to
be denied for double patenting. Much of
the content of the PTO rules is
‘substantive’ in this respect. The
regulation clearly relates to application
processing within the PTO in a manner
consistent with statutory and case law,
which is its principal business.’’).
The regulations at issue in this final
rule concern application processing
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exclusively within the Office. The
changes to § 1.75 being adopted in this
final rule govern the requirements
relating to the examination of the claims
in an application, as is provided for in
35 U.S.C. 131. The changes to § 1.78(d)
being adopted in this final rule govern
the conditions under which an
application may contain or be amended
to contain a claim under 35 U.S.C. 120,
121, or 365(c) to the benefit of a priorfiled application. The changes to
§ 1.78(f) being adopted in this final rule
govern the requirements relating to the
filing and examination of multiple
applications by a common owner. The
filing of an application for patent,
amendment of an application, and the
examination of an application are
proceedings that take place exclusively
within the Office. Therefore, regulations
governing requirements relating to the
filing, amendment, and examination of
an application fall squarely within the
Office’s authority under 35 U.S.C.
2(b)(2) to establish regulations which
‘‘govern the conduct of proceedings in
the Office.’’
The substantive right at issue during
the patent examination process involves
whether the applicant has met the
conditions and requirements under title
35, United States Code, to be entitled to
a patent, rather than the ability to file
and maintain an unlimited number of
continuing applications or requests for
continued examination or the ability to
refrain from obtaining and providing
information pertinent to the
examination of the application to the
Office. See, e.g., 35 U.S.C. 101
(‘‘[w]hoever invents or discovers any
new and useful process, machine,
manufacture, or composition of matter,
or any new and useful improvement
thereof, may obtain a patent therefor,
subject to the conditions and
requirements of this title’’). The changes
in this final rule do not preclude
applicants from obtaining a patent on an
invention, discourage, impede, or block
an applicant’s statutory right to a patent,
or stifle inventors’ rights to protect their
inventions.
The changes to continuing application
practice adopted in this final rule do not
set a per se limit on the number of
continuing applications that an
applicant may file. That is, applicant
may automatically file a first and second
continuation application without any
justification and may file any number of
additional continuation applications as
long as he or she justifies each filing by
a showing as to why the amendment,
argument or evidence sought to be
entered could not have been previously
presented. Therefore, the changes to the
final rule do not affect an applicant’s
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right to receive a patent for an
invention. The modification to
continuation practice simply improves
the procedures under which an
applicant may file a continuation
application by focusing and
consolidating the examination process.
Furthermore, as an alternative, an
applicant may choose to file an appeal
when confronted with a rejection that
he or she feels is improper. The changes
adopted in this final rule to the
continuing application practice prevent
applicants from unnecessarily
prolonging prosecution of applications
before the Office.
The changes to the examination of
claims practice adopted in this final rule
do not prevent an applicant from
presenting as many claims as are
considered necessary or desirable to
protect the full scope of the invention.
The changes to the examination of
claims practice adopted in this final rule
simply provide that if an applicant
exceeds or contemplates exceeding a
specified threshold (five independent
claims or twenty-five total claims), the
applicant can provide for that
eventuality by submitting additional
information to the Office in an
examination support document in order
to facilitate effective examination of the
application. The submission of an
examination support document does not
change the substantive criteria applied
during examination (i.e., the statutory
standards of patentability set forth in
title 35, United States Code) to
determine the applicant’s entitlement to
a patent.
The patentably indistinct claims
provisions do not affect applicant’s
patent rights because once the required
explanation of patentable indistinctness
has been provided, the claimed
invention is examined on the merits and
patentability is determined by the
Office. The requirement that applicant
show that claims are patentably distinct
up front is simply a tool to focus and
consolidate the examination of multiple
applications.
Comment 259: A number of
comments suggested that a requirement
of a showing to obtain an additional
continuation application is contrary to
35 U.S.C. 120, 121, 365, 132(b), and
other sections of title 35, United States
Code, under which an applicant has a
right to file an unlimited number of
continuation applications. The
comments suggested that: (1) The
proposed rules disregard case law, in
particular, In re Hogan, 559 F.2d 595,
194 U.S.P.Q. 527 (C.C.P.A. 1977), and In
re Henriksen, 399 F.2d 253, 158
U.S.P.Q. 224 (C.C.P.A. 1968); (2) the
Office does not have authority to limit
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the number of continuing applications
under 35 U.S.C. 2(b)(2) because the
proposed rules are inconsistent with the
law, and specifically do not ‘‘facilitate
and expedite the processing of patent
applications’’; (3) the changes to § 1.78
cut off substantive rights for reasons
other than patentability (as set forth in
35 U.S.C. 102, 103 and 112 of title 35,
United States Code) and procedural
misconduct, and thus are in violation of
35 U.S.C. 131; (4) the changes to § 1.78
are inconsistent with 35 U.S.C. 131 or
132, because the Director does not have
the statutory discretion under these
provisions to refuse to examine or to
reexamine any application; (5) the
requirement for a ‘‘showing’’ is contrary
to law because the Office has no
authority to deny an applicant the right
to file a continuation application or a
request for continued examination; (6)
no justification or legal basis exists for
the petition requirements set forth in the
rules to get the benefit of an earlier
filing date under 35 U.S.C. 120 or 365;
(7) the Office has no statutory authority
to delete a claim to priority in a
continuing application filed according
to the statutory provisions; and (8)
applicants have a right to file a
continuation application, as long as the
reason is not improper, unduly
successive or repetitive, citing Godfrey
v. Eames, 68 U.S. (1 Wall.) 317, 325–26
(1864). Other comments, however,
suggested that the proposed rules are
consistent with both statute and case
law given that: (1) The Office is not
instituting a per se numerical limit on
the number of continuation applications
that an applicant may file; and (2)
applicants are afforded an opportunity
to justify by a showing the need to file
additional continuation applications.
Response: None of the statutory
provisions or case law cited by the
comments provides that an applicant
may file an unlimited number of
continuing applications or requests for
continued examination.
None of the statutory provisions
related to continuing applications cited
by the comment provide that an
applicant may file an unlimited number
of continuing applications. 35 U.S.C.
120 simply provides that an applicant
may claim the benefit of the filing date
of a prior-filed application provided that
certain conditions are satisfied. 35
U.S.C. 121 provides that if the Director
requires that an application containing
claims to two or more independent and
distinct inventions be restricted to one
of the inventions and a non-elected
invention is made the subject of a
divisional application, the applicant in
the divisional application may claim the
benefit of the filing date of prior-filed
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application provided that the conditions
specified in 35 U.S.C. 120 are satisfied.
35 U.S.C. 365(c) provides that an
applicant in an international application
designating the United States may claim
the benefit of the filing date of a priorfiled national application or a prior-filed
international application designating
the United States, and that an applicant
in a national application may claim the
benefit of the filing date of a prior-filed
international application designating
the United States, again provided that
the conditions specified in 35 U.S.C.
120 are satisfied.
Since 35 U.S.C. 120, 121 and 365(c)
all hinge upon 35 U.S.C. 120, the
response focuses on that provision. 35
U.S.C. 120 provides that:
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An application for patent for an invention
disclosed in the manner provided by the first
paragraph of section 112 of this title in an
application previously filed in the United
States, or as provided by section 363 of this
title, which is filed by an inventor or
inventors named in the previously filed
application shall have the same effect, as to
such invention, as though filed on the date
of the prior application, if filed before the
patenting or abandonment of or termination
of proceedings on the first application or on
an application similarly entitled to the
benefit of the filing date of the first
application and if it contains or is amended
to contain a specific reference to the earlier
filed application. No application shall be
entitled to the benefit of an earlier filed
application under this section unless an
amendment containing the specific reference
to the earlier filed application is submitted at
such time during the pendency of the
application as required by the Director. The
Director may consider the failure to submit
such an amendment within that time period
as a waiver of any benefit under this section.
The Director may establish procedures,
including the payment of a surcharge, to
accept an unintentionally delayed
submission of an amendment under this
section.
35 U.S.C. 120 (2000).
35 U.S.C. 120 has been revised
significantly since its codification as
part of the 1952 Patent Act. 35 U.S.C.
120 as codified in the 1952 Patent Act
provided that: ‘‘[a]n application for
patent for an invention disclosed in the
manner provided by the first paragraph
of section 112 of this title in an
application previously filed in the
United States by the same inventor shall
have the same effect, as to such
invention, as though filed on the date of
the prior application, if filed before the
patenting or abandonment of or
termination of proceedings on the first
application or on an application
similarly entitled to the benefit of the
filing date of the first application and if
it contains or is amended to contain a
specific reference to the earlier filed
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application.’’ 35 U.S.C. 120 (1952). 35
U.S.C. 120 was amended in 1975 to add
‘‘or as provided by section 363 of this
title’’ to provide for claims under 35
U.S.C. 120 to the benefit of an
international application filed under the
PCT (i.e., international applications
filed under 35 U.S.C. 363). Pub. L. 94–
131, section 9, 89 Stat. 685, 692 (1975).
35 U.S.C. 120 was amended again in
1984 to substitute ‘‘by an inventor or
inventors named in the previously filed
application’’ for ‘‘by the same inventor’’
for consistency with the changes to the
inventorship provisions of 35 U.S.C.
116. Public Law 98–622, section 104(b),
98 Stat. 3383, 3385 (1984). 35 U.S.C. 120
was finally amended in 1999 to give the
Director greater authority with respect
to setting forth the time period within
which claims to the benefit of a priorfiled application must be submitted by
adding:
No application shall be entitled to the
benefit of an earlier filed application under
this section unless an amendment containing
the specific reference to the earlier filed
application is submitted at such time during
the pendency of the application as required
by the Director. The Director may consider
the failure to submit such an amendment
within that time period as a waiver of any
benefit under this section. The Director may
establish procedures, including the payment
of a surcharge, to accept an unintentionally
delayed submission of an amendment under
this section.
Public Law 106–113, 113 Stat. 1501,
1501A–563 through 1501A–564 (1999).
Thus, 35 U.S.C. 120 has never contained
any language either expressly or
implicitly stating that an applicant may
file an unlimited number of continuing
applications.
Turning to the legislative history of
the 1952 Patent Act, it does not mention
whether an applicant may file an
unlimited number of continuing
applications. The Senate Report simply
documents that ‘‘[s]ections 120 and 121
express in the statute certain matters
which exist in the law today but which
had not before been written into the
statute, and in so doing make some
minor changes in concepts involved.’’ S.
Rep. No. 1979, at 2400 (June 27, 1952).
The House Report contains basically the
same description for 35 U.S.C. 120. The
testimony from hearings before a
Subcommittee of the Committee on the
Judiciary, House of Representatives, for
the 82nd Congress, held on June 13, 14,
and 15, 1951, contains the same
description for 35 U.S.C. 120 and little
else of substance. For example, P.J.
Federico testified: ‘‘Sections 120 and
121 express in the statute certain things
which exist in the law today that have
not been written into the statute, and in
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46809
so doing make some changes in the
concepts involved.’’ Patent Law
Codification and Revision, 82d Cong. 39
(June 13, 1951) (statement of P.J.
Federico, Examiner-In-Chief, United
States Patent Office). Additionally, as
noted in the congressional record for the
1952 Patent Act, 35 U.S.C. 120 codified
existing patent practice. 98 Cong. Rec. 7,
9323 (June 28, 1952 to July 7, 1952)
(statements of Senators Saltonstall and
McCarran). In particular, ‘‘[t]he
provisions set out in section 120 giving
the applicant the benefit of the date of
an earlier application by him for the
same invention constitute a restatement
of the former practice which was not,
however, spelled out in the former law.’’
Charles L. Zinn, Commentary on New
Title 35, U.S. Code ‘‘Patents’’ 2515.
Secondary sources providing
information about 35 U.S.C. 120 also do
not offer guidance with respect to
whether an applicant may file an
unlimited number of continuing
applications. The 1952 Patent Act was
drafted by: (1) P.J. Federico, ExaminerIn-Chief of the Patent Office; (2) Giles S.
Rich, then an attorney of some twenty
years representing the National Council
of Patent Law Associations; (3) Paul
Rose, chairman of the laws and rules
committee of the American Patent Law
Association; and (4) Henry Ashton, a
representative of the coordinating
committee on revision and amendment
of the patent laws of the National
Council of Patent Law Associations. See
generally, Giles S. Rich, Congressional
Intent—Or, Who Wrote the Patent Act of
1952, Patent Procurement and
Exploitation (BNA 1963), reprinted in
Nonobviousness—The Ultimate
Condition of Patentability (John F.
Witherspoon ed., 1983) (hereinafter
‘‘Rich on Congressional Intent’’).
Following enactment, Federico gave a
series of lectures to teach the patent bar
about the new law. Federico’s lectures
were transcribed, consolidated, and
reprinted for many years in title 35,
United States Code Annotated. See 35
U.S.C.A. sections 1 to 110 (1954). The
Federal Circuit has considered
Federico’s Commentary to be ‘‘an
invaluable insight into the intentions of
the drafters of the Act.’’ Symbol I, 277
F.3d at 1366, 61 U.S.P.Q.2d at 1519.
Federico explained that 35 U.S.C. 120
was ‘‘not specified in the old statute but
was developed by decisions of the
courts beginning with a decision of the
Supreme Court of 1864, Godfrey v.
Eames.’’ P.J. Federico, Commentary on
the New Patent Act, 75 J. Pat. &
Trademark Off. Soc’y 3, 192 (Mar. 1993)
(hereinafter ‘‘Federico’s Commentary’’).
After offering this opening statement, he
then set forth the three requirements for
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a continuation application required by
35 U.S.C. 120 and elaborated on the
meaning of each of these three
requirements.
Although Federico’s Commentary did
not expressly mention any limits or
conditions on an applicant’s ability to
file a continuation, it also did not state
that the drafters contemplated allowing
an applicant to file an unlimited
number of continuation applications.
Thus, there is nothing which indicates
that the drafters intended to permit an
applicant to file an unlimited number of
continuing applications. What is more,
Federico described examples of
situations where continuations were
used before the codification of the 1952
Patent Act:
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Continuing applications are utilized in a
number of different situations; for example,
in the case of a requirement to restrict an
application to a single invention a second
application might be filed for the invention
excluded from the the [sic] first application
as explained in connection with the next
section of the law, or a second application
might be filed for a separable invention even
though no requirement was made. A
continuing application with the disclosure
the same as a first application might
sometimes be filed for procedural reasons
with the first application thereafter being
abandoned. And a continuing application
with added subject matter may sometimes be
filed when the inventor has additional details
relating to the invention which he wishes to
disclose in the application; in such cases the
second application would be entitled to the
date of the first application only as to the
common subject matter.
Federico’s Commentary, 5 J. Pat. &
Trademark Soc’y at 194.
Federico’s list, albeit not exhaustive,
suggests that patent practitioners used
continuing applications in more limited
circumstances before the 1952 Patent
Act than today. His first example
focuses on the divisional-type situation
where a continuing (divisional)
application is pursued to protect a
second invention as a result of a
restriction in the initial application. His
third example focuses on a
continuation-in-part situation where a
continuing application is filed to enable
an applicant to add subject matter to the
application. Only his second example
contemplates anything like current
continuation practice where a
continuing application is filed to pursue
protection for an invention disclosed in
the initial application. Federico
nevertheless explained that the first
application to which the continuing
application claims priority is abandoned
after the continuation is filed.
Federico did not include the then-rare
situation in which the first application
issued as a patent and the continuing
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application was filed to pursue further
protection for the invention of the
patent on the first application. At the
time of the 1952 Patent Act the double
patenting doctrine did not permit a
patentee to obtain more than one patent
on patentably indistinct subject matter.
See e.g., Miller v. Eagle Mfg. Co., 151
U.S. 186, 199 (1894) (the ‘‘a patent’’ for
an invention provision does not permit
a patentee to obtain more than one
patent on patentably indistinct subject
matter). Even after the 1952 Patent Act,
the double patenting provision of 35
U.S.C. 101 (‘‘a patent’’ for an invention),
like its predecessor, was interpreted as
precluding a patentee from obtaining
more than one patent on patentably
indistinct subject matter. See, e.g., In re
Ockert, 245 F.2d 467, 469, 114 U.S.P.Q.
330, 332 (C.C.P.A. 1957)). It was not
until 1970 that the Court of Customs
and Patent Appeals held that the double
patenting provision of 35 U.S.C. 101
precluded only ‘‘same invention’’
double patenting (i.e., two patents
containing claims to identical subject
matter) and permitted the use of a
terminal disclaimer to overcome double
patenting unless the application and
patent were claiming identical subject
matter. See In re Vogel, 422 F.2d 438,
441, 164 U.S.P.Q. 617, 622 (C.C.P.A.
1970). Thus, applicants today frequently
do not abandon the initial application,
but instead prosecute the initial
application in parallel with the
continuation application. Because of the
development of terminal disclaimer
practice, the authors of the 1952 Patent
Act would not have contemplated a
continuing application system under
which an applicant would file an
unlimited number of continuing
applications.
Moreover, both before and long after
the 1952 Patent Act applicants did not
file long strings of continuation
applications as is often done today.
Indeed, the Board of Patent Appeals
(Board) in Henriksen attempted to
identify cases involving a series of more
than three patents from cases litigated in
the courts and patents issued by the
Office during the week of April 26,
1966. Ex parte Henriksen, 154 U.S.P.Q.
53, 58–59 (Pat. Off. Bd. App. 1966). The
Board in Henriksen was unable to
isolate a single case involving a priority
chain longer than three applications,
with one exception that the Board
nevertheless dismissed because the case
was quite old, dating to 1867, and
because the factual record was
developed under different law. Id. at 58,
n.2 (referring to the case as ‘‘an antique
curiosity’’). Based on the Board’s
research, it appears that priority chains
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having more than three family members
were actually uncommon, if they
existed at all, before the 1952 Patent
Act. Thus, if anything, the drafters of
the Act, seeking to codify existing
practice, did not envision that an
applicant would use the provisions of
35 U.S.C. 120 to file and maintain an
unlimited number of continuing
applications.
Following the enactment of the 1952
Patent Act, case law has specifically
addressed the imposition of limits or
conditions on continuation practice in
the two cases cited by the comments
(Henriksen and Hogan). In Henriksen
and Hogan, the Court of Customs and
Patents Appeals (C.C.P.A.) overturned
rulings by the Board denying an
applicant’s priority claim to earlier—
filed applications. In Hogan, the Board
sought—without prior warning—to limit
the number of continuations by
restricting the applicant from claiming
priority where the continuation
applications covered a pendency period
of twenty-four years. In Henriksen, the
Board took the position that 35 U.S.C.
120 imposed a per se limit on the
number of permissible continuations.
The changes adopted in this final
rule, however, do not set a limit on the
applicant’s ability to claim the benefit of
a prior-filed application regardless of
the pendency period, nor do they set a
per se limit on the number of continuing
applications that an applicant may file.
See Changes to Practice for Continuing
Applications, Requests for Continued
Examination Practice, and Applications
Containing Patentably Indistinct Claims,
71 FR at 50, 1302 Off. Gaz. Pat. Office
at 1320 (‘‘No limit is placed on the
number of continuing applications.’’).
Applicant may automatically file a first
and second continuation application
and further extend examination by filing
a request for continued examination.
After these options are exhausted an
applicant may also file any number of
third and subsequent continuation
applications as long as the applicant
justifies each filing by a showing that
amendment, argument, or evidence
sought to be entered could not have
been presented earlier. The Henriksen
court objected to the approach taken by
the Board in changing continuing
application practice retroactively. The
Henriksen court objected to the Board
changing the interpretation of the
provisions of 35 U.S.C. 120 and
applying that interpretation to
previously filed applications. The
Henriksen court specifically stated that:
The action of the board is akin to a
retroactive rule change which may have the
effect of divesting applicants of valuable
rights to which, but for the change in Patent
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Office position brought about by the board’s
decision, they were entitled. Nothing appears
in the Patent Office Rules of Practice or the
Manual of Patent Examining Procedure
which sanction such a result.
Henriksen, at 399 F.2d at 261–62, 158
U.S.P.Q. at 231. In Henriksen and
Hogan, the Office had not promulgated
any rules, let alone given the public
notice of, or an opportunity to respond
to, the ad hoc limits imposed. By
contrast, the Office here is pursuing
prospective rule making, having given
the public notice of the changes to
§ 1.78 and an opportunity to comment.
Although the Court of Customs and
Patent Appeals in a ‘‘post script’’
mentioned congressional resolution to
remedy the abuses associated with
continuation applications in both
Henriksen and Hogan, the court seemed
more concerned with the openness of
the process for effecting change.
Henriksen, 399 F.2d at 262, 158
U.S.P.Q. at 231. Here, the Office is
adopting the prospective and open
process missing in Hogan and
Henriksen. The Office has given the
public the opportunity to participate in
shaping the rules for continuing
application practice, received hundreds
of comments, and has modified the
proposed rules in response to those
public comments.
More recent case law demonstrates
that an applicant does not have the right
to file an endless stream of continuing
applications. See Symbol I, supra, In re
Bogese II, 303 F.3d 1362, 64 U.S.P.Q.2d
1448 (Fed. Cir. 2002), and Symbol
Techs. v. Lemelson Medical, Educ. &
Research Found., 277 F.3d 1361, 61
U.S.P.Q.2d 1515 (Fed. Cir. 2002)
(Symbol II). Symbol II, Bogese II and
Symbol I suggest that the Office has the
authority to place reasonable
restrictions and requirements on the
filing of continuing applications, just as
it can place reasonable restrictions and
requirements on the prosecution of
those applications. In addition, the
court in Bogese II expressly 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. Rather, it held that, while the
statute itself provided no limit on the
number of applications that may be copending, ‘‘[n]owhere does [the prior
case law] suggest or imply that the PTO
must allow dilatory tactics or that the
PTO lacks inherent power to prohibit
unreasonable delay in prosecution.’’
Bogese II, 303 F.3d at 1368 n.6, 64
U.S.P.Q.2d at 1452 n.6.
By amending the procedures under
which an applicant may file
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continuation applications, the Office is
seeking to encourage the prompt
presentation of amendment, argument
and evidence in patent prosecution. To
do so, the Office has determined that it
must, at some point, change the
continuing application practice that has
facilitated the past dilatory presentation
of amendment, argument and evidence
that could have been presented earlier.
The changes adopted in this final rule
allow an applicant the flexibility to
choose between filing a continuing
application and filing an appeal, but do
not permit an applicant to persist
indefinitely before the examiner rather
than seek an appeal. Therefore, this
final rule does not preclude an
applicant from obtaining a patent on an
invention when requirements of title 35,
United States Code, are satisfied. As
explained in the Continuing
Applications Proposed Rule, the
changes to § 1.78 will ‘‘make the
exchange between examiners and
applicants more efficient, get claims to
issue faster, and improve the quality of
issued patents.’’ See Changes to Practice
for Continuing Applications, Requests
for Continued Examination Practice,
and Applications Containing Patentably
Indistinct Claims, 71 FR at 50, 1302 Off.
Gaz. Pat. Office at 1320.
Like the statutory provisions for
continuing applications, the statutory
provision for requests for continued
examination, namely, 35 U.S.C. 132(b),
does not provide that an applicant may
file an unlimited number of requests for
continued examination. As discussed
previously, the provisions of 35 U.S.C.
132(b) were added relatively recently by
section 4403 of the AIPA. See Public
Law 106–113, 113 Stat. 1501, 1501A–
560 (1999). 35 U.S.C. 132(b) provides
that:
The Director shall prescribe regulations to
provide for the continued examination of
applications for patent at the request of the
applicant. The Director may establish
appropriate fees for such continued
examination and shall provide a 50 percent
reduction in such fees for small entities that
qualify for reduced fees under section
41(h)(1) of this title.
35 U.S.C. 132(b) (2000). The Office first
implemented the provisions of 35 U.S.C.
132(b) by a final rule in August of 2000
that was preceded by an interim rule in
March of 2000. See Request for
Continued Examination Practice and
Changes to Provisional Application
Practice, 65 FR 50092 (Aug. 16, 2000),
1238 Off. Gaz. Pat. Office 13 (Sept. 5,
2000) (final rule), Changes to
Application Examination and
Provisional Application Practice, 65 FR
14865 (Mar. 20, 2000), 1233 Off. Gaz.
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46811
Pat. Office 47 (Apr. 11, 2000) (interim
rule).
The AIPA is title IV of the Intellectual
Property and Communications Omnibus
Reform Act of 1999 (S. 1948), and was
incorporated and enacted into law as
part of Public Law 106–113. The
Conference Report for H.R. 3194, 106th
Cong., 1st. Sess. (1999), which resulted
in Public Law 106–113, does not
contain any discussion (other than the
incorporated language) of S. 1948. See
H.R. Conf. Rep. No. 106–497, at 37 and
1089–174 (1999). A section-by-section
analysis of S. 1948, however, was
printed in the Congressional Record at
the request of Senator Lott. See 145
Cong. Rec. S14,708–26 (1999) (daily ed.
Nov. 17, 1999). This section-by-section
analysis of S. 1984 provides with
respect to 35 U.S.C. 132(b) that:
Section 4403 amends section 132 of the
Patent Act to permit an applicant to request
that an examiner continue the examination of
an application following a notice of ‘‘final’’
rejection by the examiner. New section 132(a)
authorizes the Director to prescribe
regulations for the continued examination of
an application notwithstanding a final
rejection. The Director may also establish
appropriate fees for continued examination
proceedings, and shall provide a 50% fee
reduction for small entities which qualify for
such treatment under section 41(h)(1) of the
Patent Act.
145 Cong. Rec. S14,718.
35 U.S.C. 132(b) does not specify the
conditions and requirements for
continued examination under 35 U.S.C.
132(b), but rather authorizes the
Director to ‘‘prescribe regulations to
provide for the continued examination
of applications for patent at the request
of the applicant.’’ See 35 U.S.C. 132(b).
There is nothing in 35 U.S.C. 132(b) that
precludes the Office from promulgating
regulations that provide for no more
than a single request for continued
examination under 35 U.S.C. 132(b), or
precludes the Office from requiring that
any request for continued examination
under 35 U.S.C. 132(b) include a
showing as to why the amendment,
argument or evidence could not have
been previously presented.
Comment 260: A number of
comments expressed the opinion that
any limitation on continuations should
be done legislatively by congressional
action and not by the Office via rule
making. Some comments argued that the
Office is usurping the legislative role of
Congress by modifying continuation
practice via regulation, arguing Congress
by inaction tacitly endorses the current
practice, and that the Federal Circuit
has acknowledged that limiting
continuation practice is an issue best
left to Congress, citing Ricoh Co., Ltd. v.
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Nashua, 185 F.3d 884 (Fed. Cir. 1999)
(nonprecedential decision). Some
comments suggested that the Office
should not adopt sweeping changes
unless and until Congress acts to
address the issues through the pending
patent reform legislation, which would
ensure consistency with previous
legislative acts. Some comments argued
that questions regarding the Office’s
statutory authority to make the
proposed changes would likely lead to
litigation and a period of uncertainty
until the matter can be resolved either
judicially or legislatively. Several
comments also suggested that the
proposed changes to continuation
practice will ultimately result in an
even larger backlog at the Office should
the Federal Circuit hold the proposed
changes to be contrary to law, arguing
that applicants in the meantime are left
in a state of limbo until the courts
finally resolve the matter. One comment
argued that the Office’s stated rationale
regarding the public notice function of
claims is not consistent with the law
and is more appropriately addressed by
Congress or the courts. Two comments
also suggested that rules limiting the
number of continuing applications are
unconstitutional because they exceed
the rule making authority of the Office,
thereby suggesting that the Office
should have sought these changes via
legislation, not rule making.
Response: The Office is not usurping
the legislative role of Congress, but
instead acting consistently with the
authority given to the Office by
Congress. Pursuant to 35 U.S.C.
2(b)(2)(A), Congress has given the Office
the authority to establish regulations
that ‘‘govern the conduct of proceedings
in the Office.’’ By the grant of authority
in 35 U.S.C. 2(b)(2)(A), ‘‘Congress [is
understood] to have ‘delegated plenary
authority over PTO practice’ * * * to
the Office.’’ Stevens v. Tamai, 366 F.3d
1325, 1333, 70 U.S.P.Q.2d 1765, 1771
(Fed. Cir. 2004) (quoting Gerritsen v.
Shirai, 979 F.2d 1524, 1527 n.3, 24
U.S.P.Q.2d 1912, 1915 n.3 (Fed. Cir.
1992)). Therefore, the decision to make
these changes via rule making is not an
unconstitutional exercise of the Office’s
rule making authority under 35 U.S.C.
2(b)(2).
Additionally, the provisions of § 1.78,
which concern continuing applications,
govern proceedings in the Office
because they set forth the process by
which an applicant can file a continuing
application. See Changes to Practice for
Continuing Applications, Requests for
Continued Examination Practice, and
Applications Containing Patentably
Indistinct Claims, 71 FR at 50, 1302 Off.
Gaz. Pat. Office at 1320 (noting that
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continuation practice is ‘‘a procedural
device that permits an applicant to
amend his application after rejection
and receive examination of the
‘amended’ (or new) application’’) (citing
In re Bogese I, 22 U.S.P.Q. 2d at 1824).
Specifically, under revised § 1.78, an
applicant may automatically file a first
and second continuing application and
then may file any number of third and
subsequent continuing applications as
long as the applicant justifies each filing
by a showing as to why the amendment,
argument or evidence sought to be
entered could not have been previously
presented. Furthermore, as an
alternative, an applicant may choose to
file an appeal when confronted with a
rejection that he or she feels is
improper. The changes adopted in this
final rule do not impede or block an
applicant’s statutory right to a patent.
The Office is responsible for the
granting and issuing of patents and has
the authority and responsibility to
establish regulations that govern the
conduct of proceedings in the Office
and facilitate and expedite the
processing of patent applications. See
35 U.S.C. 2(a)(1) and (b)(2). The Office
has the responsibility to take
appropriate action in the near term to
improve patent quality and pendency
issues rather than wait for possible
legislative solutions to these issues. The
Office is implementing the rule changes
via the rule making procedures set forth
in 35 U.S.C. 2(b)(2)(A) and 5 U.S.C. 553
by publishing the proposed rules in the
Federal Register and giving the public
the opportunity for comment. Thus, the
Office is acting under the broad rule
making authority delegated to it by
Congress. Were the Office to sit idle and
not set forth procedures to govern a
continuing application practice that has
become problematic, the Office would
be ignoring the responsibility imposed
on it by Congress in 35 U.S.C. 2(b)(2)(A).
Finally, inaction by Congress is not a
tacit endorsement of the current
continuing application practice (see
United States v. Price, 361 U.S. 304,
310–11 (1960) (‘‘nonaction by Congress
affords the most dubious foundation for
drawing positive inferences’’)), and the
Federal Circuit has cautioned against
reliance upon nonprecedential
decisions such as Ricoh Co., Ltd. v.
Nashua (see Symbol I, 277 F.3d at 1368,
61 U.S.P.Q.2d at 1520, declining to
consider the nonprecedential opinions
Ricoh Co., Ltd. v. Nashua and Bott v.
Four Star Corp., 848 F.2d 1245 (Fed.
Cir. 1988)).
Comment 261: A few comments
suggested that patent reform legislation
indicates that the Office does not have
the authority to limit the number of
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continuing applications, citing The
Patent Reform Act of 2005, H.R. 2795,
109th Cong. § 8 (2005). One comment
specifically suggested that Congress’
decision to remove authority to limit
continuations from later patent reform
legislation indicates that Congress is
still debating the issue and that the
Office does not have that authority. One
comment suggested that Congress’
intent is not to limit the number of
applications that an applicant may file
or the number of inventive concepts that
an application may pursue, because that
would stifle inventors’ rights to protect
their inventions.
Response: The Office notes that
legislation was pending before the 109th
Congress (The Patent Reform Act of
2005) which, as introduced on June 8,
2005, contained a provision (section 8)
that expressly authorized the Office to
limit certain continuing applications.
The Office also notes that the House
Subcommittee on Courts, the Internet,
and Intellectual Property held a hearing
on September 15, 2005, on a proposed
substitute that did not contain such a
provision. No further action, however,
was taken on this legislation by the
109th Congress. The Office does not
consider this course of events as
constituting any evidence of
‘‘congressional intent’’ because the
legislation at issue (The Patent Reform
Act of 2005) was not voted on by either
House of Congress, or even a Committee
or Subcommittee of either House of
Congress. Thus, this change between the
legislation as introduced and as
amended is at most evidence of the
intent of a drafting committee. In any
event, the 109th Congress did not enact
changes to the provisions of 35 U.S.C.
2(b), 120, 121, 131, 132, or 365. Rather,
the provisions at issue were enacted by
earlier Congresses. The views of a
subsequent Congress have little
relevance in determining the intent of
an earlier Congress. See United States v.
Southwestern Cable Co., 392 U.S. 157,
170 (1968) (‘‘The views of one Congress
as to the construction of a statute
adopted many years before by another
Congress have very little, if any,
significance.’’). This is especially true
when the gap is as broad as the one
here, spanning more than half a century
(i.e., 1952–2005).
Furthermore, this final rule does not
stifle inventors’ rights because it
provides inventors with ample
opportunity to present their claims and
secure protection for their inventions. In
fact, this final rule encourages inventors
to fully disclose and fully claim their
inventions promptly, on first filing.
Applicants may file two continuation or
continuation-in-part applications and a
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request for continued examination in an
application family, without any
justification and may file additional
continuing applications or requests for
continued examination on a showing
that the amendment, evidence or
argument could not have been earlier
presented. Finally, this final rule does
not affect the patentability requirement
of title 35, United States Code.
Comment 262: A few comments
asserted that the doctrine of prosecution
laches, originally set forth by the
Federal Circuit in Bogese II, and more
recently endorsed by the Federal Circuit
in Symbol II, does not extend the
Office’s authority to deny benefit claims
to legitimate continuing applications.
Response: The Office is not using the
doctrine of prosecution laches as a
sword to sever an applicant’s priority
claim. Nor are the changes adopted in
this final rule an attempt to codify
Bogese II or to combat extreme cases of
prosecution laches. See Changes to
Practice for Continuing Applications,
Requests for Continued Examination
Practice, and Applications Containing
Patentably Indistinct Claims, 71 FR at
50, 1302 Off. Gaz. Pat. Office at 1320.
Applicants and practitioners have a
duty to refrain from submitting an
application or other filing to cause
unnecessary delay or needless increase
in the cost of prosecution before the
Office. See § 10.18(b)(2). Applicants also
have a duty throughout prosecution of
an application for patent to make a bona
fide attempt to advance the application.
See Changes to Practice for Continuing
Applications, Requests for Continued
Examination Practice, and Applications
Containing Patentably Indistinct Claims,
71 FR at 49, 1302 Off. Gaz. Pat. Office
at 1319. In Symbol I, Symbol II, and
Bogese II, the Federal Circuit recognized
that an applicant has a duty of good
faith in advancing the prosecution of an
application. The Federal Circuit
likewise held that an applicant does not
have the right to file an endless stream
of continuing applications in order to
prolong prosecution for the purpose of
gaming the system. That is, applicants
should not rely on an unlimited number
of continuing applications to either
correct deficiencies in the claims and
disclosure, or to delay the conclusion of
examination in a calculated manner. By
requiring applicants to show why the
amendment, argument, or evidence
sought to be entered in a third or
subsequent continuing application or
second or subsequent request for
continued examination could not have
been presented earlier, the Office is
ensuring that applicants are not
unnecessarily prolonging prosecution of
the application before the Office.
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The possibility that, without
justification, a string of continuing
applications could last as long as two
decades has created inefficiencies and
opportunities for the delay of
proceedings before the Office that, as a
practical matter, can only be addressed
by general rule making. Requiring that,
at a given stage in the continuing
application process, an applicant must
make an affirmative showing of need is
necessary for the Office to assure an
effective examination process. Relying
only on a case-by-case approach to
address the most egregious cases of
abuse would not be sufficient when
continued examination filings (other
than divisional applications) have
grown from less than twelve percent of
total filings in 1980 to over twenty-nine
percent of total filings in fiscal year
2006. The Federal Circuit specifically
indicated in Bogese II that the Office has
the inherent authority to set reasonable
deadlines and requirements for the
prosecution of patent applications. See
Bogese II, 303 F.3d at 1368 n.6, 64
U.S.P.Q.2d at 1452 n.6 (‘‘The PTO is the
administrative agency that is
‘responsible for the granting and issuing
of patents * * *’ 5 U.S.C. 2 (2000). Like
other administrative agencies, the PTO
may impose reasonable deadlines and
requirements on parties that appear
before it. The PTO has inherent
authority to govern procedure before the
PTO, and that authority allows it to set
reasonable deadlines and requirements
for the prosecution of applications.’’).
Thus, consistent with the Office’s
inherent authority to set reasonable
deadlines and requirements for the
prosecution of applications, and to
improve the effectiveness of the patent
examination process, the Office is
revising the rules of practice to require
that an applicant make an affirmative
justification for a third or subsequent
continuing application or second or
subsequent request for continued
examination.
Comment 263: Two comments argued
that the proposed rules prevent an
applicant from filing even a single
continuation application of an
application in which a request for
continued examination was previously
filed, thereby eliminating access to the
benefits conferred by 35 U.S.C. 120.
Response: The Office has modified
the proposed changes such that an
applicant is permitted under this final
rule to file a first and second
continuation application or
continuation-in-part application
without any justification, and is also
permitted to file a request for continued
examination in any one of the initial
application, the first continuing
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application, or the second continuing
application without any justification.
Thus, under § 1.78 as adopted in this
final rule, an applicant may file two
continuation applications without any
justification, even if a request for
continued examination was previously
filed in the initial application.
Comment 264: Several comments
suggested that the definition of a
‘‘divisional application,’’ as specified in
proposed § 1.78, is inconsistent with 35
U.S.C. 121 because, under proposed
§ 1.78, a divisional application is
limited to only one application, whereas
35 U.S.C. 121 permits applicants to file
a divisional application for each
invention restricted out. Another
comment suggested that 35 U.S.C. 121
permits applications that are both a
divisional application and a
continuation-in-part application and
any rule to the contrary is void.
Response: This final rule defines a
‘‘divisional application’’ as an
application ‘‘that discloses and claims
only an invention or inventions that
were disclosed and claimed in a priorfiled application, but were subject to a
requirement to comply with the
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 and not elected
for examination and not examined in
any prior-filed application.’’ See
§ 1.78(a)(2). This definition is consistent
with 35 U.S.C. 121, which states that the
divisional application resulting from a
restriction requirement is ‘‘entitled to
the benefit of the filing date of the
original application,’’ where the
‘‘original application’’ within the
context of 35 U.S.C. 121 is the
application from which the divisional
application has been restricted.
Additionally, §§ 1.78(a)(2) and (d)(1)(ii)
permit there to be as many divisional
applications as there are inventions
restricted out of the prior-filed
application. Therefore, the changes
adopted in this final rule allow an
applicant to file a plurality of divisional
applications resulting from a restriction
requirement in the prior-filed
application so that the applicant may
obtain examination of the claims that
were withdrawn from consideration in
the prior-filed application due to the
requirement for restriction. Section
1.78(d)(1)(ii) as adopted in this final
rule also does not require that any
divisional application be filed during
the pendency of a single prior-filed
application, but permits a divisional
application to be filed as long as it
meets the copendency requirement of 35
U.S.C. 120. Therefore, the definition of
divisional application set forth in
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§ 1.78(a)(2) is consistent with 35 U.S.C.
121.
This final rule also permits an
applicant to file an application that is in
substance both a divisional application
and a continuation-in-part application.
Specifically, § 1.78(d)(1)(i) as adopted in
this final rule permits an applicant to
file an application directed both to an
invention that was disclosed and
claimed, but not elected for
examination, in a prior-filed
application, and an invention or subject
matter that was not described or
claimed in the prior-filed application.
Such an application would be subject to
the conditions applicable to other
applications that disclose subject matter
that was not disclosed in the prior-filed
application (i.e., the conditions
applicable to continuation-in-part
applications). This is, because such
application is not limited to inventions
that were subject to a requirement for
restriction by the Office in the priorfiled application, but instead includes
subject matter not disclosed in the priorfiled application and thus was not
subject to any requirement for
restriction by the Office in any priorfiled application, it is a continuation-inpart application rather than a divisional
application. The provisions of
§ 1.78(d)(1)(ii) apply to divisional
applications that disclose and claim
only an invention or inventions that
were disclosed and claimed in a priorfiled application, but were subject to a
requirement to comply with the
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 and not elected
for examination and not examined in
any prior-filed application.
Comment 265: A number of
comments argued that requiring an
applicant to designate a limited number
of (ten) representative claims for
examination is contrary to statute,
specifically, 35 U.S.C. 131 and 112, as
well as contrary to In re Wakefield, 422
F.2d 897, 164 U.S.P.Q. 636 (C.C.P.A.
1970), because the rules limit an
applicant’s ability to claim the full
scope of his or her invention and that
it is the applicant, not the Office, who
should determine the proper number of
claims that particularly point out and
distinctly claim the subject matter that
applicants regard as their invention.
Two comments argued that the courts
have not recognized any statutory
authority for rejecting claims as being
‘‘unnecessary,’’ citing Wakefield where
the court held that the forty claims
presented in the application at issue
were not unduly multiplied. One
comment also argued that Congress
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intended for each claim to be examined
on the merits when it enacted 35 U.S.C.
112, ¶ 2, citing In re Weber, 580 F.2d
455, 198 U.S.P.Q. 328 (C.C.P.A. 1978),
and one comment suggested that
limiting the number of claims to be
examined is contrary to 35 U.S.C. 131
because the invention is defined by all
of the claims. A few comments
suggested that the Office has a duty to
examine all of the claims in a patent
application when the applicant has paid
the search, examination, and claim fees
because Congress has authorized
dependent claims and specified charges
for those claims, and the Office is
required to examine all claims, not just
the designated ones. A number of
comments argued that the Office lacks
the statutory authority under 35 U.S.C.
102, 103, 131, and 132 to presume that
claims are patentably indistinct by
requiring the applicant to designate
representative claims from among
copending, related applications. Finally,
one comment argued that the patent
statutes do not permit the Director to
examine part of an application or less
than the whole invention, and that the
Director does not have statutory
authority under 35 U.S.C. 2(b)(2) or 112,
¶ 2, to cause an application to be
examined only if it does not result in
too much work for the examiner, and
then if it does, to shift the burden to the
applicant to do the search and the
examination.
Response: The Office notes the
concerns expressed by the public
comment concerning the proposed
‘‘representative claims’’ examination
approach. The Office also recognizes
numerous comments suggested a claim
threshold in place of representative
claims. The Office took these comments
into consideration and is not
implementing a ‘‘representative claims’’
examination approach. Instead, this
final rule provides that if the number of
independent claims is greater than five
or the number of total claims is greater
than twenty-five (a strategy based upon
whether an application contains more
than a given number of independent
and total claims), the applicant must
provide additional information about
the claims to the Office in an
examination support document to
enable the Office to efficiently and
effectively examine the application.
Thus, the changes adopted in this
final rule do not limit the number of
claims that will be examined in an
application because an applicant is
always free to file as many claims as
necessary to adequately protect the
invention provided that applicant files
an examination support document
before the first Office action on the
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merits of the application. This final rule
simply provides that an applicant who
puts a disproportionate burden on
examination by presenting more than
five independent claims or twenty-five
total claims must provide additional
information to the Office to facilitate
effective examination of the application.
The Office, in turn, will ensure that
every claim submitted in an application
is examined prior to the issuance of a
patent. Neither 35 U.S.C. 112 nor 131
provides that an applicant has an
unfettered right to submit an unlimited
number of claims. In contrast to
Wakefield, where the Office declined to
examine certain claims due to undue
multiplicity, the changes adopted in this
final rule do not limit the number of
claims that will be examined in an
application because an applicant is
always free to file as many claims as
necessary to adequately protect the
invention.
While this final rule does not
implement a ‘‘representative claims’’
examination approach, that proposal
approach was simply a mechanism to
focus the examination process and in no
way impacted the merits of the
examination. Even under a
‘‘representative claims’’ approach, the
Office would examine and determine
the patentability for every claim in an
application before issuing a patent on
the application. Thus, a ‘‘representative
claims’’ approach would have altered
the examination process (i.e.,
determining when examination of
certain claims takes place), but would
not have changed the merits
requirements of examination (i.e., the
statutory standards of patentability).
Comment 266: A number of
comments suggested that the rationale
presented in the Claims Proposed Rule
is contrary to 35 U.S.C. 2(b), 102, 131
and 132, in that the Office is responsible
for granting and issuing patents. These
comments stated that the examiner
bears the initial burden of presenting a
prima facie case of unpatentability, that
the search is not the duty of the
applicant but rather is the Office’s
responsibility under 35 U.S.C. 131, and
the rules are inconsistent with the new
fee structure which contemplates filing
of additional claims with higher fees. A
few comments suggested that the
examination support document
requirement improperly shifts the
burden of assessing patentability to an
applicant when that burden resides with
the Office in the first instance under 35
U.S.C. 102. A few comments asserted
that requiring an applicant to submit an
examination support document
constitutes an abdication of an
inherently governmental function,
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moves the United States one step closer
to a registration system, and places an
affirmative duty on an applicant to
perform searches, ultimately exposing
the applicant to a greater risk of an
inequitable conduct challenge.
Response: The changes adopted in
this final rule do not mandate the
submission of an examination support
document. That is, an examination
support document is only required if an
applicant chooses to present more than
five independent claims or more than
twenty-five total claims for examination
in an application. If an applicant will
not present more than five independent
claims and no more than twenty-five
total claims for examination in any
particular application, an examination
support document is not required.
The requirement for submission of an
examination support document is not an
abdication of the examination function,
or a shifting of the burden to applicant
to make a prima facie case of
entitlement to a patent. The
examination support document simply
requires the applicant to provide
additional information to the Office so
that the Office may more effectively
conduct a substantive examination of
the application. The Office will examine
and determine patentability for every
claim in an application before issuing a
patent.
Comment 267: A few comments stated
that the examination support document
requirement transfers the costs of
examination to applicants when
applicants already pay filing fees.
Response: The changes to § 1.75(b) do
not impose any additional Office fees on
the applicant. The changes to § 1.75(b)
may increase costs for an applicant who
presents more than five independent
claims or twenty-five total claims in an
application. The Office, however,
considers it appropriate for applicants
who place a disproportionate burden on
examination by presenting more than
five independent claims or twenty-five
total claims to bear these additional
costs to facilitate effective examination
of the application. In any event, the
Office’s actual cost of examining an
application for patent far exceeds the
‘‘filing fees’’ (i.e., the filing, search,
examination, excess claims, and
application size fees) charged to
applicant. See United States Patent and
Trademark Office Performance and
Accountability Report Fiscal Year 2005
at 23 (2005) (Patent Efficiency Table).
Comment 268: Several comments
objected to the rebuttable presumption
in § 1.78(f)(2) as being contrary to the
judicial precedent in other areas of
patent law such as obviousness and
enablement. One comment suggested
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that the patentably indistinct
presumption is contrary to 35 U.S.C.
101, which allows a ‘‘patent on an
invention.’’ One comment objected to
the rebuttable presumption as being
contrary to the patent statute that states
in part that ‘‘a person is entitled to a
patent unless * * *. ’’ The comment
suggests that these words in the patent
statute evidence that the burden is on
the Office to establish a prima facie case
of unpatentability. A number of
comments stated that as part of its
statutory duty to determine
patentability, the Office has the burden
to determine patentable distinctness,
and even under the conditions of
§ 1.78(f)(2), it is improper to shift that
burden to applicants. Further, some of
the comments argued that the
patentably indistinct presumption is
contrary to case law because the Federal
Circuit has repeatedly held that the
burden of showing that the claims
recited in copending, related
applications are patentably indistinct
rests with the Office, citing In re Kaplan,
789 F.2d 1574, 229 U.S.P.Q. 678 (Fed.
Cir. 1986); In re Longi, 759 F.2d 887, 225
U.S.P.Q. 645 (Fed. Cir. 1985); In re
Epstein, 32 F.3d 1559, 31 U.S.P.Q.2d
1817 (Fed. Cir. 1994); In re Oetiker, 977
F.2d 1443, 24 U.S.P.Q.2d 1443 (Fed. Cir.
1992); and In re Piasecki, 745 F.2d 1468,
223 U.S.P.Q. 785 (Fed. Cir. 1984).
Response: The presumption of
patentably indistinct claims appearing
in multiple applications as set forth in
§ 1.78(f)(2) of this final rule is not
contrary to the cited statutes or case
law. Even if the applicant shows that
the claims in question are patentably
distinct from each other, it does not
mean that the claims are also patentable
over the prior art. That is, the rebuttable
presumption is not a merits
determination of patentability. It is
simply a procedural tool requiring the
applicant to help focus and consolidate
the examination process.
When the Office is faced with
multiple applications containing
overlapping subject matter, it is in the
best interest of the applicant, the Office,
and the public to ensure that patentably
indistinct claims are identified early in
the examination process. The applicant
is responsible for drafting the
application, including the claims, and is
in the best position to identify indistinct
claims spanning across multiple
applications so that they can be
consolidated in a single application, or
so that the Office will at least be alerted
to evaluate them for double patenting.
Further, requiring the applicant to ferret
out which claims are indistinct from
each other is procedural in nature and
assists the Office with processing
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multiple related applications, but
should not be confused with a
patentability determination on the
merits. Such a procedural requirement
is not contrary to statute or case law, but
is fully within the Office’s authority to
regulate the procedure of examination.
Comment 269: One comment
suggested that 35 U.S.C. 116 provides
for the filing of continuation
applications and the Office does not
have the authority to make changes.
Response: 35 U.S.C. 116 provides for
joint inventorship (35 U.S.C. 116, ¶ 1),
application for patent by the remaining
inventors in the absence of a joint
inventor (35 U.S.C. 116, ¶ 2), and
correction of inventorship in an
application for patent (35 U.S.C. 116,
¶ 3). 35 U.S.C. 116 does not pertain to
continuing applications.
Comment 270: One comment
suggested that the changes to § 1.114
violate 35 U.S.C. 133 because the Office
would be assuming authority to hold an
application ‘‘abandoned’’ even when a
bona fide reply was timely filed.
Response: 35 U.S.C. 133 provides
that: ‘‘[u]pon failure of the applicant to
prosecute the application within six
months after any action therein, of
which notice has been given or mailed
to the applicant, or within such shorter
time, not less than thirty days, as fixed
by the Director in such action, the
application shall be regarded as
abandoned by the parties thereto, unless
it be shown to the satisfaction of the
Director that such delay was
unavoidable.’’ An applicant’s reply in
prosecuting an application under a final
Office action is limited to either
appealing in the case of rejection of any
claim (§ 41.31 of this title), or amending
the claims as specified in § 1.114 or
1.116. See § 1.113(a). The admission of,
or refusal to admit, any amendment
after final rejection (§ 1.116) will not
operate to save the application from
abandonment. See § 1.135(b). Therefore,
a reply to a final Office action other than
an appeal, an amendment after final
(§ 1.116) that places the application in
condition for allowance, or a request for
continued examination in compliance
with § 1.114 (including the requirement
that any second or subsequent request
for continued examination be
accompanied by a grantable petition
under § 1.114(g)) is not a bona fide reply
to the final Office action.
Comment 271: A few comments
suggested that the Office has a duty to
examine all of the claims in a patent
application when the applicant has paid
the search, examination, and claim fees.
The comments also argued that because
Congress has authorized dependent
claims and specified charges for those
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claims, the Office is required to examine
all claims, not just the designated ones.
One comment also argued that the
recently revised fee structure was put in
place based on an allocation of
resources for search workload on the
examiner and therefore the Office is
obligated to perform the search and
cannot shift the burden to the applicant.
Response: The Office recognizes the
concern expressed in the public
comments that the ‘‘representative
claims’’ examination approach could be
perceived as allowing claims to be
issued that had not been fully
examined. The Office is not adopting
the ‘‘representative claims’’ examination
approach in this final rule. This final
rule instead provides that an applicant
who puts a disproportionate burden on
examination by presenting more than
five independent claims or twenty-five
total claims must provide an
examination support document to the
Office before the first Office action on
the merits to facilitate effective
examination of the application. An
applicant who presents five or fewer
independent claims and twenty-five or
fewer total claims need not provide an
examination support document or other
additional information to the Office. In
either situation, the Office will ensure
that every claim submitted in an
application is examined prior to the
issuance of a patent.
Further, neither the excess claim fees
nor the search fee is directly
proportional to actual agency costs. The
fee provisions are not a restriction on
the agency’s ability to promulgate
reasonable regulations governing the
application process.
Comment 272: A few comments stated
that the rules are arbitrary, capricious,
and represent an overly aggressive
interpretation of statutes, are beyond the
power of the Office permitted under 35
U.S.C. 2(b)(2), expose the Office to legal
action under 5 U.S.C. 706(2)(c), and may
require the Office to reimburse attorney
fees under the Equal Access to Justice
Act.
Response: The changes adopted in
this final rule are not arbitrary,
capricious, an overly aggressive
interpretation of the patent statute, or
beyond the power of the Office rule
making authority under 35 U.S.C.
2(b)(2) for the reasons previously
discussed in detail. Concisely put, the
Office considers the changes being
adopted in this final rule to be an
appropriate exercise of its rulemaking
authority under 35 U.S.C. 2(b)(2). See,
e.g., Lacavera v. Dudas, 441 F.3d 1380,
77 U.S.P.Q.2d 1955 (Fed. Cir. 2006),
Star Fruits S.N.C. v. United States, 393
F.3d 1277, 73 U.S.P.Q.2d 1409 (Fed. Cir.
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2005), and Arnold P’ship v. Dudas, 362
F.3d 1338, 70 U.S.P.Q.2d 1311 (Fed. Cir.
2004).
J. Changes to Internal Practice
Comment 273: A number of
comments expressed support for the
elimination of the first Office action
final practice, and one comment
encouraged the Office to adopt a
practice of no first action final rejection
in any continuing application where the
factual record has changed. A number of
comments, however, stated that a first
action final may be appropriate where
no effort has been made to advance
prosecution, e.g., by adding to the
factual record with additional evidence
or amendments to the claims. One
comment supported developing rules
whereby an applicant’s failure to
prosecute could result in the close of
prosecution unless adequate and
sustained progress is being made in the
application.
Response: This proposed change has
not been adopted. As discussed
previously, this final rule, however,
provides that an applicant may file two
continuing applications plus a request
for continued examination in any one of
the initial application or two continuing
applications (rather than only one
continuing application or request for
continued examination as proposed)
without any showing. Therefore, the
Office is retaining its first action final
rejection practice.
Comment 274: Several comments
recommended that the Office develop
procedures whereby an Office action
could not be made final until the
examiner was applying the exact same
rejection as in the previous Office
action, and/or to encourage the Office to
issue non-final second Office actions.
Several comments suggested reforming
examination procedures so that the
examiner does not issue a final rejection
as long as prosecution is advancing.
Response: The practice suggested by
the comments would unduly prolong
prosecution, which is counter to the
Office’s goal for reducing pendency.
Thus, the Office and the applicants need
to be efficient to reduce the backlog of
applications and most importantly, to
meet the public notice function of
patent claims as quickly as possible.
Further, as one comment recognized, a
practice under which an Office action
could not be made final until the
examiner was applying the exact same
rejection would result in an applicant
being able to avoid a final Office action
by continually amending the claims.
Comment 275: A number of
comments proposed that the Office
permit amendments after final as matter
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of right, and assess a modest fee for the
added examination burden. Most of
these comments are in the context of a
graduated credit system for continuation
filings, with more credit being given
during the first application and fewer
‘‘counts’’ or less time given in
subsequent continuations. Several
comments proposed that applicants
should be permitted to respond to any
new ground of rejection made in the
final Office action without having to file
a continuation application. Several
comments suggested that the examiner
should not make an Office action final
whenever new art is applied, and one
comment suggested an examiner must
explain why the new art could not have
been located during the first search.
Response: To permit entry of
amendments after final as a matter of
right would unduly delay prosecution.
An applicant may file an amendment to
place the application in condition for
allowance or in better form for
consideration on appeal under § 1.116.
Furthermore, a new ground of rejection
is only permitted in a final Office action
under the limited circumstances. As
discussed previously, in this final rule,
the Office is revising second action final
practice to provide that a second or any
subsequent Office action on the merits
may be made final, except when the
Office action contains a new ground of
rejection that is not: (1) Necessitated by
applicant’s amendment of the claims,
including amendment of a claim to
eliminate unpatentable alternatives; (2)
necessitated by applicant’s providing a
showing that a claim element that does
not use the phrase ‘‘means for’’ or ‘‘step
for’’ is written as a function to be
performed and does not otherwise
preclude application of 35 U.S.C. 112,
¶ 6; (3) based on information submitted
in an information disclosure statement
filed during the period set forth in
§ 1.97(c) with the fee set forth in
§ 1.17(p); (4) based upon double
patenting (statutory or obviousness-type
double patenting); or (5) necessitated by
applicant’s identification of the claim or
claims in a continuation-in-part
application for which the subject matter
is disclosed in the manner provided by
35 U.S.C. 112, ¶ 1, in the prior-filed
application. Since the applicant is often
adding limitations that raise new issues
that would require further consideration
and/or search, it has long been the
Office practice to make the action final
at this point. Allowing an expanded
practice in this area would undermine
the goal of reducing patent pendency.
Comment 276: A number of
comments suggested providing
examiners with additional time to
consider replies after final rejection and
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to provide a new full evaluation of the
content of those replies.
Response: No changes in after final
practice are planned at this time. Under
current practice, examiners consider
any requests for reconsideration
submitted after final rejection in
accordance with § 1.116.
Comment 277: A number of
comments suggested that the Office
require a patentability review
conference with others, similar to the
pre-appeal conference proceeding, prior
to an Office action being made final, in
order to address the problem of
improper final Office actions and to
expedite indication of allowable subject
matter. One comment noted that the
statistics show that less than half of
applications that had a pre-appeal
conference are going forward to appeal
and indicate that many improper finals
are being made. One comment stated
that a supervisor should review all first
Office actions in a second request for
continued examination to determine if
prosecution is proper.
Response: The Office recognizes that
it is important to make sure the final
Office action is proper. The pre-appeal
brief conference program is still an
ongoing pilot program. The results of
that program will help to determine
whether the Office replaces it with, or
adds, a ‘‘pre-final conference’’ as
suggested. Further, the pre-appeal brief
conference program is designed for
situations in which the applicant
believes that the rejections of record are
clearly not proper (and is not designed
for ‘‘close cases’’). See New Pre-Appeal
Brief Conference Program, 1296 Off.
Gaz. Pat. Office at 67. Thus, data
collected during pre-appeal brief
conferences (e.g., with respect to reopening rates) cannot validly be
extended to all applications.
In addition, the Office has an ongoing
‘‘in process review’’ of applications to
identify problems and trends. Each
Technology Center develops ongoing
action plans and training each year to
address the problems/trends found via
the ‘‘in process reviews’’ and the preappeal brief conferences. Additionally,
the Office will reinforce, during the
training on this final rule, issues such as
proper final rejection practice, the
importance of making proper final
rejections, and the importance of
indicating allowable subject matter at
the earliest possible time. Furthermore,
if an applicant believes a rejection was
improperly made final, applicant may
seek review by filing a petition under
§ 1.181.
Comment 278: A number of
comments stated that the Office should
continue and expand ongoing efforts to
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hire and retain patent examiners. One
comment suggested that ‘‘[h]iring
should be the centerpiece of the Office’s
strategy.’’ A number of comments stated
that the Office has not provided
sufficient evidence to show why the
Office could not solve the backlog
problem by hiring more examiners. One
comment argued that the Office should
have sufficient funding to pay for
additional resources (e.g., more
examiners) needed to examine the
backlog of applications in view of the
recent increase in patent fees. One
comment stated that the Office has not
supported its assertion that it cannot
hire enough examiners to reduce
pendency. Another comment stated that
the Office should seriously consider
hiring retired or former examiners or
patent practitioners to be trainers or to
assist examiners. In particular, one
comment stated retired examiners
should be hired to work on specific big
applications to reduce the burden on
examiners. Another comment stated the
Office should hire ‘‘generalists’’ instead
of ‘‘ultra specialized advanced degree
scientists and engineers’’ to obtain more
flexibility in the workforce.
Response: Hiring additional
examiners remains an important
component of the Office’s overall plan
to reduce pendency of patent
applications. The Office is committed to
the hiring of as many examiners as
resources permit. The ability to hire
qualified new examiners is affected by
many components, such as budget, the
economy, the availability of scientists
and engineers, and the ability to absorb
and train new employees. Furthermore,
it will take many years to develop an
experienced patent examining corps of
sufficient size to address the growing
backlog of unexamined patent
applications. The Office recognizes that
hiring alone will not reduce the backlog
of pending applications in the near
future. As a result, the Office is actively
seeking ways for retaining more
employees, such as retention bonuses.
The Office continues to become more
efficient by implementing many
initiatives, such as the current
regulatory changes, to reduce pendency.
The Office plans to hire 1,200
examiners each year for the next five
fiscal years. See United States Patent
and Trademark Office Fiscal Year 2008
President’s Budget at 20–21 (2007). This
will result in the number of patent
examiners increasing from 4,779 at the
end of fiscal year 2006 to 7,118 at the
end of fiscal year 2012 (accounting for
attrition). See id. Even with this increase
in the size of the Patent Examining
Corps, the Office anticipates that
average pendency to first Office action
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will increase from 22.6 months in fiscal
year 2006 to 28.9 months in fiscal year
2012, and that average total pendency
will increase from 31.1 months in fiscal
year 2006 to 38.6 months in fiscal year
2012. See id.
Comment 279: A number of
comments stated that the current
examiners’ production system in the
Office encourages the filing of
continuing applications and requests for
continued examination. In addition,
several comments stated that the
production system also encourages more
restrictions and unwillingness to
consider any after-final amendment.
The comments suggested several
alternative accounting schemes to
encourage examiners to examine more
non-continuing applications and
provide more thorough first Office
actions, including giving less credit for
work done in continuation applications,
divisional applications and requests for
continued examination, giving
examiners more credit for first Office
actions as opposed to disposals, giving
examiners credit for claims disposed as
opposed to applications disposed, or
giving examiners credit based on
numerous application factors such as
specification length, technology
complexity, number and complexity of
the claims, and pertinence of prior art
submitted. One comment suggested only
having team examination and
production goals. One comment
suggested the Office should use a
performance system, such as the system
recently established by the Department
of Defense. One comment suggested that
examiners should not have any time
constraints. Another comment stated the
hours per disposal should be decreased
to improve production. Several
comments argued that timesaving for
examiners needs to be tied with an
agreement with the Patent Examining
Corps to increase productivity and
decrease pendency due to the amount of
time saved in light of the proposed
changes to the examination of claims.
One comment argued the rule changes
will likely result in less time for the
examiners and it is unclear how this
will result in more thorough and
reliable examination. The comments
strongly suggested that any changes to
the examiners’ production system
should be transparent to the public to
install public confidence in such
changes.
Response: The Office expects to gain
a more focused quality examination as
a result of these rule changes. It is
expected that these rules will make the
exchange between the examiner and
applicants more efficient and effective.
Issued patents will be examined more
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thoroughly, making them easier to
evaluate, enforce and litigate.
Furthermore, the patents will issue
sooner, giving the public a clearer
understanding of what is patented. In
any event, the Office is in the process
of reassessing patent examiner
production goals, appraisal plans, and
award systems. Absent significant
changes to the patent examination
process, the Office does not consider it
reasonable to expect that changes to
patent examiner production goals,
appraisal plans, and award systems
alone will be sufficient to address the
growing backlog of unexamined patent
applications while maintaining a
sufficient level of quality.
Comment 280: Several comments
stated that examiners should be given
more production time for certain
situations, such as for applications with
more than twenty claims, for
consideration of over fifteen to twenty
cited references and for responding to
after-final amendments. One comment
stated that primary examiners should be
given more time to review a junior
examiner’s work.
Response: Changes to patent examiner
production goals are beyond the scope
of the proposed changes to the rules of
practice. Therefore, whether examiners
should be given more production time
for certain situations is not discussed in
this final rule. An examination support
document in compliance with § 1.265
will assist the examiner in the
examination of an application that
contains more than five independent
claims or more than twenty-five total
claims, resulting in a more effective and
focused examination. For example,
citing the most relevant references and
identifying all of the limitations of each
of the claims that are disclosed by the
references will help the examiner to
consider the most relevant prior art
more thoroughly. The Office already
provides time for training junior
examiners and reviewing their work.
Furthermore, a sampling of ‘‘in process
reviews’’ for each Technology Center
helps identify training needs in a
focused manner. The Office of Patent
Training is thoroughly preparing each
new examiner in proper practice and
procedure with access to a dedicated
trainer for the first eight months; after
that, the examiner is placed in a
traditional setting with proper
supervision and review of his or her
work.
Comment 281: A number of
comments suggested that the Office
could retain more examiners by
increasing compensation and offering
better working conditions. A number of
comments also suggested that if it is
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necessary to increase examiner salaries,
changes to Title 5 of the United States
Code should be requested by the Office.
One comment stated that the salary for
starting examiners should also be
doubled. One comment stated that the
Office should seek authority to increase
salaries through either existing OPM
processes or through restructuring to a
quasi-government corporation. One
comment suggested charging fees for
responding to an Office action and for
interviews, and using this money to hire
more examiners and pay for retention
initiatives. Another comment suggested
establishing a salary increase when an
examiner passes a test at a number of
pay grades. One comment stated that a
bonus system should be established.
Another comment has suggested
increased salary levels for art units with
high backlogs. Several comments stated
that increased filing fees should go
towards increased salary for examiners.
One comment explained that the Office
could give examiners better working
conditions by placing less stress on the
more experienced examiners. Another
comment suggested the Office should
explore more flexible work schedules,
including part-time arrangements.
Response: The Office already provides
many first rate benefits to its employees.
The Office is at the forefront in
government for teleworking
opportunities for the staff. The Office
has also adopted a variety of creative
work schedules such as: Maxi-flex,
compressed and alternate work
schedules, part-time and flex-time for
all employees. Additionally, the Office
offers paid overtime, compensatory time
and credit hours programs. The Office
has transitioned into a paperless
environment and deployed state-of-the
art technology to its employees. The
Office has relocated to a new campus,
and provides amenities such as a first
class child-care facility, a state-of-the-art
fitness center and a cafeteria.
The Office already provides a robust
bonus system for examiners that enables
one to earn up to ten percent of one’s
salary per year in bonus compensation.
Examiners are already on a special pay
scale, with the most recent increase of
seven percent for all patent
professionals, granted in December
2006. In addition, an examiner receives
regular salary increases upon
promotions to increasing levels of
responsibilities.
Comment 282: Several comments
stated the Office should authorize
overtime to work on the backlogs. One
comment specifically suggested that
overtime pay should be 125 percent of
the current pay rate, and should only be
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available to work on first Office actions
on the merits.
Response: Examiners who have been
certified as capable of working
independently by their supervisors are
currently authorized to work overtime.
The overtime pay rate is set by statute.
See 5 U.S.C. 5542. The Office has
recently begun distributing laptop
computers to examiners to further
encourage overtime.
Comment 283: A number of
comments encouraged the Office to
consider establishing satellite offices in
different areas in the United States to
assist in recruiting and retaining of
examiners. The comments further
explained that satellite offices could tap
into a greater pool of potential new
examiners, as there would be multiple
working locations. In addition, the
comments stated that satellite offices
could specialize in certain technologies
that are prevalent in the area of the
satellite office. Another comment
pointed out that a satellite office would
facilitate more personal interviews,
which would expedite prosecution. The
comments also stated that salary
structures could be adjusted depending
on the cost of living within the area
surrounding the satellite office.
Response: The Office is considering
establishing satellite offices as reflected
in the Office’s 2007–2012 Strategic Plan.
Comment 284: A number of
comments stated that the Office should
increase training requirements for
examiners in order to improve patent
quality and retain more examiners. One
comment suggested using any increase
in patent fees to provide training.
Several comments offered assistance in
providing technical and legal training to
the examiners. One comment suggested
that examiners should receive more
training on making proper rejections
under 35 U.S.C. 103, and also suggested
testing examiners periodically. Another
comment stated that examiners’ prior art
searching is poor, and that the Office is
not making efforts to stem poor
rejections, which lead to rework. One
comment suggested that the Office
should train examiners using selftraining programs utilizing videos.
Another comment stated that training
should be outsourced. Several other
comments suggested training potential
new examiners by creating a patent
examination curriculum for universities.
Response: The Office has redesigned
the training program of new examiners
and increased technical and legal
training for other examiners and patent
professionals. Currently, the first classes
of new hires have completed their
training in the new Patent Training
Academy program, wherein examiners
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go through eight months of intensive
training prior to being assigned to an art
unit. Mirroring a collegiate
environment, examiners are trained in a
variety of disciplines, including
technology skills, legal skills, and
procedural requirements.
For non-first year examiners, the
Office has expanded training to include
patent law and evidence. Each
employee must attend a specified
number of training hours in a variety of
pertinent legal and technical subjects.
Additionally, the Office also offers a
Law School Tuition Assistance Program
(LSTAP) to qualified employees as an
extension of the Office’s internal
training program. Reimbursements for
university technical training courses
related to the technology being
examined are also available for
employees. Creating a partnership
between the Office and interested
universities to offer an undergraduate
course in patent law and examination
practice to highlight career
opportunities in the intellectual
property field is also being investigated.
Comment 285: A number of
comments stated that the Office did not
address improvements in the internal
examination process. One comment
alleged that the Office did not consider
any changes to address examiners’
errors that extend the prosecution.
Several comments suggested that the
Office should improve the examination
process before implementing the rule
changes.
Response: The Office is implementing
many initiatives including
improvements in the internal
examination process as well as the rule
changes in this final rule. To realize the
effectiveness of these initiatives in the
near term, the Office is implementing
many of them simultaneously. The
Office seeks ways to improve internal
examination processes by providing
training created as a result of internal
reviews that identify areas where
challenges exist.
Comment 286: Several comments
encouraged the Office to take additional
measures to improve the quality and
clarity of Office actions, in particular
first Office actions. One comment stated
that examiners should use ‘‘plain
English’’ in explaining the rationale
behind rejections.
Response: The Office recognizes that
the quality of Office actions is of great
importance. There are several quality
initiatives in place to insure that quality
continues to improve. The new Patent
Training Academy emphasizes the
importance of high quality Office
actions. Current interview practice
encourages the use of interviews to
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clarify the examiner’s position, as
necessary. The Office also has writing
classes available to employees.
Comment 287: Several comments
stated that examiners should be
encouraged to allow an application, or
to point out allowable subject matter, in
the first Office action, if appropriate.
Several comments also suggested
requiring examiners to propose
amendments when prosecution reaches
a certain point, such as the filing of a
second request for continued
examination.
Response: The Office has previously
adopted, in part, these comments. It is
current Office policy to encourage
examiners to suggest allowable subject
matter as early as possible in the
prosecution in order to achieve the
Office’s goal of compact prosecution. It
has long been a standard in the
examiner’s performance appraisal plan,
and it is indeed an indicia of
outstanding performance, to indicate
allowable subject matter at the earliest
time possible. (See also, e.g., MPEP
§ 707.07(j)(III) EARLY ALLOWANCE OF
CLAIMS, ‘‘Where the examiner is
satisfied that the prior art has been fully
developed and some of the claims are
clearly allowable, the allowance of such
claims should not be delayed’’; MPEP
§ 2106 (II), ‘‘Whenever practicable,
Office personnel should indicate how
rejections may be overcome and how
problems may be resolved * * * .’’; and
MPEP § 2164.04, ‘‘In other words, the
examiner should always look for
enabled, allowable subject matter and
communicate to applicant what that
subject matter is at the earliest point
possible in the prosecution of the
application.’’).
Comment 288: There were a number
of comments pertaining to the quality
review of examiners’ work product. A
number of comments stated that the
Office should limit its ‘‘second-pair-ofeyes’’ review to the work of examiners
that have been identified as needing
more review in their annual
performance appraisal. The comment
further explained that the Office should
focus more intensive review on an
examiner’s work if it is the principal
cause for the failure to close prosecution
on an invention (e.g., by making poor
rejections). Another comment suggested
eliminating the review of allowed
applications and having the ‘‘review’’
examiners work on the backlog. One
comment stated that supervisors should
review all Office actions for examiners
that have fewer than three years
experience unless they have passed a
proficiency examination. Another
comment stated the review should spot
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factual issues instead of just legal issues
to better improve Office action quality.
Response: The Office already has
focused ‘‘second pair of eyes’’ reviews
only for those examiners and/or
technology areas where it has been
determined necessary. Additionally, the
Office has an ongoing ‘‘in process
review’’ of applications to identify
problems and trends. Each Technology
Center develops ongoing action plans
and training each year to address the
problems/trends found via the ‘‘in
process reviews’’ and other sources,
such as the pre-appeal brief conferences.
Supervisors, or their designated primary
examiners, currently review all the work
of examiners who do not have signatory
authority. All of these reviews do
encompass both factual and legal issues.
Comment 289: A number of
comments stated that examiners should
be encouraged or required to conduct
more interviews throughout the
prosecution, including preexamination
interviews and after-final interviews.
Several comments suggested that all
interviews should include the
supervisor of the examiner or a person
with signatory authority. Several other
comments suggested giving examiners a
count, or credit, for an interview, and
charging a fee for interviews. Another
comment stated that examiners should
be trained to give more productive
interviews.
Response: Interview practice is set
forth in § 1.133 and MPEP §§ 713
through 713.10. Normally, one
interview after final rejection is
permitted. See MPEP § 713.09. The
Office also provides examiners extra
time to conduct an interview. In June
2006, this practice was expanded to
allow extra time for telephone
interviews initiated by applicants or
their representatives; it had previously
only been available for personal (face-toface) interviews. The Office conducted a
pilot program permitting an interview
before the first Office action in
applications that were assigned to
certain art units in Technology Center
3600. See Notice of Pilot Program to
Permit Pre-First Office Action Interview
for Applications Assigned to Art Units
3624 and 3628 and Request for
Comments on Pilot Programs, 1281 Off.
Gaz. Pat. Office 148 (Apr. 27, 2004).
Section 1.133(a)(2) was amended in
November of 2005 to permit an
interview before the first Office action
in any application if the examiner
determines that such an interview
would advance prosecution of the
application. See Provisions for Claiming
the Benefit of a Provisional Application
With a Non-English Specification and
Other Miscellaneous Matters, 70 FR at
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56121, 56128, 1299 Off. Gaz. Pat. Office
at 144, 150. As discussed previously, if
the examiner, after considering the
application and any examination
support document, still has questions
concerning the invention or how the
claims define over the prior art or are
patentable, the examiner may request an
interview before the first Office action.
Comment 290: One comment stated
that the Office should encourage the
submission of more useful information
disclosure statements, which contain
statements of materiality and have
provisions to discourage ‘‘dumping’’ of
references. Such an information
disclosure statement may be filed at a
reduced fee amount. Another comment
questioned whether the Office has
considered a rule that states that duty of
disclosure terminates at the close of
prosecution.
Response: The Office recently
published proposed changes to the
information disclosure statement
practice which will encourage the
submission of more useful information.
See Changes To Information Disclosure
Statement Requirements and Other
Related Matters, 71 FR at 38812–16,
38820–22, 1309 Off. Gaz. Pat. Office at
27–31, 34–36.
Comment 291: A number of
comments suggested that the Office
should make better use of search and
examination reports from other
intellectual property offices and PCT
search and examination authorities. On
the other hand, one comment stated that
the Office should not rely on foreign
office searches. Several comments
further suggested separating the search
and examination functions and
outsourcing the search function. One
comment stated that U.S. and PCT
prosecution should be done at the same
time.
Response: The Office recognizes the
importance of leveraging the search
results from other intellectual property
offices. One of the specific action plans
of the United States Patent and
Trademark Office 21st Century Strategic
Plan is to share search results with other
intellectual property offices. Since the
beginning of 2003, the Office, the
European Patent Office and the Japan
Patent Office (the Trilateral Offices)
have participated in search exchange
projects aimed at promoting the mutual
exploitation of search results. The Office
implemented the Patent Prosecution
Highway pilot program in July 2006. See
Patent Prosecution Highway Pilot
Program between the United States
Patent and Trademark Office and the
Japan Patent Office, 1307 Off. Gaz. Pat.
Office 61 (June 13, 2006). Under the
Patent Prosecution Highway pilot
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program, an applicant whose claims are
determined to be patentable by the
Japan Patent Office may request that the
corresponding application filed in the
Office be advanced out of turn for
examination provided certain
conditions are met. The Patent
Prosecution Highway pilot program
allows the Office to exploit the search
and examination results of the Japan
Patent Office and applicants to obtain
corresponding patents faster and more
efficiently. Additionally, whenever the
Office is designated as the International
Searching Authority, both the
international application and the
application filed under 35 U.S.C. 111(a)
are assigned to the same examiner, if
possible.
Comment 292: A number of
comments stated that all related
applications should be assigned to the
same examiner, including applications
with overlapping disclosures.
Response: The Office will continue to
make reasonable efforts to ensure that
related applications are assigned to the
same examiner, if possible. However,
the Office normally assigns divisional
applications to the technology area most
appropriate for the claimed subject
matter. In fact, this is in part why this
final rule requires applicants to identify
certain related applications. See
§ 1.78(f).
Comment 293: A number of
comments suggested creating a new or
modified accelerated examination
procedure. One comment requested a
procedure to permit accelerated
examination for applications that enter
the national stage under the Patent
Cooperation Treaty. Another comment
stated that accelerated examination
could be available to applications
containing ten or fewer representative
claims. Another comment suggested
allowing accelerated examination if the
applicant permits an inter partes
submission of a prior art statement and
applicant provides either an
examination report from either the
European Patent Office or the Japan
Patent Office, or pays a high fee for a
special search. One comment stated
high technology areas should be given
examination priority. Another comment
suggested requiring expedited replies in
continued examination applications and
not giving extensions of time under
§ 1.136(a). Another comment requested
accelerated examination for
independent inventors.
Response: The Office has long
provided for advancement of
examination upon granting a petition to
make special. See § 1.102 and MPEP
§ 708.02. The Office also announced a
revised accelerated examination
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procedure, and the goal is to complete
examination within twelve months of
the filing date of the application under
this program. See Changes to Practice
for Petitions in Patent Applications To
Make Special and for Accelerated
Examination, 71 FR at 36323–27, 1308
Off. Gaz. Pat. Office 106–09. Any
applicants, including independent
inventors, may participate in the revised
accelerated examination program which
provides an expedited reply procedure.
As discussed previously, under the
Patent Prosecution Highway pilot
program, an applicant whose claims are
determined to be patentable by the
Japan Patent Office may request that the
corresponding application filed in the
Office be advanced out of turn for
examination provided certain
conditions are met.
Comment 294: Several comments
suggested that examiners should strictly
follow the guidance set forth in MPEP
section 708 and examine applications
with the oldest effective filing date first.
On the other hand, several comments
stated the Office should promote earlier
examination of non-continuing
applications by giving continuation
applications a lower priority in the
examination queue.
Response: The Office will continue to
follow the guidance set forth in MPEP
section 708 pertaining to the order of
examination of applications, including
that ‘‘[e]ach examiner will give priority
to that application in his or her docket,
whether amended or new, which has
the oldest effective U.S. filing date.’’ An
exception to this guideline is an
application in which examination has
been advanced pursuant to § 1.102.
Comment 295: One comment
suggested examiners should not just
search the claimed invention, but also
subject matter that might be reasonably
claimed at a later time.
Response: MPEP § 904 sets forth that
‘‘[t]he first search should cover the
invention as described and claimed,
including the inventive concepts toward
which the claims appear to be directed.’’
Additionally, MPEP § 904.02(a) states
that ‘‘[t]he field of search extends to all
probable areas relevant to the claimed
subject matter and should cover the
disclosed features which might
reasonably be expected to be claimed.’’
Comment 296: Several comments
encouraged the Office to hire efficiency
experts, or a task force, to find the best
ways to improve the quality and
efficiency of examination.
Response: The Office expects these
rule changes to improve the quality and
efficiency of examination. The Office
will evaluate the effectiveness of the
rule changes in partnership with the
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Office’s customers and employees as all
gather experience in operating under
these adjustments. The Office is
currently studying all suggestions,
including those in the various studies
made of the Office.
Comment 297: One comment
requested that the panel involved in a
pre-appeal brief conference be required
to provide legal and factual reasoning
for the decision to both the examiner
and the practitioner so as to better make
the decision a teaching tool.
Response: The Pilot Pre-Appeal Brief
Conference Program has been extended
until further notice. See Extension of the
Pilot Pre-Appeal Brief Conference
Program, 1303 Off. Gaz. Pat. Office 21,
(February 7, 2006) (notice). Since this
program is still in the pilot phase, it
would be premature to make any
changes until a full evaluation of the
entire program is completed.
Furthermore, the purpose of this
program is to provide a quick relief for
applications that are clearly not in
condition for appeal, so that applicant
does not have to go through the expense
of preparing and filing an appeal brief.
Preparing a written decision of the
conference would unduly delay the
process.
Comment 298: Several comments
stated that the Office should create an
Ombudsman position to decide issues
regarding examination errors by
examiners.
Response: The Office has many
effective mechanisms to decide issues
regarding alleged ‘‘examination errors’’
by examiners. Practitioners have several
options, including but not limited to,
responding on the record, calling a
supervisor, requesting a pre-appeal brief
conference, filing a petition, and filing
an appeal.
Comment 299: One comment
requested a return to the appeal rules
where the examiners are not able to
make new grounds of rejection during
appeal.
Response: The rules of practice for the
appeal process were changed in 2004 to
permit a new ground of rejection in an
examiner’s answer. See Rules of Practice
Before the Board of Patent Appeals and
Interferences, 69 FR 49960, 1286 Off.
Gaz. Pat. Office 21 (September 7, 2004)
(final rule). The approval of the
appropriate Technology Center Director,
or his or her designee, is needed for
such a new ground of rejection, which
should be rare. In response to any new
ground of rejection made in an
examiner’s answer, appellant has the
options to request that prosecution be
reopened and to request that the appeal
be maintained under § 41.39(b). There
have been no demonstrated problems to
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date, thus the Office does not plan to
change this practice.
Comment 300: One comment
suggested accepting more ‘‘variations’’
in filings to reduce the number of noncompliant notices sent.
Response: The Office waives certain
requirements set forth in § 1.121(c) and
may accept certain non-compliant
amendments. See Acceptance of Certain
Non-Compliant Amendments Under 37
CFR 1.121(c), 1296 Off. Gaz. Pat. Office
27 (July 5, 2005). Practitioners and
applicants, however, are responsible to
know the laws and rules relating to
prosecuting patent applications and to
keep current with any changes. The
Office will continue to review common
problems that arise, and implement
solutions as appropriate.
Comment 301: One comment
requested that the Office publish, once
a month, a projection of when a new
application will be taken up for
examination so that applicants can
better manage the filing of preliminary
amendments.
Response: The Office currently
publishes in each issue of the Official
Gazette the average filing date of the
applications that received a first Office
action during the preceding three
months for each Technology Center
Work Group.
Comment 302: One comment
suggested that the Office should allow
more documents to be filed via the
Office electronic filing system. Another
comment stated the Office should
require electronic filing and that all
prosecution be performed electronically.
Response: The Office permits
applicants to file many applications,
fees, and correspondence (e.g.,
amendments and replies) electronically
via the Office electronic filing system
(EFS–Web) with a few exceptions (e.g.,
Credit Card Authorization Form (PTO–
2038), maintenance fees, new plant
applications and color plant drawings).
There are no plans to make electronic
filing mandatory, although special
programs (e.g., accelerated examination)
do require electronic filing. See Changes
to Practice for Petitions in Patent
Applications To Make Special and for
Accelerated Examination, 71 FR at
36323–27, 1308 Off. Gaz. Pat. Office
106–09.
Comment 303: One comment
proposed requiring applicants to give an
opinion of the usefulness or commercial
potential of the invention.
Response: The Office is not adopting
the requirement that an examination
support document contain a concise
statement of the utility of the invention.
An opinion from the applicant on the
commercial potential of the invention is
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generally unnecessary in determining
the patentability of the claimed
invention. However, applicant may
submit objective evidence of
commercial success when applicant
seeks to rebut an obviousness rejection
under 35 U.S.C. 103. See § 1.132 and
MPEP § 716.03.
Comment 304: One comment
requested prioritizing the order of
examination based on such factors as
the economic impact and value to
society, the quality of the technical
description of the invention and the
quality of prior art cited. The comment
also suggested requiring applicants to
state in their application how the
invention will be distributed to the
public.
Response: It would be very difficult to
evaluate and assess these subjective
factors for each application filed. In
addition, most of this information
would not be helpful in determining the
patentability of the claimed invention.
Comment 305: One comment
suggested creating an electronic search
tool that would automatically compare
the claim language to prior art and
provide complete searches in under ten
minutes.
Response: The Office has been
evaluating tools to improve the
examination practice. Although the
Office is routinely seeking ways to
improve automated tools, the resources
needed for implementation and the
applicability of the tools must be
considered and weighed. Often, the
application of search tools is limited to
specific technologies. For example, in
many biotechnology applications, the
Office employs an Automated
Biotechnology Sequence Search System
(ABSS) to compare genetic sequences
submitted with applications to a
number of sequence databases. The
Office’s Scientific and Technical
Information Center (STIC) conducts
between 10,000 and 15,000 of these
searches a year. Due to the number of
requests and because the search runs
against multiple databases, ABSS
searches can be time-consuming. In
other technologies, such as electrical
and mechanical arts, STIC provides the
option of conducting a Patent Linguistic
Utility Service (PLUS) search, which
runs significant words from sections of
the specification against the full text of
the United States Patent and United
States Pre-Grant Publication databases.
STIC is performing over 20,000 of these
searches a year. While these searches
are done quickly, limitations in key
word searching are not always reliable
in finding relevant prior art.
Comment 306: One comment stated
that the Office should create a better
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search engine so inventors can more
easily perform better searches.
Response: The Office continues to
explore various ways to disseminate
information and improve the searching
capabilities of the public. Currently, the
Office allows applicants and inventors
to search on-line using Patent Full-Text
and Full-Page Image Databases (https://
www.uspto.gov/patft/) and
works in concert with eighty-three
Patent and Trademark Depository
Libraries (https://www.uspto.gov/go/
ptdl/) throughout the United States to
offer the public extension research
capabilities. The Office also has a
library and tools at the Alexandria
campus for the public to use.
Comment 307: One comment
suggested that procedures for appeals
and petitions should be changed to be
less costly and to result in more timely
decisions. One comment suggested the
Office waive the notice of appeal fee
and the appeal brief fee while the
applicant awaits a decision on petition
to invoke supervisory authority relating
to a premature final rejection in an
Office action.
Response: Most petition fees are set
by regulation. The petition fee amounts
that are set by regulation are set at an
amount based upon the resources
required to handle and decide the
petition. See Changes to Support
Implementation of the United States
Patent and Trademark Office 21st
Century Strategic Plan, 69 FR 56482,
56491–93 (Sept. 21, 2004), 1287 Off.
Gaz. Pat. Office 67, 75–76 (Oct. 12,
2004). The notice of appeal fee and the
appeal brief fee are set by statute and
cannot be waived. Additionally, the
appeal fees recover only a fraction of the
Office cost of handling and deciding the
appeal.
With respect to petitions, the Office is
taking the necessary steps to minimize
the backlog and to respond to petitions
in a timely fashion. Within the
Technology Centers, almost all petitions
for relief from improper final rejections
or restrictions are answered in a timely
fashion. The Office is working to ensure
that most of the petitions for relief from
improper final rejections or restrictions
are decided within four months from
when they are filed, and continues to
work on ways to make the process
consistent across the different
Technology Centers. The Office has also
taken major steps to eliminate delays
with the appeal process. The BPAI has
radically reduced the inventory of
pending appeals during the last five
fiscal years.
The Office also recognizes that it is
important to make sure that the finality
of any final Office actions is proper. It
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is the Office’s experience that applicants
who seek review of the finality of an
Office action also request review of the
merits of the rejections contained in the
final Office action. The propriety of the
finality of an Office action is purely a
question of Office practice that is
wholly distinct from the merits of the
rejections contained in the final Office
action rejection. See MPEP § 706.07(c).
The propriety of the finality of an Office
action is properly raised in a petition
under § 1.181, and is not a proper basis
for an appeal or complaint to the BPAI
during an appeal. See id. Likewise,
arguments relating to the merits of the
rejections contained in the final Office
action rejection are properly raised in an
appeal to the BPAI, and are not a proper
basis for a petition under § 1.181 or for
contesting the propriety of the finality of
an Office action.
The rules of practice provide that the
mere filing of a petition under § 1.181
will neither stay any period for reply
that may be running against the
application, nor act as a stay of other
proceedings. See § 1.181(f). While the
Office has put in place procedures to
decide the appeals and petitions in a
timely manner, the applicant is
responsible to continue to prosecute the
application consistent with § 1.181(f).
Thus, there may be situations in which
it is necessary for an applicant to file a
notice of appeal to maintain the
pendency of an application while a
petition under § 1.181 requesting review
of the finality of an Office action is
being decided. The filing of a notice of
appeal, however, does not moot such a
petition under § 1.181, so the Office will
decide a petition under § 1.181
requesting review of the finality of an
Office action even if the applicant has
filed a notice of appeal in the
application. In such a situation,
applicants should also request a preappeal brief conference with the filing
of a notice of appeal. The pre-appeal
brief conference will be conducted and
the applicant will be notified of the
result of the pre-appeal brief conference
before the appeal brief and appeal brief
fee must be filed. This should ensure
that any petition under § 1.181
requesting review of the finality of an
Office action is decided before the
applicant must file the appeal brief and
appeal brief fee. If the Office determines
that the finality of the rejection was
premature, the finality of the Office
action will be withdrawn and any fees
paid for the notice of appeal and the
appeal brief can be applied to a later
appeal on the same application. See
MPEP § 1207.04.
Comment 308: Several comments
stated that the Office should exercise
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better control over restriction practices.
Several comments stated that the Office
should encourage claims of different
statutory classes to be filed in one
application to improve examiner
efficiency. One comment asserted that
disposal pressures on examiners in the
biotechnology area are totally
unrealistic and have led to legally
ridiculous restriction requirements.
Several comments suggested that
restriction reform is needed. Several
comments suggested that the Office
adopt the unity of invention standard.
Several comments suggested an interim
standard based on current PCT unity of
invention practice should be available at
the option of the applicant as an
alternative to adopting unity of
invention practice. Some comments
expressed the opinion that current
restriction practice in Technology
Center 1600 (biotechnology and organic
chemistry) requires applicants to file too
many continuing and divisional
applications. One comment expressed
the opinion that current restriction
practice is a result of the examiners’
production system. Several comments
stated that restriction is necessary to
avoid abusive filing tactics by
applicants seeking to circumvent the
proposed regulation of continued
examination filings. Several comments
suggested that the Office eliminate
restriction practice. Another comment
stated that if proposed § 1.78(d)(1)(ii) is
adopted, the Office should be bound by
an initial restriction requirement and
§ 1.146, authorizing species restrictions,
should be repealed. One comment
suggested that if restriction practice
must be maintained, it should be
limited to applications in which two
claimed inventions are literally
unrelated, and all divisional
applications should be examined by the
same examiner.
Response: As part of the United States
Patent and Trademark Office 21st
Century Strategic Plan, restriction
reform was studied extensively. See
Request for Comments on the Study of
Changes Needed to Implement a Unity
of Invention Standard in the United
States, 68 FR 27536 (May 20, 2003),
1271 Off. Gaz. Pat. Office 98 (June 17,
2003) (notice). A revision of the study
was posted in November 2003, and the
study was expanded to include four
restriction reform options. See Notice of
the Availability of and Request for
Comments on Green Paper Concerning
Restriction Practice, 70 FR 32761 (June
6, 2005), 1295 Off. Gaz. Pat. Office 146
(June 28, 2005) (notice) and the
extension of the comment period
announced at 70 FR 45370 (August 5,
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2005) (notice). There were sixteen
responders, and there was no consensus
as to which of the four options to adopt.
In addition, the restriction reform study
concluded that a change to unity of
invention under PCT Rule 13 under any
of the four restriction reform options
would significantly increase patent
pendency. Thus, the Office is
maintaining its current practices with
respect to requirements for restriction
under 35 U.S.C. 121 or unity of
invention under PCT Rule 13.
Technology Center 1600
(biotechnology and organic chemistry)
has implemented a comprehensive
restriction training plan. This includes
training examiners on proper restriction
practices, including proper grouping of
claims and rationale supporting the
restriction requirement, using Art Unit
and Work Group specific examples.
Training has been ongoing, using
materials that are published on the
Office’s Internet Web site. Feedback
from the training to date has been
incorporated into the initial patent
examining training given to new hires.
Although the Office will continue to
assign divisional applications to the
technology area most appropriate for the
claimed subject matter, they are not
necessarily assigned to the same
examiner.
Comment 309: Several comments
asserted that restriction practice will
increase as a result of the rule changes.
One comment suggested that the Office
needs to coordinate any changes in
continuation practice with restriction
reform. Another comment expressed the
opinion that the proposed rule changes
will exacerbate problems with the
current restriction practice. One
comment suggested that divisional
application filings would likely drop in
view of designating ten representative
claims because examiners usually do
not bother to make restriction
requirements when they only have a few
claims to examine. Another comment
stated that an increase in restrictions is
a desirable alternative to the rule
changes. Another comment argued that
current restriction practice adequately
limits the claims for examination. The
rules would complicate restriction
practice resulting in multiple exchanges
between the examiner and applicant
when designated claims are subject to
restriction.
Response: The Office is not adopting
the ‘‘representative claims’’ examination
approach in this final rule. As noted
previously, the Office received
comments that restrictions would
increase and comments that restrictions
would decrease as a result of the
changes to the rules. The changes being
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adopted in this final rule do not
encourage more or fewer restrictions.
Thus, the Office is maintaining its
current practices with respect to
requirements for restriction under 35
U.S.C. 121 or unity of invention under
PCT Rule 13. See §§ 1.141, 1.142, and
1.499.
Comment 310: One comment
suggested that the Office require all
restriction requirements to be made
within six months of filing, with no
excess claim fees charge until after that
period. Another comment stated that
excess claims fees should only be
determined after any restriction
requirement has been made.
Response: In fiscal year 2006, the
average pendency to first Office action
was 22.6 months for the entire Patent
Examining Corps. Therefore, the Office’s
current first Office action pendency
does not allow for an examination of the
application to determine whether
restriction is appropriate within six
months of filing in most applications.
Excess claims fees are required by the
statutory requirement ‘‘on filing or on
presentation at any other time.’’ See 35
U.S.C. 41(a)(2). In response to a
restriction requirement, applicant may
file an amendment canceling the nonelected claims and request a refund of
any excess claims fees paid on or after
December 8, 2004, for the non-elected
claims, if the amendment is filed before
an examination on the merits has been
made of the application. See § 1.117.
K. Suggestions Relating to Legislative
Changes
Comment 311: A number of
comments suggested that Congress
should adequately fund the Office by
making the United States Patent and
Trademark Fee Modernization Act of
2005 (H.R. 2791, 109th Cong. (2005))
permanent and eliminating fee
diversion. One comment also suggested
that Congress provide additional funds
(outside of fees collected) to the Office.
A number of comments suggested that
the fees for continued examination
filings in excess of one should be
increased (e.g., graduated fee schedule
for subsequent filings). A number of
comments suggested charging a fee for
each priority claim made. One comment
suggested that the fee would be
proportional to the years of benefit
requested. Several comments suggested
that the current fee structure encourages
continuations since it is cheaper to file
multiple applications than to file a large
number of claims (e.g., sixty total claims
with nine independent claims) in a
single application, and that the Office
should revisit the fee structure if it
wants to encourage filing the claims in
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a single application. A number of
comments suggested that there should
be higher fees on claims exceeding a
certain minimal number, which is
proportionate to the increased burden
on the Office. One comment suggested
permitting applicant to pay additional
search and examination fees for those
who want to submit more than ten
representative claims. At least one
comment suggested increasing fees
based on complexity of the claims and
art. One comment suggested that the
Office should permit an applicant to file
a third or subsequent continuing
application with an appropriate higher
fee. One comment suggested a threetiered system: The first tier would allow
three independent claims and twenty
total claims; the second tier would
activate a very high surcharge; and the
third tier, in applications of more than
ten independent and thirty total claims,
would require a showing as to why such
additional claims are necessary. Several
comments suggested an overall general
fee increase, especially for those areas
with high workloads. One comment
suggested that doubling the basic filing
fee, search and examination fees would
not be a hardship for applicants. Several
comments suggested a number of
changes to the fee schedule: Tripling
fees for large entities; instituting a
graduated fee scale for adding new
matter rather than limiting the number
of continuation-in-part applications;
charging a higher filing fee for an
application with greater than five claims
and more than 1200 words in the
specification; raising fees if more than
ten or more than twenty claims are
submitted; increasing fees for
independent claims in excess of three;
increasing fees on all non-Jepson claims;
and eliminating search and examination
fees if an examination support
document is submitted.
Several comments stated that
surcharges should be imposed on
independent claims in excess of three
and total claims in excess of twenty in
order to address the problem of
applications with excess numbers of
claims. Several comments argued that
the current fees appear to be having a
significant impact in reducing the
number of claims filed, that the Office
has not fully evaluated that impact, and
that the Office should give the fee
increase more time to see if it will be
effective.
Response: Patent fees are primarily set
by statute, and Congress has
considerable authority in setting patent
fees and funding of the Office. See
Figueroa v. United States, 466 F.3d
1023, 1031–32, 80 U.S.P.Q.2d 1437,
1443 (Fed. Cir. 2006). Thus, patent fee
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and Office funding issues are beyond
the scope of the proposed changes to the
rules of practice.
In 2002, the Office proposed a patent
fee structure that included a graduated
excess claims fees schedule and
additional fees for continuing
applications. The House Subcommittee
on Courts, the Internet, and Intellectual
Property held a hearing on July 18,
2002, at which patent user groups
expressed strenuous opposition to the
Office’s 2002 proposed patent fee
structure. See The U.S. Patent and
Trademark Office: Fee Schedule
Adjustment and Agency Reform:
Oversight Hearing Before the
Subcommittee on Courts, the Internet,
and Intellectual Property of the House
Committee on the Judiciary, 107th
Cong., 2nd Sess., Final Print Serial No.
92 (2002). The Office was unable to
garner public support for a patent fee
structure including a graduated excess
claims fees schedule or any additional
fees for continuing applications.
Therefore, the patent fee structure
proposed in the United States Patent
and Trademark Fee Modernization Act
of 2003 (introduced as H.R. 1561)
included the former ‘‘flat’’ excess claims
fee schedule (with an adjustment to the
fee amounts) and no additional fees for
continuing applications.
Section 801 et seq. of Division B of
the Consolidated Appropriations Act,
2005, provided that 35 U.S.C. 41(a), (b),
and (d) shall be administered in a
manner that revises patent application
fees (35 U.S.C. 41(a)) and patent
maintenance fees (35 U.S.C. 41(b))
during fiscal years 2005 and 2006. See
Public Law 108–447, 118 Stat. 2809
(2004). In essence, the Consolidated
Appropriations Act, 2005, made the
patent fees set forth in the United States
Patent and Trademark Fee
Modernization Act effective during most
of fiscal year 2005 and all of fiscal year
2006. The Revised Continuing
Appropriations Resolution, 2007 (Pub.
L. 110–5, 121 Stat. 8 (2007)), kept the
patent fee and fee structure provisions
of the Consolidated Appropriations Act,
2005, in effect during fiscal year 2007.
Moreover, the examination fee in
effect under this legislation does not
recover the entire cost of examination.
The excess claims fee structure in effect
under this legislation does not provide
sufficient incentive for all applicants to
keep the number of claims in an
application at a reasonable number. The
application filing fees in effect under
this legislation provide no incentive for
applicants to keep the number of
continuing applications to a reasonable
number. Thus, increasing fees, as
suggested by many of the comments, is
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not, by itself, a sufficient solution for
the large and growing backlog of
unexamined applications.
Comment 312: One comment
suggested permitting applicants to pay
an additional search fee for inventions
that are restricted.
Response: The Office studied such a
proposal and determined that it would
result in an unacceptable increase in
patent pendency. See Green Paper
Concerning Restriction Practice at 14–18
(2005). The Green Paper Concerning
Restriction Practice is available on the
Office’s Internet Web site at: https://
www.uspto.gov/web/patents/
greenpaper.htm. Thus, the Office is not
pursuing such a change to patent
practice.
Comment 313: One comment
suggested that fees for small entities
should be maintained and that fees for
others should be increased.
Response: The Office believes that
Congress has set an appropriate
discount for fees paid by small entities.
35 U.S.C. 41(h)(1) currently provides for
a fifty percent reduction in patent fees
charged under 35 U.S.C. 41(a), (b), or
(d)(1) for applicants who qualify as a
small entity under 35 U.S.C. 41(h)(1),
and 35 U.S.C. 41(h)(3) further provides
a seventy-five percent reduction in the
filing fee charged under 35 U.S.C.
41(a)(l)(A) for small entity applicants
who file their applications
electronically. The Office notes that
small entity applicants file excess
claims and continuing applications at
virtually the same rate as other (nonsmall entity) applicants.
Comment 314: One comment
suggested that if a specification is a
poor-quality literal or machine
translation of a non-English language
application, the examiner should be
permitted to reject the specification as
indefinite and provide a time period for
applicant to provide a better quality
translation.
Response: The goal of the changes in
this final rule is to increase quality and
decrease pendency of patent
applications. To assist the Office in
meeting that goal, applicants should file
applications that are in condition for
examination, or provide corrections no
later than the time they are taken up for
examination. It should not be necessary
for the Office to issue an Office action
rejecting or objecting to an application
due to informalities. However, if a
specification is a poor quality literal
translation of a non-English application,
the examiner has the authority to object
to the specification.
Comment 315: One comment
suggested that the Office adopt a ‘‘utility
model’’ type of patent as used in
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Australia in which a patent issues
without a search being done, and a
search is only conducted when the
patent is enforced.
Response: The Office is currently
studying the concept of alternative types
of patents, thus allowing an applicant to
select a patent product based upon the
applicant’s needs. See Draft 2007–2012
Strategic Plan (Objective 2 of Goal 1). A
copy of the Office’s draft proposed fiveyear (2007–2012) strategic plan can be
found at https://www.uspto.gov/web/
offices/com/strat2007/. However,
implementing such a practice would
need legislative changes.
Comment 316: One comment
indicated that Congress recently
endorsed and expanded opportunities
for double patenting via the CREATE
Act (Cooperative Research and
Technology Enhancement Act (Pub. L.
108–43, 118 Stat. 3596 (2004)).
Response: The legislative history of
the CREATE Act (Cooperative Research
and Technology Enhancement Act (Pub.
L. 108–43, 118 Stat. 3596 (2004))
indicates that Congress appreciated that
the CREATE Act would result in
additional double patenting situations.
See H.R. Rep. No. 108–425, at 6 (the
Office may require a terminal disclaimer
when double patenting is determined to
exist for two or more claimed inventions
for any application for which the
applicant takes advantage of the ‘‘safe
harbor’’ provision in 35 U.S.C. 103(c) as
amended by the CREATE Act).
Congress’ acknowledgment of the
possibility of double patenting is not,
however, an expression of support for
applicants to intentionally submit
claims that would result in a double
patenting situation. Instead, it shows
that the Congress is aware of the
problems created by multiple patents
covering the same or substantially the
same invention, and expects the Office
to address these issues.
Comment 317: Several comments
suggested eliminating the two-year limit
for filing a broadening reissue. One
comment suggested amending the
‘‘reissue’’ or ‘‘reexamination’’ statute to
permit broadening of claims at any time
for a number of reasons such as: (1) To
replace continuing applications which
are now being filed to avoid the twoyear statutory period for broadening
patent claims; (2) to allow correction of
simple drafting mistakes which may not
be caught before the patent issues; and
(3) to provide certainty to industry. The
comment stated that to encourage
participation by patentee, legal (as
opposed to equitable) intervening rights
should be provided that are linked to
the date of the amendment. Also, such
an amendment should provide for
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intervening rights after eighteen months
to patent applications as well as patents
to put an end to the submarine patent
situation.
Response: The suggested changes to
reissue or reexamination practice are
not consistent with the Office’s goals of
increasing quality and reducing
pendency. The Office, nevertheless,
appreciates that continuing application
practice may currently be used
improperly to avoid the two-year bar
and the broadening ‘‘error’’ requirement
of the reissue statute (35 U.S.C. 251).
The changes to continuing application
practice in this final rule will reduce a
patentee’s ability to end-run the reissue
statute via continuing application
practice.
Comment 318: One comment
suggested instituting a tiered search and
examination procedure, which provides
for a refund of the examination fee if
applicant decides to abandon the
application after the search but before
the examination. If applicants can save
money by abandoning applications no
longer deemed viable, applications will
drop out of the application process,
thereby freeing up valuable Office
examination resources to focus on
quality examination of the remaining
applications, as well as reducing
pendency.
Response: The current fee legislation
authorizes the Office to refund the
search fee but not the examination fee
if the applicant chooses not to pursue an
application after it has been filed. See
35 U.S.C. 41(d)(1)(D). This provision has
been implemented in § 1.138(d). Under
§ 1.138(d), applicant may file a petition
for express abandonment before an
examination has been made of the
application to obtain a refund of the
search fee and excess claims fee paid in
the application. The feedback received
by the Office indicates that the
examination fee is too low to provide
any additional incentive for an
applicant to withdraw from the
examination process and seek a refund.
Comment 319: One comment
suggested charging more money for
voluminous IDS submissions, and
additional surcharges for particular
technologies where ‘‘second pair of
eyes’’ review has had a significant
impact on examination quality at an
increased cost to the Office.
Response: The Office is addressing
the problem of large IDS submissions in
a separate rule making. See Changes To
Information Disclosure Statement
Requirements and Other Related
Matters, 71 FR at 38812–16, 38820–22,
1309 Off. Gaz. Pat. Office at 27–31, 34–
36. As for increasing fees for particular
technologies where ‘‘second pair of
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eyes’’ review has had a significant
impact on examination quality at an
increased cost to the Office, Office
funding is subject to appropriations by
Congress, and charging additional fees
will not necessarily provide more
funding for the Office. See Figueroa, 466
F.3d at 1031, 80 U.S.P.Q.2d at 1442
(there is no requirement that the
revenue resulting from patent fees be
appropriated to fund the Office).
Furthermore, the limitation currently
facing the Office is not a lack of funds
to hire new examiners, but rather the
ability to hire and train new examiners
in the numbers necessary to lower
patent pendency while maintaining
patent quality.
Comment 320: One comment
suggested modifying the relevant
statutes to bar a continuing application
or request for continued examination
after thirty months from the filing date
(other than a divisional application,
which would be given a different
period). The comment also indicated
that continuation-in-part applications
filed more than thirty months after the
initial application should be barred
under 35 U.S.C. 102(b) based on the
eighteen-month publication of the
initial application.
Response: First, the statutes cannot be
modified without legislative action by
Congress. Further, this final rule
provides applicant sufficient
opportunities to present claims during
the prosecution of the initial
application, two continuing
applications, and a request for
continued examination without
justification. The prosecution of these
applications and the request for
continued examination will most likely
extend more than thirty months from
the earliest claimed filing date,
particularly in certain areas such as
biotechnology. The changes as adopted
in this final rule appropriately balance
an applicant’s need for opportunities to
present claims and the Office’s need to
utilize its examining resources more
efficiently to reduce the backlog of
unexamined applications and improve
quality.
Comment 321: One comment
suggested developing a practice where
new matter can be added to an existing
application with a request for continued
examination. The comment explained
such a practice would eliminate the
need to file continuation-in-part
applications, would not take the
application out of the examining queue,
and would be more efficient because the
same examiner, rather than different
examiners, would examine the
application, and would also avoid
double patenting issues.
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Response: A request for continued
examination is not a new application,
but is instead a means to continue
examination of an existing application.
Thus, such a change could not be made,
because 35 U.S.C. 132(a) prohibits
introduction of new matter into an
application. Furthermore, even if 35
U.S.C. 132(a) did not prohibit such a
practice, such a practice would create
problems in determining the filing date
of the new matter.
Comment 322: One comment
suggested that the Office should seek
the authority from Congress to limit the
number of claims in any particular
application.
Response: The Office is not seeking to
limit the number of claims in an
application. Instead, the Office aims to
improve the quality of examination. The
changes to § 1.75 in this final rule
permit an applicant to present up to five
independent claims and twenty-five
total claims in the application without
submitting an examination support
document in compliance with § 1.265.
The changes to § 1.75 in this final rule
also permit an applicant to present more
than five independent claims or more
than twenty-five total claims if the
applicant submits an examination
support document in compliance with
§ 1.265. If an examination support
document in compliance with § 1.265 is
not filed before the issuance of a first
Office action on the merits of the
application, the application may not
contain or be amended to contain more
than five independent claims or more
than twenty-five total claims. Thus, the
changes being adopted in this final rule
are not placing a limit on the number of
claims.
Comment 323: One comment
suggested that the Office should permit
all claims to be filed in an application
without any excess claims fees, and
then after restrictions are made,
calculate the needed fee for ‘‘additional
claims’’ so applicants are not penalized
by paying claims fees twice.
Response: An applicant can request a
refund for excess claims canceled prior
to a first action on the merits. See
§ 1.117. Thus, an applicant does not
need to pay claim fees twice, if
applicant cancels the non-elected claims
in reply to a restriction requirement.
Comment 324: One comment
suggested providing for the addition of
dependent claims after allowance for a
reduced fee with the requirement that
applicant identify support for the claims
in the specification.
Response: The comment did not
provide an explanation as to how such
a strategy would reduce pendency and
promote quality. Even assuming
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applicant would file less claims under
this suggested practice, examination of
the newly added claims after allowance
would be required. Thus, it is not clear
how the suggested strategy would serve
these goals more effectively than the
changes being adopted in this final rule.
Comment 325: One comment
suggested to bar, by statute, more than
three independent claims and ten total
claims, provided that amendments may
be made in the regular course of
prosecution and after grant to end claim
gaming. The comment further indicated
that the proposed rule changes will be
subject to administrative challenge,
leading to several years of uncertainty
and chaos.
Response: A number of comments
indicated that there are situations in
which more than three independent
claims and more than ten total claims
are needed. Thus, the Office recognizes
that it would be inappropriate to seek
such legislation to place an absolute
limit on the number of claims at this
juncture.
Comment 326: One comment
suggested that reducing the filing and
maintenance fees would reduce filings.
The comment stated that the backlog
has gotten so large due to the increases
in excess claims fees, there has been a
tendency among practitioners to
segment applications into multiple
related filings, each having twenty or so
claims. This segmenting, the comment
explains, has significantly increased the
number of filings within the Office.
Response: It is unclear how reducing
fees would reduce the number of filings.
The experience of the Office is that
reducing patent fees would not lead to
reduced filings.
Comment 327: One comment
suggested including a patent term
reduction while an application remains
pending.
Response: Section 1.704 currently
provides for reduction of patent term
adjustment for processing delays
attributable to the applicant.
Comment 328: One comment
suggested moving to a first-to-file
system.
Response: As part of global patent law
harmonization efforts, the Office has
sought public comment on whether the
first to invent (used in the United
States) or the first inventor to file (used
in the remainder of the world) standard
in determining the right to a patent
represented a ‘‘best practice’’ for a
harmonized global patent system. See
Request for Comments on the
International Effort to Harmonize the
Substantive Requirements of Patent
Laws, 66 FR 15409 (Mar. 19, 2001)
(request for comments). The Office is
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continuing to consider the issues related
to the first to invent versus the first
inventor to file standard in determining
the right to a patent in the context of
international harmonization efforts.
Comment 329: One comment
suggested elimination of all forms of
continuing applications except
divisional applications.
Response: The changes to continuing
application practice adopted in this
final rule seek a balanced approach
between the needs of applicants for
patents and the goals of the Office to
increase quality and decrease pendency.
Comment 330: One comment
suggested reducing the shortened
statutory period for an applicant’s
response to three months without any
extension of time. One comment
suggested implementing a thirty-day
reply period for both the Office and
applicants.
Response: The Office is considering
whether it should change the shortened
statutory period for Office actions on the
merits to less than three months.
Comment 331: Several comments
expressed support for publication of all
applications. One comment suggested
limiting secrecy of a patent application
to one month. One comment suggested
that some form of intervening rights
legislation might better address the
problem of repetitive filings. One
comment suggested elimination of 35
U.S.C. 135(b). One comment suggested
amending 35 U.S.C. 271 so that a variety
of claim forms are not necessary for
direct infringement to be found, arguing
that current 35 U.S.C. 271 is the reason
why software-based inventions require
claims to different statutory classes,
thus increasing the number of claims in
an application. One comment suggested
that the Office should work with
Congress to legislatively overturn
Honeywell Int’l Inc. v. Hamilton
Sundstrand Corp., 370 F.3d 1131, 71
U.S.P.Q.2d 1065 (Fed. Cir. 2004), to
promote the use of dependent claims
and not construe the rewriting of an
objected to dependent claim in
independent form narrowly under the
doctrine of equivalents. One comment
suggested granting rights to regulate the
use of an Internet patent to the assignee
and the enforcement of such regulation
would be based on a fee and would not
include the right to prevent others from
using the invention.
Response: The changes suggested by
the comments are beyond the scope of
the proposed changes to the rules of
practice. It is not clear, however, how
the changes suggested by the comments
would address the increased usage of
continuing application practice or have
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an appreciable impact on quality or
pendency.
L. Effective Date of the Changes in This
Final Rule
Comment 332: One comment stated
that the Office does not have any
authority to promulgate retroactive rules
because the Administrative Procedures
Act does not confer such power on the
Office. Several comments asserted that
Congress never expressly authorized the
Office to promulgate retroactive rules,
citing Landgraf v. USI Film Prods., 511
U.S. 244, 265 (1994) and Bowen v.
Georgetown Univ. Hosp., 488 U.S. 204,
208 (1988). A number of comments also
suggested that the retroactive effect of
proposed rule § 1.78 is contrary to
judicial precedent, citing Henriksen and
Hogan. Several comments argued that
applying the changes to § 1.75
retroactively would be unfair to the
applicants and a violation of due
process because applicants were not
given sufficient notice of the changes
when they filed applications. Lastly,
one comment argued that applying the
rule changes to pending applications is
an unconstitutional denial of due
process.
Response: The Office is not engaging
in retroactive rule making. This final
rule has a prospective effect only. The
Office’s decision to grandfather only
pending applications in which a first
Office action on the merits was mailed
before November 1, 2007 (the effective
date of the changes in this final rule)
with respect to the changes to § 1.75
does not constitute retroactive rule
making. Likewise, the Office’s decision
to grandfather only continuing
applications and requests for continued
examination that were filed before the
effective date of the final rule with
respect to §§ 1.78 and 1.114 (with a
provision that allows for at least ‘‘one
more’’ continuation application or
continuation-in-part application of an
application filed before the publication
date of this final rule) does not
constitute retroactive rule making.
‘‘A statute [or regulation] does not
operate ‘retroactively’ merely because it
is applied in a case arising from conduct
antedating the statute’s enactment.’’
Landgraf, 511 U.S. at 255. Rather, a
statute (or regulation) is retroactive if it
takes away or impairs vested rights
acquired under existing law, creates a
new obligation, imposes a new duty, or
attaches a new disability with respect to
transactions already completed. See
Landgraf, 511 U.S. at 269. The filing of
an application for patent does not create
a vested right or amount to a transaction
already completed. See Community TV,
Inc. v. FCC, 216 F.3d 1133, 1143 (D.C.
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Cir. 2000) (the Federal Communications
Commission is free to alter the criteria
for consideration of pending ‘‘upgrade’’
applications because the mere filing of
an application does not vest the
applicant with a legally cognizable
expectation interest); Chadmore
Communs. v. FCC, 113 F.3d 235, 240–
41 (D.C. Cir. 1997) (the mere filing of an
application does not vest an applicant
with a legally cognizable expectation
interest). In addition, the Office is not
changing the substantive criteria of
patentability. The Office is simply
revising the procedures an applicant
must follow for presenting more than
five independent claims or more than
twenty-five total claims in an
application, and for seeking continued
examination of an application via a
continuation application, continuationin-part application, or a request for
continued examination. See Landgraf,
511 U.S. at 275 (changes in procedural
rules may generally be applied in
actions arising before the change
without raising retroactivity concerns).
Finally, this final rule does not raise
constitutional due process concerns.
This rule change does not preclude an
applicant from filing an application or
receiving a patent containing any
number of claims. Rather, the changes to
§ 1.75 in this final rule simply revise the
procedures for presenting more than
five independent claims or more than
twenty-five total claims. As for the
changes to § 1.78 in this final rule, the
filing of an application does not vest an
applicant with a due process right to
obtain continued examination via a
continuation application, continuationin-part application, or a request for
continued examination for purposes of
presenting amendments, arguments, or
evidence that could have been
submitted prior to close of prosecution
in the initial application (or the priorfiled application).
Comment 333: A number of
comments suggested that the Office
should not retroactively affect any
pending applications when adopting the
changes to § 1.78. Specifically, the
comments disagreed with the Office’s
decision to apply the changes to § 1.78
to any applications filed on or after the
effective date of the final rule, which
would result in an applicant being able
to file only one continuation or
continuation-in-part application (and
not ‘‘one more’’ continuation or
continuation-in-part application) on or
after the effective date of the final rule
without meeting the requirements
specified in § 1.78(d)(1)(i) or (d)(1)(iii)
or including a petition under
§ 1.78(d)(1). The comments argued that
the changes would retroactively affect
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the prosecution of many pending
applications, particularly those that are
continued examination filings,
precluding any opportunity for
subsequent continued examination
filings. A number of comments also
argued that retroactively affecting the
pending applications would be unfair to
applicants because it would deprive
applicants of timely notice of the rule
changes and it would be a violation of
due process. Several comments argued
that retroactively affecting the pending
applications would require applicants to
review the pending applications to
determine whether to file additional
continuing applications to preserve the
patent rights of unclaimed subject
matter or restricted inventions and to
file many continuing applications before
the effective date. The comments further
argued that this would increase the cost
of prosecution and the Office’s backlog
of applications. One comment estimated
the cost of reviewing the pending
applications to be 180 million dollars
based on 600,000 pending applications.
A number of the comments suggested
that the changes should be applicable
only to claiming the benefit of
applications filed on or after the
effective date (i.e., the changes should
be applicable only to non-continuing
applications filed on or after the
effective date). One comment suggested
that the changes to § 1.78 should apply
to applications filed on or after the
effective date with an exception for any
applications that have a filing date
earlier than one year from the effective
date. One comment suggested that in the
determination of the number of
continued examination filings permitted
without a petition and a showing, the
Office should count only the continued
examination filings filed on or after
January 3, 2006. One comment
suggested that the Office should permit
applicants to file one more continued
examination filing on or after the
effective date.
Response: This final rule provides
that an applicant is not required to meet
the requirements set forth in § 1.78(d)(1)
if: (1) The application claims the benefit
under 35 U.S.C. 120, 121, or 365(c) only
of nonprovisional applications or
international applications filed before
the publication date of this final rule in
the Federal Register; and (2) there is no
other application filed on or after the
publication date of this final rule in the
Federal Register that also claims the
benefit under 35 U.S.C. 120, 121, or
365(c) of such prior-filed
nonprovisional applications or
international applications. This will
provide applicants with ‘‘one more’’
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46827
continuation application or
continuation-in-part application of an
application that was filed prior to the
publication date of this final rule in the
Federal Register without a petition and
showing. Thus, applicants are also
permitted to file a divisional application
in compliance with § 1.78(d)(1)(ii) of an
application that was filed prior to the
effective date of this final rule without
a petition and showing.
The rules of practice currently
provide that by presenting any paper
(including any continuation application,
continuation-in-part application, or
request for continued examination) to
the Office, the party presenting the
paper is certifying that to the best of the
party’s knowledge, information and
belief, formed after an inquiry
reasonable under the circumstances,
that the paper is not being presented for
any improper purpose, such as to harass
someone or to cause unnecessary delay
or to needlessly increase the cost of
prosecution before the Office. See
§ 10.18(b)(2)(i). Thus, as part of the
reasonable inquiry, the Office expects a
party to review applications to ensure
that the desired amendments,
arguments, or evidence that can be
submitted during the prosecution of the
prior-filed (or before the close of
prosecution in the) application are
submitted rather than waiting to make
such submission in a later-filed
continuation application. Therefore, it is
unclear why the final rule would
impose any significant additional cost
on applicants.
Comment 334: Several comments
suggested that if the Office adopts the
proposed changes to § 1.78, the Office
should publish the final rule well in
advance of the effective date to provide
sufficient time for applicants to adjust
their prosecution strategies in any
pending applications. A few comments
further suggested a time period of six
months to one year between the
publication of the final rule and the
effective date. Furthermore, a few
comments suggested that the changes to
§ 1.78 should be implemented in
phases. One of the comments provided
an example that the changes would
initially apply only to non-continuing
applications filed on or after the
effective date, and then six months after
the effective date, the changes would
apply to applications that have an
effective filing date more than four years
before the effective date.
Response: This final rule has been
published well (more than sixty days) in
advance of the November 1, 2007,
effective date of the changes in this final
rule. As previously discussed, this final
rule permits applicants to file ‘‘one
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more’’ continuation or continuation-inpart application of an application that
was filed prior to the publication date
of this final rule in the Federal Register
without a petition and showing, and to
file (at least) ‘‘one more’’ divisional
application in compliance with
§ 1.78(d)(1)(ii) of an application that was
filed prior to the effective date of this
final rule without a petition and
showing. The Office published the
Continuing Applications Proposed Rule
and the Claims Proposed Rule in the
Federal Register on January 3, 2006,
which set forth proposed changes to the
practice for continued examination
filings, patent applications containing
patentably indistinct claims, and
examination of claims in patent
applications. Applicants have been
provided with a time period of more
than one and a half years from the
publication date of the proposed rules to
the effective date of this final rule, and
a time period of more than sixty days
from the publication of the final rule to
the effective date. Therefore, applicants
should have sufficient advance notice of
the rule changes.
Comment 335: One comment
suggested a transitional practice for
divisional applications, permitting
benefit claims to be added only to
applications filed on or before the
effective date in serial divisional
applications.
Response: Section 1.78(d)(1)(ii) as
adopted in this final rule permits an
applicant to file a divisional application
of an application for the claims to a nonelected invention that has not been
examined if the application was subject
to a requirement for restriction. The
divisional application need not be filed
during the pendency of the application
subject to a requirement for restriction,
as long as the copendency requirement
of 35 U.S.C. 120 is met. Thus, applicant
may file the divisional application
during the pendency of the application
that was subject to a requirement for
restriction or the pendency of any
continuing application of such an
application.
Comment 336: A number of
comments suggested that the changes to
§ 1.75 should apply only to applications
filed on or after the effective date. A
number of comments disagreed with the
Office’s decision to apply the changes to
§ 1.75 to applications filed before the
effective date. Several comments further
argued that the cost of ‘‘retroactively’’
applying the rule changes would be
enormous to applicants, especially to
small entities, because most applicants
would be required to review their
pending applications for compliance
with the new requirement. Several
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comments estimated the cost to be 100
to 120 million dollars to designate
representative claims in pending
applications, and one comment
estimated the cost to be 180 million
dollars. Several comments argued that
small entities are less able to absorb
expenses associated with reviewing and
revising pending applications. This
could prevent small entities from
prosecuting pending applications.
Several comments argued that because
applicants already paid the increased
claims fees under the Consolidated
Appropriations Act, 2005, in the
pending applications for the Office to
examine all of the claims, the new
requirements would constitute a taking
by the Federal Government. Several
comments also argued that applicants
did not anticipate the additional costs in
reviewing and amending the
applications for compliance with the
new requirements.
Response: The Office has revised
§ 1.75 to provide that if an application
contains more than five independent
claims or more than twenty-five total
claims, the applicant must submit an
examination support document in
compliance with § 1.265. Of the
applications currently awaiting
examination for which claim data is
available in PALM (which is over ninety
percent of the applications for which
preexamination processing is complete),
about thirty percent contain more than
five independent claims or more than
twenty-five total claims. Therefore, the
Office’s decision to grandfather only
pending applications in which a first
Office action on the merits was mailed
before November 1, 2007 (the effective
date of the changes in this final rule)
with respect to the changes to § 1.75
will not affect the majority of
applications that are currently pending
before the Office. In addition, the
changes in this final rule do not
preclude an applicant from filing an
application or obtaining a patent
containing any number of claims, but
simply changes the procedures for
applications containing more than five
independent claims or more than
twenty-five total claims. Therefore,
there is no support for the proposition
that the changes in this final rule
amount to a ‘‘taking’’ by the
government. Additionally, § 1.117 as
adopted in this final rule provides that
if an amendment canceling a claim is
filed before an examination on the
merits has been made of the application,
the applicant may request a refund of
any excess claims fee paid on or after
December 8, 2004 (fees paid under the
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Consolidated Appropriations Act), for
such claim.
Comment 337: One comment
suggested that if the changes to § 1.75
are retroactively applied to applications
filed before the effective date, the Office
should automatically consider certain
claims as representative when applicant
fails to designate claims within the time
period set forth in a notice requiring the
designation of representative claims.
One comment inquired about requiring
applicants to take action on applications
in the backlog within the first month
following enactment of the proposed
rules. One comment suggested that the
Office should send a notice giving
applicant three months (extendable to
six months) within which to designate
the representative claims in each
pending application and, if necessary, to
file an examination support document.
Response: As discussed previously,
this final rule does not adopt the
‘‘representative claims’’ examination
approach. Under this final rule,
applicant is permitted to present more
than five independent claims or more
than twenty-five total claims if
applicant files an examination support
document before a first Office action on
the merits of an application. The Office
does not expect that most applicants
will need to take any action to comply
with the changes to § 1.75 in this final
rule within the first month following the
effective date of this final rule because
the majority of applications contain five
or fewer independent claims and
twenty-five or fewer total claims. The
Office will provide an applicant who
filed a nonprovisional application under
35 U.S.C. 111(a) before November 1,
2007, or a nonprovisional application
that entered the national stage after
compliance with 35 U.S.C. 37 before
November 1, 2007, and who would be
affected by the changes in the final rule,
with an opportunity to submit: (1) An
examination support document; (2) a
new set of claims such that the
application contains five or fewer
independent claims and twenty-five or
fewer total claims; or (3) a suggested
restriction requirement. Specifically, the
Office will issue a notice setting a twomonth time period that is extendable
under § 1.136(a) or (b) within which the
applicant must exercise one of these
options in order to avoid abandonment
of the application. The Office, however,
may combine such a notice with a
requirement for restriction, in which
case the applicant must make an
election responsive to the restriction
requirement and, if there are more than
five independent claims or more than
twenty-five total claims drawn to the
elected invention, the applicant must
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also: (1) File an examination support
document in compliance with § 1.265;
or (2) amend the application such that
it contains five or fewer independent
clams and twenty-five or fewer total
claims drawn to the elected invention.
Thus, if such a notice is combined with
a requirement for restriction, the
applicant does not have the option of
replying to such notice with a suggested
restriction requirement under § 1.142(c).
M. Miscellaneous
Comment 338: One comment
suggested that the changes to § 1.78 are
contrary to the purpose of the Bayh-Dole
Act.
Response: The Bayh-Dole University
and Small Business Patent Procedures
Act (Pub. L. 96–517, 94 Stat. 3015–28
(codified at 35 U.S.C. 200 et seq.)),
concerns patent rights in inventions
made with federal assistance.
Specifically, 35 U.S.C. 200 provides
that:
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It is the policy and objective of the
Congress to use the patent system to promote
the utilization of inventions arising from
federally supported research or development;
to encourage maximum participation of small
business firms in federally supported
research and development efforts; to promote
collaboration between commercial concerns
and nonprofit organizations, including
universities; to ensure that inventions made
by nonprofit organizations and small
business firms are used in a manner to
promote free competition and enterprise
without unduly encumbering future research
and discovery; to promote the
commercialization and public availability of
inventions made in the United States by
United States industry and labor; to ensure
that the Government obtains sufficient rights
in federally supported inventions to meet the
needs of the Government and protect the
public against nonuse or unreasonable use of
inventions; and to minimize the costs of
administering policies in this area.
The changes to § 1.78 adopted in this
final rule do not concern patent rights
in inventions made with federal
assistance and do not impinge upon any
of the policies or objectives set forth in
35 U.S.C. 200. The changes in this final
rule do not treat patent applications
resulting from federally supported
research differently from other patent
applications. The policy objectives of
the Bayh-Dole Act do not encourage or
condone more favorable treatment of
patent applications resulting from
federally supported research. See Univ.
of Rochester v. G.D. Searle & Co., 358
F.3d 916, 929, 69 U.S.P.Q.2d 1886, 1896
(Fed. Cir. 2004) (none of the eight policy
objectives of the Bayh-Dole Act
encourages or condones less stringent
application of the patent laws to
universities than to other entities).
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Comment 339: A number of
comments suggested that to help reduce
the backlog of pending applications the
Office should provide a procedure
under which an applicant may request
deferral of examination of the
application.
Response: The rules of practice
currently have a procedure under which
an applicant may request deferral of
examination. Specifically, § 1.103(d)
permits deferral of examination for up
to three years from the earliest filing
date for which a benefit is claimed
under title 35, United States Code. The
Office publishes any application in
which a deferral of examination under
§ 1.103(d) is requested. The entire
period of deferral is a reduction under
§ 1.704(c)(1) of any patent term
adjustment.
Comment 340: A number of
comments suggested variations of the
deferral of examination procedure under
§ 1.103(d), including, inter alia,
providing for automatic deferral of
examination, extending the period of
deferral, allowing third party requests
for examination of deferred
applications, eliminating any negative
impact on patent term adjustment
resulting from deferral, adopting
deferral of examination procedures used
in other countries such as Japan and
Canada, tying the period of deferral to
the actual filing date of the application
rather than the claimed benefit date, and
establishing deferral fees based on the
length of deferral.
Response: The deferral of examination
procedure set forth in § 1.103(d) was
used in fewer than two hundred
applications since November 29, 2000
(the effective date of § 1.103(d)). The
Office did not propose any changes to
the deferral of examination procedure in
the notices of proposed rulemaking
published on January 3, 2006, in the
Federal Register. In view of the
comments received on the deferral of
examination procedure, the Office is
studying whether changes (e.g., the
maximum deferral period, third party
request for examination, and patent
term adjustment) to the deferral of
examination procedure would be
appropriate.
Comment 341: Several comments
opposed third party participation, but
suggested that the Office could move
toward providing a post-grant
opposition period, similar to that
currently offered in Europe, during
which the public could oppose issued
patents and make prior art submissions
so the patent could receive a post-grant
review.
Response: Legislation regarding postgrant opposition and related
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participation by third parties is
currently pending before Congress. If
enacted, the Office will implement the
legislation accordingly.
Comment 342: A number of
comments suggested expanding the
opportunity under § 1.99 for third
parties to submit prior art references in
applications; for example, up to a first
Office action.
Response: The Office has proposed
changes to § 1.99 that would extend the
period for submission of information
from two months after pre-grant
publication of the application to six
months after pre-grant publication of the
application, or mailing of a notice of
allowance, whichever occurs first. See
Changes To Information Disclosure
Statement Requirements and Other
Related Matters, 71 FR at 38816, 38822,
1309 Off. Gaz. Pat. Office at 31, 36.
Comment 343: One comment
questioned applicant’s recourse if a
third party submission was filed in his
or her application.
Response: Applicant’s recourse would
be the same as it currently is when a
third party submits patents or
publications pursuant to § 1.99 in a
published patent application. Applicant
will have an opportunity to comment on
any patents or publications relied upon
by the examiner in a rejection of
applicant’s claims. Note, however, 35
U.S.C. 122(c) prohibits third party
protests.
Comment 344: Several comments
suggested that prior art submissions by
third parties should be required to
conform to current information
disclosure statement rules. These
comments also suggested that either
statements of relevance for each
submitted document, or arguments why
the claims are unpatentable in view of
the cited documents, should accompany
the submissions.
Response: Prior to the publication of
a patent application, a third party may
file prior art submissions in compliance
with the requirements of § 1.291 in the
application. After the publication of the
application, § 1.99 only permits a third
party to file up to ten patents or
publications per submission. Section
1.99 does not permit the third party to
file comments regarding the documents,
or comments regarding the patentability
of the claims in view of the documents.
Additionally, permitting a third party to
file an explanation of relevance would
rise to the level of a protest, which is
prohibited by 35 U.S.C. 122(c).
Comment 345: Several comments
suggested allowing a third party to
request examination of an application
upon paying a fee during a time frame
such as between thirty-six and forty-
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eight months from the application filing
date. One comment suggested
permitting third parties to request
accelerated examination of longpending applications by submitting
documents required for accelerated
examination.
Response: Under the current patent
laws and regulations, it is not proper for
a third party to be involved in the
examination of an application owned by
another which includes seeking to
accelerate the examination of an
application that is properly awaiting its
turn to be examined. Permitting a third
party to advance prosecution of an
application may be considered in the
future for those instances in which an
applicant has requested deferral of the
examination. However, at this time, the
Office has not elected to amend
§ 1.103(d) to permit such action, in
order to further study the issue and to
provide the public additional
opportunity to comment.
Comment 346: One comment
suggested the use of authorized third
party prior art searches.
Response: Patents or publications
filed by a third party in compliance
with § 1.99 may be entered in the file of
a published application. Examiners may
use any of these references in a
rejection, if appropriate.
Comment 347: Several comments
were critical of the Office’s position that
the proposed changes to the practice for
continuing applications, request for
continued examination, and
applications containing patentably
indistinct claims will not create any
additional work for the applicant.
Response: The changes being adopted
in this final rule will not require any
additional submissions for the majority
of patent applications. Prosecution,
however, may be more compact since
the number of continuing applications
and requests for continued examination
permitted without any justification is
being limited. Nevertheless, the changes
being adopted in this final rule will
result in more effective and efficient
examination without any additional
work on the part of the majority of
applicants.
Comment 348: Several comments
recommended that the Office should
conduct a public hearing before
adopting the rule changes. One
comment suggested that the Office
should issue a green paper or advance
notice of proposed rule making to
receive more input and perform a costbenefit analysis on the rule changes.
One comment recommended that the
Office should form a patent practice
advisory committee, consisting of
volunteers from the patent bar, for the
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purpose of studying problems
experienced by the Office and proposing
solutions that would be tailored to
address those problems. The comments
recommended that the Office should
bring together all the relevant parties,
including the Office, patent
practitioners, patentees, litigators, and
judges, to arrive at a solution that
benefits all parties in the patent system.
Response: 35 U.S.C. 2(b)(2)(B) directs
the Office to follow the procedures set
forth in 5 U.S.C. 553 in adopting
changes to the rules of practice, and 35
U.S.C. 3(a)(2)(B) directs the Office to
consult with the Patent Public Advisory
Committee when proposing or adopting
changes to the rules of practice that
change user fees or are subject to notice
and comment under 5 U.S.C. 553. The
Office published notices of proposed
rule making pursuant to 5 U.S.C. 553(b)
in advance of this final rule, provided
an extended comment period to give
interested persons an opportunity to
submit written data, views, or
arguments pursuant to 5 U.S.C. 553(c),
and has published this final rule at least
thirty days in advance of its effective
date pursuant to 5 U.S.C. 553(d). The
Office also consulted with the Patent
Public Advisory Committee prior to
publishing the notices of proposed rule
making and this final rule. The Office
also conducted four public meetings to
obtain feedback from the public on the
proposed changes which resulted in the
changes being adopted in this final rule:
(1) The first in Chicago, Illinois, on
February 1, 2006; (2) the second in
Berkeley, California, on February 28,
2006; (3) the third in Houston, Texas, on
March 22, 2006; and (4) the fourth in
Alexandria, Virginia (at the Office’s
Carlyle campus) on April 25, 2006. The
number of comments submitted in
response to the notices of proposed rule
making indicates that interested persons
and organizations have been given
ample opportunity to provide input on
the changes being adopted in this final
rule.
IV. Rule Making Considerations
A. Administrative Procedure Act
This notice adopts changes to the
rules of practice that concern the
process for applying for a patent,
namely, continuing applications and
requests for continued examination
practices, the treatment of applications
containing more than a set number of
independent or total claims, and the
treatment of multiple applications
containing patentably indistinct claims.
The changes being adopted in this
notice do not change the substantive
criteria of patentability and do not
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effectively foreclose the applicant’s
opportunity to make a case on the
merits (i.e., the changes being adopted
in this final rule continue to provide
patent applicants with numerous
opportunities). Therefore, these rule
changes involve interpretive rules, or
rules of agency practice and procedure.
See Bachow Communs., Inc. v. FCC, 237
F.3d 683, 690 (DC Cir. 2001) (rules
governing an application process are
‘‘rules of agency organization,
procedure, or practice’’ and exempt
from the Administrative Procedure Act’s
notice and comment requirement); see
also Fressola v. Manbeck, 36 USPQ2d
1211, 1215 (D.D.C. 1995) (‘‘it is
extremely doubtful whether any of the
rules formulated to govern patent or
trade-mark practice are other than
‘interpretive rules, general statements of
policy, * * * procedure, or practice.’ ’’)
(quoting C.W. Ooms, The United States
Patent Office and the Administrative
Procedure Act, 38 Trademark Rep. 149,
153 (1948)). Accordingly, prior notice
and an opportunity for public comment
were not required pursuant to 5 U.S.C.
553(b)(A) (or any other law), and thirtyday advance publication is not required
pursuant to 5 U.S.C. 553(d) (or any other
law). Nevertheless, the Office sought
public comment on proposed changes to
these rules of practice to obtain the
benefit of such input prior to adopting
the changes to the rules of practice in
this final rule.
B. Regulatory Flexibility Act
As prior notice and an opportunity for
public comment are not required
pursuant to 5 U.S.C. 553 (or any other
law), neither a regulatory flexibility
analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601
et seq.) are required. See 5 U.S.C. 603.
Nevertheless, the Office published
notices of proposed rule making setting
forth the factual basis for certification
under the Regulatory Flexibility Act and
sought public comment on that
certification. See Changes to Practice for
the Examination of Claims in Patent
Applications, 71 FR at 66, 1302 Off.
Gaz. Pat. Office at 1333, and Changes to
Practice for Continuing Applications,
Requests for Continued Examination
Practice, and Applications Containing
Patentably Indistinct Claims, 71 FR at
56–57, 1302 Off. Gaz. Pat. Office at
1325. 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 in this final rule will not have
a significant economic impact on a
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substantial number of small entities. See
5 U.S.C. 605(b).
This final rule provides that: (1) A
third or subsequent continuation or
continuation-in-part application or any
second or subsequent request for
continued examination must include a
showing as to why the amendment,
argument, or evidence sought to be
entered could not have been submitted
prior to the close of prosecution after a
first and second continuation or
continuation-in-part application and a
request for continued examination; (2)
any divisional application be the result
of a requirement to comply with the
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; (3) an
application that contains or is amended
to contain more than five independent
claims or more than twenty-five total
claims must include an examination
support document under 37 CFR 1.265
that covers each claim (whether in
independent or dependent form) before
the first Office action on the merits; and
(4) multiple applications that have the
same claimed filing or priority date,
substantial overlapping disclosure, a
common inventor, and a common
assignee include either an explanation
as to how the claims are patentably
distinct, or a terminal disclaimer and
explanation as to why patentably
indistinct claims have been filed in
multiple applications.
In response to the Office’s
certification in the notices of proposed
rule making, the Small Business
Administration Office of Advocacy
(SBA-Advocacy) submitted a comment
contending that the proposed changes
are likely to have a significant economic
impact on a substantial number of small
entities, including small businesses and
small independent inventors. SBAAdvocacy recommended that the Office
conduct a supplemental Initial
Regulatory Flexibility Analysis before
publishing a final rule.
The Office’s analysis of the proposed
rules indicated that the rules would not
have a significant economic impact on
a substantial number of small entities.
The Office considered all public
comments addressing small entities,
including those submitted by SBAAdvocacy. In response to these
comments, this final rule incorporates a
number of revisions designed to further
reduce the number of small entities
affected by the changes and the impacts
on small entities. These changes in this
´
final rule vis-a-vis the proposed rules
that reduce small entity impacts are as
follows: (1) This final rule adopts an
examination support document
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requirement threshold of five
independent claims or twenty-five total
claims, rather than ten representative
claims; (2) this final rule provides that
small entities as defined by the
Regulatory Flexibility Act are exempt
from the requirement that an
examination support document must,
for each cited reference, include an
identification of all of the limitations of
each of the claims that are disclosed by
the reference; (3) this final rule adopts
a continued examination filing petition
threshold of two continuing
applications (continuation or
continuation-in-part applications), plus
a request for continued examination in
any one of the initial or two continuing
applications, rather than one
continuation application, continuationin-part application, or request for
continued examination; (4) this final
rule does not require that a divisional
application be filed during pendency of
initial application; and (5) this final rule
provides for at least ‘‘one more’’
continuation or continuation-in-part
application after the effective date,
regardless of the number of previous
continued examination filings.
In addition, the Office commissioned
a detailed analysis of the impacts of this
final rule on small entities. The analysis
concludes that this final rule is not
expected to result in a significant
economic impact on a substantial
number of small entities. The analysis
measured economic impact in terms of
annualized incremental cost as a
percentage of revenue. The analysis
indicated that the incremental cost (not
annualized) would be between $2,563
and $13,121 for an entity who would be
required to file an examination support
document, a petition for an additional
continued examination filing, or both.
The analysis presumed that an
economic impact greater than three
percent of annualized incremental cost
as a percentage of revenue was a
significant impact. The analysis
indicated that no small entities fell into
this category. The analysis also
presumed that an economic impact
greater than one percent of annualized
incremental cost as a percentage of
revenue was a more moderate impact.
The analysis indicated that fewer than
one percent of small entities fell into
this category. The analysis also
presumed that a substantial number of
small entities are affected if more than
twenty percent of small entities are
impacted. The analysis indicated that
about 1.0 percent of small entities
would be affected by the requirement to
submit an examination support
document, that about 2.7 percent of
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small entities would be affected by the
requirement to submit a petition for an
additional continued examination filing,
and that about 0.3 percent of small
entities would be affected by both the
requirement to submit an examination
support document and the requirement
to submit a petition for an additional
continued examination filing. A copy of
the report containing this analysis is
available on the Office’s Internet Web
site at https://www.uspto.gov.
As a result of this analysis, the Office
has determined that it is appropriate to
make a certification that the changes
being adopted in this final rule would
not have a significant economic impact
on a substantial number of small
entities. The Office has revised the final
rule requirements, as discussed
previously, to further reduce economic
impacts on small entities.
SBA-Advocacy commented that while
the Office asserts that preparation of the
examination support document should
cost about $2,500, small entities
contend that completing an examination
support document will be more costly,
time consuming and restrict their ability
to prosecute patents vigorously. SBAAdvocacy also commented that small
entity representatives have provided
feedback that completion of an
examination support document could
cost from $25,000 to $30,000.
The Claims Proposed Rule referenced
a $2,500 figure covering a patent novelty
search, analysis, and opinion, as
reported in a 2003 survey conducted by
the American Intellectual Property Law
Association (AIPLA). The Office agrees
with the comments that this figure is
probably less than the cost of an
examination support document in most
situations. Therefore, the Office has
further analyzed costs based on the
modified examination support
document requirements applicable to
small entities. The analysis models cost
variability based on the number of
claims the examination support
document must address, and on
whether or not a prior art search was
conducted when the application was
prepared. Based on this analysis, the
Office estimates that the examination
support document costs for small
entities will range from $2,563 up to
$13,121, although this latter figure
assumes the examination support
document must address as many as fifty
independent claims or three hundred
and fifty total claims. Only a small
number of small entities, however, will
be required to prepare an examination
support document, and nearly all of
these will incur costs towards the lower
end of the range. Thus, the Office does
not expect the final rule to result in a
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significant impact on a substantial
number of small entities.
SBA-Advocacy commented that small
entity representatives have asserted that,
taken together, the two proposed
changes would increase the cost of
application preparation and hinder the
patent prosecution process.
As discussed previously, the Office
commissioned a detailed analysis of the
impact of the final rule on small
entities. The analysis explicitly
considered the combined cost of both
proposed rules (which have been
combined into a single final rule). The
analysis concludes that the final rule is
not expected to result in a significant
economic impact on a substantial
number of small entities.
SBA-Advocacy commented that small
entity representatives have raised
concerns that the proposed changes will
significantly impact the most valuable
and commercially viable patents
because those types of patents typically
involved a higher number of
continuations.
The Office notes that there are studies
espousing the position that many
commercially valuable patents are the
result of a continuing application, or of
a second or subsequent continuing
application. However, these studies do
not support the position that the
applicants could not have obtained
these commercially valuable patents but
for the availability of an unlimited
number of continuing applications. That
is, these studies do not show that these
commercially valuable patents could
not have been obtained via two or fewer
continuing applications prosecuted with
a reasonable amount of foresight and
diligence. Thus, these studies do not
demonstrate that these commercially
valuable patents happen to be the result
of a continuing application or of
multiple continuing applications for any
reason other than simply because the
prosecution tactics employed in the
applications underlying these patents
were based upon the availability of an
unlimited number of continuing
applications.
The analysis commissioned by the
Office specifically considered the claim
that the most valuable and
commercially viable patents are those
types of patents that typically involved
a higher number of continuations. The
Office ultimately rejected the claim that
this final rule will preclude applicants
from being able to obtain a patent on the
most valuable and commercially viable
patents due to the speculative nature of
the nexus drawn between the
availability of an unlimited number of
continuing applications and an
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applicant’s ability to obtain these
commercially valuable patents.
SBA-Advocacy commented that small
entity representatives have indicated
that limiting applicants to ten
representative claims would make it
very difficult to properly identify a
potential patent, could create future
liability concerns, and would weaken
potential patents.
The final rule requirements apply to
patent applications with more than five
independent claims or more than
twenty-five total claims, rather than ten
representative claims. As discussed
previously, applicants with more than
five but less than fifteen independent
claims, or more than twenty-five but
less than seventy-five total claims, to an
invention are able to prosecute their
application in a manner that does not
trigger the claims or continuations
requirements. Specifically, an applicant
may do this by submitting an initial
application containing up to five
independent claims and up to twentyfive total claims, and then adding a
similar number of claims in each of two
continuation applications (or two
continuation-in-part applications, or
one continuation application and one
continuation-in-part application)
permitted without a petition. Moreover,
even for those applications that will
require an examination support
document, the requirement does not
‘‘limit’’ applicants to any particular
number of claims. Applicants may
continue to submit as many claims as
necessary to appropriately claim their
inventions, even if doing so required
them to prepare and submit an
examination support document.
SBA-Advocacy commented that small
entity representatives have contended
that limiting continuation applications
and examinations would inhibit their
ability to enhance their applications,
significantly increase costs through new
fees, and force small entities to seek
review through the very expensive
appeals process. Small entity
representatives thus assert that limiting
the number of continuations could
severely weaken small entities’ ability to
protect their patents.
The Office analysis indicates that the
continued examination filing
requirements adopted in this final rule
will not lead to significant cost
increases nor will it have a significant
economic impact on a substantial
number of small entities. The
requirements are necessary to ensure
that patent applications are of
reasonable quality and that applicants
pursue their patents in good faith. The
excessive use of continued examination
filings has been a major factor in the
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growing backlog of unexamined
applications. With respect to having to
use the appeals process in place of
additional continued examination
filings, if an applicant disagrees with
the examiner’s rejections, the applicant
should file an appeal rather than filing
a continuation application or a request
for continued examination, for reasons
discussed in detail in the statement of
considerations for the final rule. The
Office believes that applicants should
have sufficient opportunity to place the
application in condition for appeal
during the prosecution of the initial
application, two continuing
applications, and a request for
continued examination. An applicant
who considers this to be insufficient
may file a third or subsequent
continuing application or second or
subsequent request for continued
examination with a petition showing
why the amendment, argument, or
evidence sought to be entered could not
have been previously submitted.
SBA-Advocacy commented that the
proposed changes will affect a
substantial number of small entities,
and that the two proposed changes to
the rules reshape the basic rights of any
small entity that files a patent
application.
The Office agrees that the final rule
places new requirements on the current
patent application process. However,
the Office’s analysis indicates that the
rule will not have a significant
economic impact on a substantial
number of small entities. In fact, only a
small proportion of small entities will
be affected by the changes in this final
rule.
SBA-Advocacy commented that small
entity representatives have contended
that the definition of small entity that
the Office uses in its certification is for
calculating filing fees and excludes any
small entity that has a contractual
arrangement involving the invention
with a larger company. SBA-Advocacy
commented that small entity
representatives have further asserted
that small business size standards for
Regulatory Flexibility Act purposes do
not include this restriction so the
number of small businesses affected is
likely to be larger than stated in the
certification.
The Regulatory Flexibility Act
permits an agency head to establish, for
purposes of Regulatory Flexibility Act
analysis and certification, one or more
definitions of ‘‘small business concern’’
that are appropriate to the activities of
the agency, after consultation with the
Office of Advocacy of the Small
Business Administration and after
opportunity for public comment. See 5
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U.S.C. 601(3) and 13 CFR 121.903(c).
Pursuant to this authority, the Office has
established the following definition of
small business concern for purposes of
the Office conducting an analysis or
making a certification under the
Regulatory Flexibility Act for patentrelated regulations: A small business
concern for Regulatory Flexibility Act
purposes for patent-related regulations
is a business or other concern that: (1)
Meets the Small Business
Administration’s definition of a
‘‘business concern or concern’’ set forth
in 13 CFR 121.105; and (2) meets the
size standards set forth in 13 CFR
121.802 for the purpose of paying
reduced patent fees, namely, an entity:
(a) Whose number of employees,
including affiliates, does not exceed 500
persons; and (b) which has not assigned,
granted, conveyed, or licensed (and is
under no obligation to do so) any rights
in the invention to any person who
made it and could not be classified as
an independent inventor, or to any
concern which would not qualify as a
non-profit organization or a small
business concern under this definition.
See Business Size Standard for Purposes
of United States Patent and Trademark
Office Regulatory Flexibility Analysis for
Patent-Related Regulations, 71 FR
67109, 67112 (Nov. 20, 2006), 1313 Off.
Gaz. Pat. Office 60, 63 (Dec. 12, 2006)
(notice). Prior to establishing this
definition of small business concern for
purposes of the Office conducting an
analysis or making a certification under
the Regulatory Flexibility Act for patentrelated regulations, the Office consulted
with the Small Business Administration
Office of Advocacy and published such
a definition for public comment. See
Size Standard for Purposes of United
States Patent and Trademark Office
Regulatory Flexibility Analysis for
Patent-Related Regulations, 71 FR
38388 (Jul. 6, 2006), 1309 Off. Gaz. Pat.
Office 37 (Aug. 1, 2006) (notice). The
Small Business Administration small
entity size standards set forth in 13 CFR
121.802 excludes any business concern
that has assigned, granted, conveyed, or
licensed any rights in the invention to
an entity which would not qualify for
small entity status.
Nevertheless, in analyzing the
provisions of the final rule, the Office
explicitly considered a sensitivity
analysis that assumed all patent
applicants qualified as small entities.
Even under this sensitivity analysis, this
final rule is not expected to result in a
significant impact on a substantial
number of small entities.
SBA-Advocacy suggested that with
respect to the continued examination
filing requirements, the Office should
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increase the number of permissible
continuing applications.
The final rule changes the continued
examination filing petition threshold
from a single continuation application,
continuation-in-part application, or
request for continued examination as
proposed to two continuing applications
(continuation or continuation-in-part
applications), and a single request for
continued examination in any one of the
initial or two continuing applications.
SBA-Advocacy suggested that with
respect to the continued examination
filing requirement, the Office should
consider increasing the fees for
additional continuation applications.
Currently, patent application and
excess claims fees are set by statute (35
U.S.C. 41(a)). In 2002, the Office
proposed a patent fee structure that
included a graduated excess claims fees
schedule and additional fees for
continued examination filings. As
discussed previously, however, the
Office was unable to garner sufficient
support from patent user groups for a
patent fee structure including a
graduated excess claims fees schedule
or any additional fees for continued
examination filings. Therefore, the
Office did not pursue this alternative.
SBA-Advocacy suggested that with
respect to the continued examination
filing requirement, the Office should
defer review of subsequent continuation
applications.
The Office considered expanding the
deferral of examination provisions to
allow a longer deferral of examination
period. The Office currently has a
provision (37 CFR 1.103(d)) under
which an applicant may request deferral
of examination for up to three years
from the earliest filing date for which a
benefit is claimed. As discussed
previously, the Office is studying
whether changes (e.g., the maximum
deferral period, third party request for
examination, and patent term
adjustment) to the deferral of
examination procedure would be
appropriate.
SBA-Advocacy suggested that with
respect to the claims requirements, the
Office should expand the number of
representative claims included in initial
review.
The Office has revised the final rule
to change the examination support
document threshold from ten
representative claims to five
independent claims or twenty-five total
claims. As discussed previously,
however, applicants with more than five
but less than fifteen independent
claims, or more than twenty-five but
less than seventy-five total claims, to an
invention are able to prosecute their
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46833
application in a manner that does not
trigger the claims or continuations
requirements.
SBA-Advocacy suggested that with
respect to the claims requirements, the
Office should provide expedited review
of applications that contain ten or fewer
representative claims. The Office has
considered the suggestion to provide
expedited examination to applications
containing less than a set number of
claims. As discussed previously, the
Office currently has an accelerated
examination program for applicants
who limit the number of claims in their
applications (to no more than three
independent claims and no more than
twenty total claims) and who also
provide an accelerated examination
support document. Therefore, the Office
did not pursue this alternative in the
final rule.
SBA-Advocacy suggested that with
respect to the claims requirements, the
Office should not apply the regulation
to the backlog of pending unexamined
applications.
The Office has considered not
applying the claims requirement to
pending applications that have not yet
been examined to minimize the impact
on small entities. The examination
support document threshold being
adopted in this final rule (i.e., more than
five independent claims or more than
twenty-five total claims) means that
most small entity applications will not
be impacted by the final rule or the
decision to apply the final rule to the
backlog of unexamined applications.
Given the current backlog of over
700,000 unexamined applications, a
decision to not apply the changes to the
backlog of unexamined applications
would mean that it would be calendar
year 2010 before the Office would see
any benefit from the change, and that
the Office (and applicants) would be in
a transition state until late calendar year
2011. Therefore, this suggestion was not
adopted in the final rule.
The Office also received a number of
additional comments from the public
generally asserting that the Office did
not comply with the requirements of the
Regulatory Flexibility Act in certifying
that the changes in this rule making will
not have a significant economic impact
on a substantial number of small
entities. The comments stated that: (1)
In light of the fact that several large
companies support the proposed
changes it is questionable whether the
rule changes are truly neutral towards
small companies and that a bias in favor
of large companies and against small
entities could be in violation of the
Regulatory Flexibility Act; (2) the
Office’s certification did not adequately
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address the impact of the proposed rules
on small entities, and the Office failed
to provide a credible factual basis to
justify its certification that the proposed
rules would not have a significant
economic impact on a substantial
number of small entities in compliance
with 5 U.S.C. 605(b); (3) the rule
changes would have a significant
economic impact on a substantial
number of small entities seeking patents
due to the additional costs associated
with preparing an application,
establishing the required showing under
37 CFR 1.78(d)(1)(vi) and 1.114(g), and
supplying an examination support
document in compliance with 37 CFR
1.265, and would hinder the abilities of
small entities to enhance their
applications and protect their
inventions; (4) the definition of small
entities used by the Office in its
certification of the proposed rules is for
the purpose of paying reduced patent
fees and excludes any application from
a small business that has assigned,
granted, conveyed, or licensed any
rights in the invention to an entity
which would not qualify for small entity
status; (5) the Office should prepare an
initial Regulatory Flexibility Analysis
and republish the proposed rules before
issuing any final rule to enable the
Office to closely examine the impact on
the affected small entities, encourage
small entities to comment on additional
information provided by the analysis,
identify viable regulatory alternatives to
the proposed rules, and demonstrate the
Office’s compliance with the Regulatory
Flexibility Act; (6) the Office did not
describe any viable alternatives to the
proposed rules to provide regulatory
relief to small entities as required under
5 U.S.C. 603(c); (7) the rule changes
would be invalid and vulnerable to
challenges under 5 U.S.C. 611 if the
Office fails to comply with the
requirements of the Regulatory
Flexibility Act; and (8) the Office should
exempt small entities from complying
with the proposed rules to avoid further
scrutiny under the Regulatory
Flexibility Act.
The Office has received comments
from some large entities that the
changes being adopted in this final rule
have a bias against large entities, and
has received comments from small
entities that the changes being adopted
in this final rule have a bias in favor of
large entities. The changes being
adopted in this final rule are neutral
towards both small entities and large
entities. That several large entities
support the changes being adopted in
this final rule is more likely indicative
of a willingness to take a systemic view
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with respect to the need to take more
significant steps to address patent
quality and pendency.
As discussed previously, the Office
commissioned a detailed analysis of the
final rule’s impact on small entities. As
a result of this analysis, the Office has
determined that it is appropriate to
make a certification that the changes
being adopted in this final rule would
not have a significant economic impact
on a substantial number of small
entities. Therefore, the Office is not
required to conduct a Regulatory
Flexibility Analysis.
Pursuant to 5 U.S.C. 605(b), the
requirements in 5 U.S.C. 603 and 604
for an initial and final Regulatory
Flexibility Analysis (including
identification of viable regulatory
alternatives to the proposed rules) do
not apply if the agency head certifies
that the changes will not have a
significant economic impact on a
substantial number of small entities. In
accordance with 5 U.S.C. 605(b), 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
proposed changes would not have a
significant economic impact on a
substantial number of small entities.
The Office considers this rule making
to be in compliance with the
requirements of the Regulatory
Flexibility Act. Thus, the possibility of
legal action does not warrant a decision
to delay proceeding with the changes
being adopted in this final rule to allow
for preparation of an initial and final
Regulatory Flexibility Analysis, or to
completely exempt small entities from
complying with the changes being
adopted in this final rule.
C. Executive Order 13132 (Federalism)
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).
D. Executive Order 12866 (Regulatory
Planning and Review)
This rule making has been determined
to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993),
as amended by Executive Order 13258
(Feb. 26, 2002) and Executive Order
13422 (Jan. 18, 2007).
E. Executive Order 13175 (Tribal
Consultation)
This rule making will not: (1) Have
substantial direct effects on one or more
Indian tribes; (2) impose substantial
direct compliance costs on Indian tribal
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governments; or (3) preempt tribal law.
Therefore, a tribal summary impact
statement is not required under
Executive Order 13175 (Nov. 6, 2000).
F. Executive Order 13211 (Energy
Effects)
This rule making is not a significant
energy action under Executive Order
13211 because this rule making is not
likely to have a significant adverse effect
on the supply, distribution, or use of
energy. Therefore, a Statement of Energy
Effects is not required under Executive
Order 13211 (May 18, 2001).
G. Executive Order 12988 (Civil Justice
Reform)
This rule making meets applicable
standards to minimize litigation,
eliminate ambiguity, and reduce burden
as set forth in sections 3(a) and 3(b)(2)
of Executive Order 12988 (Feb. 5, 1996).
H. Executive Order 13045 (Protection of
Children)
This rule making is not an
economically significant rule and does
not concern an environmental risk to
health or safety that may
disproportionately affect children under
Executive Order 13045 (Apr, 21, 1997).
I. Executive Order 12630 (Taking of
Private Property)
This rule making will not effect a
taking of private property or otherwise
have taking implications under
Executive Order 12630 (Mar. 15, 1988).
J. Congressional Review Act
Under the Congressional Review Act
provisions of the Small Business
Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), the United
States Patent and Trademark Office will
submit a report containing this final rule
and other required information to the
U.S. Senate, the U.S. House of
Representatives and the Comptroller
General of the Government
Accountability Office. The changes in
this final rule will not result in an
annual effect on the economy of 100
million dollars or more, a major increase
in costs or prices, or significant adverse
effects on competition, employment,
investment, productivity, innovation, or
the ability of United States–based
enterprises to compete with foreign–
based enterprises in domestic and
export markets. Therefore, this final rule
is not a ‘‘major rule’’ as defined in 5
U.S.C. 804(2).
K. Unfunded Mandates Reform Act of
1995
The changes in this final rule will not
result in the expenditure by State, local,
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and tribal governments, in the aggregate,
or by the private sector, of 100 million
dollars or more in any one year, and it
will not significantly or uniquely affect
small governments. Therefore, no
actions are necessary under the
provisions of the Unfunded Mandates
Reform Act of 1995. See 2 U.S.C. 1501
et seq.
L. National Environmental Policy Act
This rule making will not have any
effect on the quality of environment and
is thus categorically excluded from
review under the National
Environmental Policy Act of 1969. See
42 U.S.C. 4321 et seq.
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M. National Technology Transfer and
Advancement Act
The requirements of section 12(d) of
the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C.
272 note) are inapplicable because this
rule making does not contain provisions
which involve the use of technical
standards.
N. Paperwork Reduction Act
This final rule 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 final rule
has been reviewed and approved by
OMB under OMB control number 0651–
0031. This final rule provides that: (1)
A third or subsequent continuation or
continuation–in–part application or any
second or subsequent request for
continued examination must include a
showing that the amendment, argument,
or evidence sought to be entered could
not have been submitted prior to the
close of prosecution after a first and
second continuation or continuation–
in–part application and a request for
continued examination; (2) an
application that contains or is amended
to contain more than five independent
claims or more than twenty–five total
claims must include an examination
support document under 37 CFR 1.265
that covers each claim (whether in
independent or dependent form) before
the issuance of a first Office action on
the merits; and (3) multiple applications
that have the same claimed filing or
priority date, substantial overlapping
disclosure, a common inventor, and a
common assignee must include either
an explanation of how the claims are
patentably distinct, or a terminal
disclaimer and explanation of why
patentably indistinct claims have been
filed in multiple applications. The
United States Patent and Trademark
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Office has resubmitted 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
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
September of 2007.
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:
2,508,139.
Estimated Time Per Response: 1
minute and 48 seconds to 24 hours.
Estimated Total Annual Burden
Hours: 3,724,791 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
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46835
collected; and (4) ways to minimize the
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 A. Clarke, 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.
I For the reasons set forth in the
preamble, 37 CFR part 1 is 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:
I
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.17 is amended by revising
paragraph (f) to read as follows:
I
§ 1.17 Patent application and
reexamination processing fees.
*
*
*
*
*
(f) For filing a petition under one of
the following sections which refers to
this paragraph: $400.00
§ 1.36(a)—for revocation of a power of
attorney by fewer than all of the
applicants.
§ 1.53(e)—to accord a filing date.
§ 1.57(a)—to accord a filing date.
§ 1.78(d)(1)(vi)—for a continuing
application not provided for in
§§ 1.78(d)(1)(i) through (d)(1)(v).
§ 1.114(g)—for a request for continued
examination not provided for in
§ 1.114(f).
§ 1.182—for decision on a question
not specifically provided for.
§ 1.183—to suspend the rules.
§ 1.378(e)—for reconsideration of
decision on petition refusing to accept
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delayed payment of maintenance fee in
an expired patent.
§ 1.741(b)—to accord a filing date to
an application under § 1.740 for
extension of a patent term.
*
*
*
*
*
I 3. Section 1.26 is amended by revising
paragraphs (a) and (b) to read as follows:
§ 1.26
Refunds.
(a) The Director may refund any fee
paid by mistake or in excess of that
required. Except as provided in § 1.117
or § 1.138(d), a change of purpose after
the payment of a fee, such as when a
party desires to withdraw a patent filing
for which the fee was paid, including an
application, an appeal, or a request for
an oral hearing, will not entitle a party
to a refund of such fee. The Office will
not refund amounts of twenty-five
dollars or less unless a refund is
specifically requested, and will not
notify the payor of such amounts. If a
party paying a fee or requesting a refund
does not provide the banking
information necessary for making
refunds by electronic funds transfer (31
U.S.C. 3332 and 31 CFR part 208), or
instruct the Office that refunds are to be
credited to a deposit account, the
Director may require such information,
or use the banking information on the
payment instrument to make a refund.
Any refund of a fee paid by credit card
will be by a credit to the credit card
account to which the fee was charged.
(b) Any request for refund must be
filed within two years from the date the
fee was paid, except as otherwise
provided in this paragraph, or in
§ 1.28(a), § 1.117(b), or § 1.138(d). If the
Office charges a deposit account by an
amount other than an amount
specifically indicated in an
authorization (§ 1.25(b)), any request for
refund based upon such charge must be
filed within two years from the date of
the deposit account statement indicating
such charge, and include a copy of that
deposit account statement. The time
periods set forth in this paragraph are
not extendable.
*
*
*
*
*
I 4. Section 1.52 is amended by revising
paragraph (d)(2) to read as follows:
§ 1.52 Language, paper, writing, margins,
compact disc specifications.
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*
*
*
*
*
(d) * * *
(2) Provisional application. If a
provisional application is filed in a
language other than English and the
benefit of such provisional application
is claimed in a nonprovisional
application, an English language
translation of the non-English language
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provisional application will be required
in the provisional application. See
§ 1.78(b).
*
*
*
*
*
I 5. Section 1.53 is amended by revising
paragraphs (b) and (c)(4) to read as
follows:
§ 1.53 Application number, filing date, and
completion of application.
*
*
*
*
*
(b) Application filing requirements—
Nonprovisional application. The filing
date of an application for patent filed
under this section, except for a
provisional application under paragraph
(c) of this section or a continued
prosecution application under
paragraph (d) of this section, is the date
on which a specification as prescribed
by 35 U.S.C. 112 containing a
description pursuant to § 1.71 and at
least one claim pursuant to § 1.75, and
any drawing required by § 1.81(a) are
filed in the Patent and Trademark
Office. No new matter may be
introduced into an application after its
filing date. A continuing application,
which may be a continuation,
divisional, or continuation-in-part
application, may be filed under this
section if the conditions specified in 35
U.S.C. 120, 121, or 365(c) and § 1.78 are
met.
(1) A continuation or divisional
application that names as inventors the
same or fewer than all of the inventors
named in the prior application may be
filed under paragraph (b) or (d) of this
section. A continuation or divisional
application naming an inventor not
named in the prior application must be
filed under paragraph (b) of this section.
See § 1.78(a)(2) for the definition of a
divisional application and § 1.78(a)(3)
for the definition of a continuation
application.
(2) A continuation-in-part application
must be filed under paragraph (b) of this
section. See § 1.78(a)(4) for the
definition of a continuation-in-part
application.
(c) * * *
(4) A provisional application is not
entitled to the right of priority under 35
U.S.C. 119 or 365(a) or § 1.55, or to the
benefit of an earlier filing date under 35
U.S.C. 120, 121 or 365(c) or § 1.78 of any
other application. No claim for priority
under 35 U.S.C. 119(e) or § 1.78 may be
made in a design application based on
a provisional application. No request
under § 1.293 for a statutory invention
registration may be filed in a provisional
application. The requirements of
§§ 1.821 through 1.825 regarding
application disclosures containing
nucleotide and/or amino acid sequences
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are not mandatory for provisional
applications.
*
*
*
*
*
I 6. Section 1.75 is amended by revising
paragraphs (b) and (c) to read as follows:
§ 1.75
Claim(s).
*
*
*
*
*
(b) More than one claim may be
presented provided they differ
substantially from each other and are
not unduly multiplied. One or more
claims may be presented in dependent
form, referring back to and further
limiting another claim or claims in the
same application. A dependent claim
must contain a reference to a claim
previously set forth in the same
application, incorporate by reference all
the limitations of the previous claim to
which such dependent claim refers, and
specify a further limitation of the
subject matter of the previous claim.
(1) An applicant must file an
examination support document in
compliance with § 1.265 that covers
each claim (whether in independent or
dependent form) before the issuance of
a first Office action on the merits of the
application if the application contains
or is amended to contain more than five
independent claims or more than
twenty-five total claims. An application
may not contain or be amended to
contain more than five independent
claims or more than twenty-five total
claims if an examination support
document in compliance with § 1.265
has not been filed before the issuance of
a first Office action on the merits of the
application.
(2) A claim that refers to another
claim but does not incorporate by
reference all of the limitations of the
claim to which such claim refers will be
treated as an independent claim for fee
calculation purposes under § 1.16 (or
§ 1.492) and for purposes of paragraph
(b) of this section. A claim that refers to
a claim of a different statutory class of
invention will also be treated as an
independent claim for fee calculation
purposes under § 1.16 (or § 1.492) and
for purposes of paragraph (b) of this
section.
(3) The applicant will be notified if
the application contains or is amended
to contain more than five independent
claims or more than twenty-five total
claims but the applicant has not
complied with the requirements set
forth in paragraph (b)(1) or (b)(4) of this
section. If the non-compliance appears
to have been inadvertent, the notice will
set a two-month time period that is not
extendable under § 1.136(a) within
which, to avoid abandonment of the
application, the applicant must comply
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with the requirements set forth in
paragraph (b) of this section.
(4) If a nonprovisional application
contains at least one claim that is
patentably indistinct from at least one
claim in one or more other pending
nonprovisional applications, and if such
one or more other nonprovisional
applications and the first
nonprovisional application are owned
by the same person, or are subject to an
obligation of assignment to the same
person, the Office will treat the claims
(whether in independent or dependent
form) in the first nonprovisional
application and in each of such other
pending nonprovisional applications as
present in each of the nonprovisional
applications for purposes of paragraph
(b) of this section.
(5) Claims withdrawn from
consideration under §§ 1.141 through
1.146 or § 1.499 as drawn to a nonelected invention or inventions will not,
unless they are reinstated or rejoined, be
taken into account in determining
whether an application exceeds the five
independent claim and twenty-five total
claim threshold set forth in paragraphs
(b)(1), (b)(3), and (b)(4) of this section.
(c) Any dependent claim which refers
to more than one other claim (‘‘multiple
dependent claim’’) shall refer to such
other claims in the alternative only. A
multiple dependent claim shall not
serve as a basis for any other multiple
dependent claim. For fee calculation
purposes under § 1.16 (or § 1.492) and
for purposes of paragraph (b) of this
section, a multiple dependent claim will
be considered to be that number of
claims to which direct reference is made
therein. For fee calculation purposes
under § 1.16 (or § 1.492) and for
purposes of paragraph (b) of this
section, any claim depending from a
multiple dependent claim will be
considered to be that number of claims
to which direct reference is made in that
multiple dependent claim. In addition
to the other filing fees, any application
which is filed with, or is amended to
include, multiple dependent claims
must have paid therein the fee set forth
in § 1.16(j). A multiple dependent claim
shall be construed to incorporate by
reference all the limitations of each of
the particular claims in relation to
which it is being considered.
*
*
*
*
*
I 7. Section 1.76 is amended by revising
paragraph (b)(5) to read as follows:
§ 1.76
Application data sheet.
*
*
*
*
*
(b) * * *
(5) Domestic priority information.
This information includes the
application number, the filing date, and
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relationship of each application for
which a benefit is claimed under 35
U.S.C. 120, 121, or 365(c). This
information includes the application
number and the filing date of each
application for which a benefit is
claimed under 35 U.S.C. 119(e).
Providing this information in the
application data sheet also constitutes
the specific reference required by 35
U.S.C. 119(e) or 120, and § 1.78(b)(3) or
§ 1.78(d)(3), and need not otherwise be
made part of the specification.
*
*
*
*
*
I 8. 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
designating at least one country other
than the United States of America.
(2) 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 a
prior-filed application, but were subject
to a requirement to comply with the
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, and were not
elected for examination and were not
examined in any prior-filed application.
(3) 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.
(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.
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(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 paragraph
(b) of this section.
(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. In addition, each
prior-filed provisional 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 have been paid
for such provisional application within
the time period set forth in § 1.53(g).
(3) Any nonprovisional application or
international application designating
the United States of America that claims
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
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 prior-
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filed provisional application. Except as
provided in paragraph (c) of this
section, failure to timely submit the
reference is considered a waiver of any
benefit under 35 U.S.C. 119(e) of the
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 the translation and
the statement in the prior-filed
provisional application. 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
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
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(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
paragraph (d) of this section.
(1) A nonprovisional application that
claims the benefit of one or more priorfiled copending nonprovisional
applications or international
applications designating the United
States of America must satisfy the
conditions set forth in at least one of
paragraphs (d)(1)(i) through (d)(1)(vi) of
this section. The Office will refuse to
enter, or will delete if present, any
specific reference to a prior-filed
application that is not permitted by at
least one of paragraphs (d)(1)(i) through
(d)(1)(vi) of this section. The Office’s
entry of, or failure to delete, a specific
reference to a prior-filed application
that is not permitted by at least one of
paragraphs (d)(1)(i) through (d)(1)(vi) of
this section does not constitute a waiver
of the provisions of paragraph (d)(1) of
this section.
(i)(A) The nonprovisional application
is either a continuation application as
defined in paragraph (a)(3) 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 no more than two prior-filed
applications; and
(B) Any application whose benefit is
claimed under 35 U.S.C. 120, 121, or
365(c) in such nonprovisional
application has its benefit claimed in no
more than one other nonprovisional
application, not including any
nonprovisional application that satisfies
the conditions set forth in paragraph
(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this
section.
(ii)(A) The nonprovisional application
is a divisional application as defined in
paragraph (a)(2) of this section that
claims the benefit under 35 U.S.C. 120,
121, or 365(c) of a prior-filed
application that was subject to a
requirement to comply with the
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requirement of unity of invention under
PCT Rule 13 or a requirement for
restriction under 35 U.S.C. 121; and
(B) The divisional application
contains only claims directed to an
invention or inventions that were
identified in such requirement to
comply with the requirement of unity of
invention or requirement for restriction
but were not elected for examination
and were not examined in the priorfiled application or in any other
nonprovisional application, except for a
nonprovisional application that claims
the benefit under 35 U.S.C. 120, 121, or
365(c) of such divisional application
and satisfies the conditions set forth in
paragraph (d)(1)(iii) or (d)(1)(vi) of this
section.
(iii)(A) The nonprovisional
application is a continuation
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 a divisional application that
satisfies the conditions set forth in
paragraph (d)(1)(ii) of this section;
(B) The nonprovisional application
discloses and claims only an invention
or inventions that were disclosed and
claimed in such divisional application;
(C) The nonprovisional application
claims the benefit under 35 U.S.C. 120,
121, or 365(c) of only the divisional
application, any application to which
such divisional application claims
benefit under 35 U.S.C. 120, 121, or
365(c) in compliance with the
conditions set forth in paragraph
(d)(1)(ii) of this section, and no more
than one intervening prior-filed
nonprovisional application; and
(D) The divisional application whose
benefit is claimed under 35 U.S.C. 120,
121, or 365(c) in such nonprovisional
application has its benefit claimed in no
more than one other nonprovisional
application, not including any other
divisional application that satisfies the
conditions set forth in paragraph
(d)(1)(ii) or any nonprovisional
application that claims the benefit
under 35 U.S.C. 120 or 365(c) of such
other divisional application and
satisfies the conditions set forth in
paragraph (d)(1)(iii) or (d)(1)(vi) of this
section.
(iv)(A) The nonprovisional
application claims benefit under 35
U.S.C. 120 or 365(c) of a prior-filed
international application designating
the United States of America, and a
Demand has not been filed and the basic
national fee (§ 1.492(a)) has not been
paid in the prior-filed international
application and the prior-filed
international application does not claim
the benefit of any other nonprovisional
application or international application
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designating the United States of
America;
(B) The nonprovisional application is
either a continuation application as
defined in paragraph (a)(3) 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 no more than three prior-filed
applications; and
(C) Any application whose benefit is
claimed under 35 U.S.C. 120, 121, or
365(c) in such nonprovisional
application has its benefit claimed in no
more than two other nonprovisional
applications, not including any
nonprovisional application that satisfies
the conditions set forth in paragraph
(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this
section.
(v)(A) The nonprovisional application
claims benefit under 35 U.S.C. 120 or
365(c) of a prior-filed nonprovisional
application filed under 35 U.S.C. 111(a),
and such nonprovisional application
became abandoned due to the failure to
timely reply to an Office notice issued
under § 1.53(f) and does not claim the
benefit of any other nonprovisional
application or international application
designating the United States of
America;
(B) The nonprovisional application is
either a continuation application as
defined in paragraph (a)(3) 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 no more than three prior-filed
applications; and
(C) Any application whose benefit is
claimed under 35 U.S.C. 120, 121, or
365(c) in such nonprovisional
application has its benefit claimed in no
more than two other nonprovisional
applications, not including any
nonprovisional application that satisfies
the conditions set forth in paragraph
(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this
section.
(vi) 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, 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, and does not satisfy the
conditions set forth in any of paragraphs
(d)(1)(i) through (d)(1)(v) of this section.
A petition must be filed in such
nonprovisional application that is
accompanied by the fee set forth in
§ 1.17(f) and a showing that the
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amendment, argument, or evidence
sought to be entered could not have
been submitted during the prosecution
of the prior-filed application. If the
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
continuing application. If the
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
U.S.C. 371(b) or (f) in the international
application.
(2) Each prior-filed application must
name as an inventor at least one
inventor named in the later-filed
application. In addition, each prior-filed
application must either be:
(i) An international application
entitled to a filing date in accordance
with PCT Article 11 and designating the
United States of America; or
(ii) 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) for which the basic filing fee
set forth in § 1.16 has been paid 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, that
claims the benefit of one or more priorfiled 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. The reference must also
identify 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 the claim or
claims in the continuation-in-part
application for which the subject matter
is disclosed in the manner provided by
the first paragraph of 35 U.S.C. 112 in
the prior-filed application. If the laterfiled 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
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46839
amended to contain such reference in
the first sentence(s) following the title.
(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),
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. Except as provided in
paragraph (e) of this section, 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 the 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. Cross-references to
applications for which a benefit is not
claimed under title 35, United States
Code, must be located in a paragraph
that is separate from the paragraph
containing the references to applications
for which a benefit is claimed under 35
U.S.C. 119(e), 120, 121, or 365(c) that is
required by 35 U.S.C. 119(e) or 120 and
this section.
(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
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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
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 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)(i)
The applicant in a nonprovisional
application that has not been allowed
(§ 1.311) must identify by application
number (i.e., series code and serial
number) and patent number (if
applicable) each other pending or
patented nonprovisional application, in
a separate paper, for which the
following conditions are met:
(A) The nonprovisional application
has a filing date that is the same as or
within two months of the filing date of
the other pending or patented
nonprovisional application, taking into
account any filing date for which a
benefit is sought under title 35, United
States Code;
(B) The nonprovisional application
names at least one inventor in common
with the other pending or patented
nonprovisional application; and
(C) The nonprovisional application is
owned by the same person, or subject to
an obligation of assignment to the same
person, as the other pending or patented
nonprovisional application.
(ii) The identification of such one or
more other pending or patented
nonprovisional applications if required
by paragraph (f)(1)(i) of this section
must be submitted within the later of:
(A) Four months from the actual filing
date in a nonprovisional application
filed under 35 U.S.C. 111(a);
(B) Four months from the date on
which the national stage commenced
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Jkt 211001
under 35 U.S.C. 371(b) or (f) in a
nonprovisional application entering the
national stage from an international
application under 35 U.S.C. 371; or
(C) Two months from the mailing date
of the initial filing receipt in such other
nonprovisional application for which
identification is required by paragraph
(f)(1)(i) of this section.
(2)(i) A rebuttable presumption shall
exist that a nonprovisional application
contains at least one claim that is not
patentably distinct from at least one of
the claims in another pending or
patented nonprovisional application if
the following conditions are met:
(A) The nonprovisional application
has a filing date that is the same as the
filing date of the other pending or
patented nonprovisional application,
taking into account any filing date for
which a benefit is sought under title 35,
United States Code;
(B) The nonprovisional application
names at least one inventor in common
with the other pending or patented
nonprovisional application;
(C) The nonprovisional application is
owned by the same person, or subject to
an obligation of assignment to the same
person, as the other pending or patented
nonprovisional application; and
(D) The nonprovisional application
and the other pending or patented
nonprovisional application contain
substantial overlapping disclosure.
Substantial overlapping disclosure
exists if the other pending or patented
nonprovisional application has written
description support under the first
paragraph of 35 U.S.C. 112 for at least
one claim in the nonprovisional
application.
(ii) If the conditions specified in
paragraph (f)(2)(i) of this section exist,
the applicant in the nonprovisional
application must, unless the
nonprovisional application has been
allowed (§ 1.311), take one of the
following actions within the time period
specified in paragraph (f)(2)(iii) of this
section:
(A) Rebut this presumption by
explaining how the application contains
only claims that are patentably distinct
from the claims in each of such other
pending nonprovisional applications or
patents; or
(B) 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
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
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person, which contain patentably
indistinct claims.
(iii) If the conditions specified in
paragraph (f)(2)(i) of this section exist,
the applicant in the nonprovisional
application must, unless the
nonprovisional application has been
allowed (§ 1.311), take one of the actions
specified in paragraph (f)(2)(ii) of this
section within the later of:
(A) Four months from the actual filing
date of a nonprovisional application
filed under 35 U.S.C. 111(a);
(B) Four months from the date on
which the national stage commenced
under 35 U.S.C. 371(b) or (f) in a
nonprovisional application entering the
national stage from an international
application under 35 U.S.C. 371;
(C) The date on which a claim that is
not patentably distinct from at least one
of the claims in the one or more other
pending or patented nonprovisional
applications is presented; or
(D) Two months from the mailing date
of the initial filing receipt in the one or
more other pending or patented
nonprovisional applications.
(3) In the absence of good and
sufficient reason for there being two or
more pending nonprovisional
applications 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.
(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
under 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
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agreement, the identification of such
one or more other nonprovisional
applications as required by paragraph
(f)(1) of this section must be submitted
with such amendment unless such
identification is or has been submitted
within the four-month period specified
in paragraph (f)(1) of this section.
(i) Time periods not extendable: The
time periods set forth in this section are
not extendable.
I 9. Section 1.104 is amended by
revising paragraphs (a)(1) and (b) to read
as follows:
§ 1.104
Nature of examination.
(a) Examiner’s action. (1) On taking
up an application for examination or a
patent in a reexamination proceeding,
the examiner shall make a thorough
study thereof and shall make a thorough
investigation of the available prior art
relating to the subject matter of the
claimed invention. The examination
shall be complete with respect both to
compliance of the application or patent
under reexamination with the
applicable statutes, rules, and other
requirements, and to the patentability of
the invention as claimed, as well as
with respect to matters of form, unless
otherwise indicated.
*
*
*
*
*
(b) Completeness of examiner’s
action. The examiner’s action will be
complete as to all matters, except that in
appropriate circumstances, such as
misjoinder of invention, fundamental
defects in the application, and the like,
the action of the examiner may be
limited to such matters before further
action is made.
*
*
*
*
*
I 10. Section 1.105 is amended by
adding a new paragraph (a)(1)(ix) to
read as follows:
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§ 1.105
Requirements for information.
(a)(1) * * *
(ix) Support in the specification:
Where (by page and line or paragraph
number) in the specification of the
application, or any application the
benefit of whose filing date is sought
under title 35, United States Code, there
is written description support for the
invention as defined in the claims
(whether in independent or dependent
form), and of the manner and process of
making and using it, in such full, clear,
concise, and exact terms as to enable
any person skilled in the art to which
it pertains, or with which it is most
nearly connected, to make and use the
invention, under the first paragraph of
35 U.S.C. 112.
*
*
*
*
*
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11. Section 1.110 is revised to read as
follows:
I
§ 1.110 Inventorship and date of invention
of the subject matter of individual claims.
When more than one inventor is
named in an application or patent, the
Office may require an applicant,
patentee, or owner to identify the
inventive entity of the subject matter of
each claim in the application or patent
when necessary for purposes of an
Office proceeding. Where appropriate,
the invention dates of the subject matter
of each claim and the ownership of the
subject matter on the date of invention
may be required of the applicant,
patentee or owner. See also §§ 1.78 and
1.130.
I 12. Section 1.114 is amended by
revising paragraphs (a) and (d), and by
adding new paragraphs (f), (g), and (h),
to read as follows:
§ 1.114 Request for continued
examination.
(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 accompanied by a
submission, the fee set forth in § 1.17(e),
and if required, a petition under
paragraph (g) of this section
accompanied by the fee set forth in
§ 1.17(f), prior to the earliest of:
(1) Payment of the issue fee, unless a
petition under § 1.313 is granted;
(2) Abandonment of the application;
or
(3) The filing of a notice of appeal to
the U.S. Court of Appeals for the
Federal Circuit under 35 U.S.C. 141, or
the commencement of a civil action
under 35 U.S.C. 145 or 146, unless the
appeal or civil action is terminated.
*
*
*
*
*
(d) If an applicant files a request for
continued examination under this
section after appeal, but prior to a
decision on the appeal, the request for
continued examination will also be
treated as a request to withdraw the
appeal and to reopen prosecution of the
application before the examiner. An
appeal brief (§ 41.37 of this title), a reply
brief (§ 41.41 of this title), or related
papers will not be considered a
submission under this section.
*
*
*
*
*
(f) An applicant may file a request for
continued examination under this
section in an application without a
petition under paragraph (g) of this
section if the conditions set forth in at
least one of paragraphs (f)(1), (f)(2), or
(f)(3) of this section are satisfied:
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(1) A request for continued
examination under this section has not
previously been filed in any of:
(i) The application;
(ii) Any application whose benefit is
claimed under 35 U.S.C. 120, 121, or
365(c) in such application; and
(iii) Any application that claims the
benefit under 35 U.S.C. 120, 121, or
365(c) of such application, not
including any nonprovisional
application that satisfies the conditions
set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
(d)(1)(vi).
(2) The application is a divisional
application that satisfies the conditions
set forth in § 1.78(d)(1)(ii), and a request
for continued examination under this
section has not previously been filed in
any of:
(i) The divisional application; and
(ii) Any application that claims the
benefit under 35 U.S.C. 120, 121, or
365(c) of such divisional application,
not including any nonprovisional
application that satisfies the conditions
set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
(d)(1)(vi).
(3) The application is a continuation
application that claims the benefit
under 35 U.S.C. 120, 121, or 365(c) of
a divisional application and satisfies the
conditions set forth in § 1.78(d)(1)(iii),
and a request for continued examination
under this section has not been filed in
any of:
(i) The continuation application;
(ii) The divisional application; and
(iii) Any other application that claims
the benefit under 35 U.S.C. 120, 121, or
365(c) of such divisional application,
not including any nonprovisional
application that satisfies the conditions
set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
(d)(1)(vi).
(g) A request for continued
examination must include a petition
accompanied by the fee set forth in
§ 1.17(f) and a showing that the
amendment, argument, or evidence
sought to be entered could not have
been submitted prior to the close of
prosecution in the application, except as
otherwise provided in paragraph (f) of
this section.
(h) The filing of an improper request
for continued examination, including a
request for continued examination with
a petition under paragraph (g) of this
section that is not grantable, will not
stay any period for reply that may be
running against the application, nor act
as a stay of other proceedings.
13. Section 1.117 is added to read as
follows:
I
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§ 1.117
claim.
Federal Register / Vol. 72, No. 161 / Tuesday, August 21, 2007 / Rules and Regulations
Refund due to cancellation of
(a) If an amendment canceling a claim
is filed before an examination on the
merits has been made of the application,
the applicant may request a refund of
any fee under § 1.16(h), (i), or (j) or
under § 1.492(d), (e), or (f) paid on or
after December 8, 2004, for such claim.
If an amendment adding one or more
claims is also filed before the
application has been taken up for
examination on the merits, the Office
may apply any refund under § 1.117 to
any excess claims fees due as a result of
such an amendment. The date indicated
on any certificate of mailing or
transmission under § 1.8 will not be
taken into account in determining
whether an amendment canceling a
claim was filed before an examination
on the merits has been made of the
application.
(b) If a request for refund under this
section is not filed within two months
from the date on which the claim was
canceled, the Office may retain the
excess claims fee paid in the
application. This two-month period is
not extendable. If an amendment
canceling a claim is not filed before an
examination on the merits has been
made of the application, the Office will
not refund any part of the excess claims
fee paid in the application except as
provided in § 1.26.
I 14. Section 1.136 is amended by
revising paragraph (a)(1) to read as
follows:
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§ 1.136
Extensions of time.
(a)(1) If an applicant is required to
reply within a nonstatutory or shortened
statutory time period, applicant may
extend the time period for reply up to
the earlier of the expiration of any
maximum period set by statute or five
months after the time period set for
reply, if a petition for an extension of
time and the fee set in § 1.17(a) are filed,
unless:
(i) Applicant is notified otherwise in
an Office action;
(ii) The reply is to a notice requiring
compliance with § 1.75(b) or § 1.265;
(iii) The reply is a reply brief
submitted pursuant to § 41.41 of this
title;
(iv) The reply is a request for an oral
hearing submitted pursuant to § 41.47(a)
of this title;
(v) The reply is to a decision by the
Board of Patent Appeals and
Interferences pursuant to § 1.304 or to
§ 41.50 or § 41.52 of this title; or
(vi) The application is involved in a
contested case (§ 41.101(a) of this title).
*
*
*
*
*
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15. Section 1.142 is amended by
revising paragraph (a) and adding new
paragraph (c) to read as follows:
I
§ 1.142
Requirement for restriction.
(a) If two or more independent and
distinct inventions are claimed in a
single application, the examiner in an
Office action may require the applicant
in the reply to that action to elect an
invention to which the claims will be
restricted, this official action being
called a requirement for restriction (also
known as a requirement for division).
Such requirement will normally be
made before any action on the merits;
however, it may be made at any time
before final action.
*
*
*
*
*
(c) If two or more independent and
distinct inventions are claimed in a
single application, the applicant may
file a suggested requirement for
restriction under this paragraph. Any
suggested requirement for restriction
must be filed prior to the earlier of the
first Office action on the merits or an
Office action that contains a
requirement to comply with the
requirement of unity of invention under
PCT Rule 13 or a requirement for
restriction under 35 U.S.C. 121 in the
application. Any suggested requirement
for restriction must also be accompanied
by an election without traverse of an
invention to which there are no more
than five independent claims and no
more than twenty-five total claims, and
must identify the claims to the elected
invention. If the suggested requirement
for restriction is accepted, the applicant
will be notified in an Office action that
will contain a requirement for
restriction under paragraph (a) of this
section. Any claim to the non-elected
invention or inventions, if not canceled,
is by the election withdrawn from
further consideration.
16. Section 1.145 is revised to read as
follows:
I
§ 1.145 Subsequent presentation of claims
for different invention.
If, after an Office action on the merits
on an application, the applicant
presents claims directed to an invention
distinct from and independent of the
invention previously claimed, the
applicant may be required to restrict the
claims to the invention previously
claimed if the amendment is entered,
subject to reconsideration and review as
provided in §§ 1.143 and 1.144.
17. Section 1.265 is added to read as
follows:
I
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§ 1.265
Examination support document.
(a) An examination support document
as used in this part means a document
that includes the following:
(1) A statement that a preexamination
search in compliance with paragraph (b)
of this section was conducted, including
an identification of the field of search by
United States class and subclass and the
date of the search, where applicable,
and, for database searches, the search
logic or chemical structure or sequence
used as a query, the name of the file or
files searched and the database service,
and the date of the search;
(2) A listing of the reference or
references deemed most closely related
to the subject matter of each of the
claims (whether in independent or
dependent form) in compliance with
paragraph (c) of this section;
(3) For each reference cited, an
identification of all of the limitations of
each of the claims (whether in
independent or dependent form) that
are disclosed by the reference;
(4) A detailed explanation particularly
pointing out how each of the
independent claims is patentable over
the cited references; and
(5) A showing of where each
limitation of each of the claims (whether
in independent or dependent form)
finds support under the first paragraph
of 35 U.S.C. 112 in the written
description of the specification. If the
application claims the benefit of one or
more applications under title 35, United
States Code, the showing must also
include where each limitation of each of
the claims finds support under the first
paragraph of 35 U.S.C. 112 in each such
priority or benefit application in which
such support exists.
(b) The preexamination search
referred to in paragraph (a)(1) of this
section must involve U.S. patents and
patent application publications, foreign
patent documents, and non-patent
literature, unless the applicant justifies
with reasonable certainty that no
references more pertinent than those
already identified are likely to be found
in the eliminated source and includes
such a justification with the statement
required by paragraph (a)(1) of this
section. The preexamination search
referred to in paragraph (a)(1) of this
section must be directed to the claimed
invention and encompass all of the
limitations of each of the claims
(whether in independent or dependent
form), giving the claims the broadest
reasonable interpretation.
(c) The listing of references required
under paragraph (a)(2) of this section as
part of an examination support
document must include a list
identifying each of the cited references
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in compliance with paragraphs (c)(1)
and (c)(2) of this section, a copy of each
reference if required by paragraph (c)(3)
of this section, and each English
language translation if required by
paragraph (c)(4) of this section.
(1) The list of cited references must
itemize U.S. patents and U.S. patent
application publications (including
international applications designating
the U.S.) in a section separate from the
list of other references. Each page of the
list of the cited references must include:
(i) The application number, if known,
of the application in which the
examination support document is being
filed;
(ii) A column that provides a space
next to each cited reference for the
examiner’s initials; and
(iii) A heading that clearly indicates
that the list is part of an examination
support document listing of references.
(2) The list of cited references must
identify each cited reference as follows:
(i) Each U.S. patent must be identified
by first named patentee, patent number,
and issue date.
(ii) Each U.S. patent application
publication must be identified by
applicant, patent application
publication number, and publication
date.
(iii) Each U.S. application must be
identified by the applicant, application
number, and filing date.
(iv) Each foreign patent or published
foreign patent application must be
identified by the country or patent office
which issued the patent or published
the application, an appropriate
document number, and the publication
date indicated on the patent or
published application.
(v) Each publication must be
identified by publisher (e.g., name of
journal), author (if any), title, relevant
pages of the publication, date, and place
of publication.
(3) The listing of references required
under paragraph (a)(2) of this section
must also be accompanied by a legible
copy of each cited reference, except for
references that are U.S. patents or U.S.
patent application publications.
(4) If a non-English language
document is being cited in the listing of
references required under paragraph
(a)(2) of this section as part of an
examination support document, any
existing English language translation of
the non-English language document
must also be submitted if the translation
is within the possession, custody, or
control of, or is readily available to any
individual identified in § 1.56(c).
(d) If an information disclosure
statement is filed in an application in
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which an examination support
document is required and has been
filed, the applicant must also file a
supplemental examination support
document addressing the reference or
references in the manner required under
paragraphs (a)(3) and (a)(4) of this
section unless the information
disclosure statement cites only
references that are less closely related to
the subject matter of one or more claims
(whether in independent or dependent
form) than the references cited in the
examination support document listing
of references under paragraph (a)(2) of
this section.
(e) If an examination support
document is required, but the
examination support document or
preexamination search is deemed to be
insufficient, or the claims have been
amended such that the examination
support document no longer covers each
of the claims, applicant will be notified
and given a two-month time period that
is not extendable under § 1.136(a)
within which, to avoid abandonment of
the application, the applicant must:
(1) File a corrected or supplemental
examination support document in
compliance with this section that covers
each of the claims (whether in
independent or dependent form); or
(2) Amend the application such that
it contains no more than five
independent claims and no more than
twenty-five total claims.
(f) An examination support document,
or a corrected or supplemental
examination support document, is not
required to comply with the
requirements set forth in paragraph
(a)(3) of this section if the examination
support document is accompanied by a
certification that any rights in the
application have not been assigned,
granted, conveyed, or licensed, and
there is no obligation under contract or
law to assign, grant, convey, or license
any rights in the application, other than
a security interest that has not been
defaulted upon, to any entity other than:
(1) A business or other concern:
(i) Whose number of employees,
including affiliates, does not exceed 500
persons; and
(ii) Which has not assigned, granted,
conveyed, or licensed (and is under no
obligation to do so) any rights in the
invention to any person who made it
and could not be classified as an
independent inventor, or to any concern
which would not qualify as a non-profit
organization or a small business concern
under paragraph (f)(1)(i) of this section.
(2) A not-for-profit enterprise which is
independently owned and operated and
is not dominant in its field; or
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46843
(3) A government of a city, county,
town, township, village, school district,
or special district, with a population of
less than fifty thousand.
18. Section 1.495 is amended by
revising paragraph (g) to read as follows:
I
§ 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
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.
*
*
*
*
*
19. Section 1.704 is amended by
redesignating paragraph (c)(11) as
(c)(12) and adding new paragraph
(c)(11) to read as follows:
I
§ 1.704 Reduction of period of adjustment
of patent term.
*
*
*
*
*
(c) * * *
(11) Failure to comply with § 1.75(b),
in which case the period of adjustment
set forth in § 1.703 shall be reduced by
the number of days, if any, beginning on
the day after the date that is the later of
the filing date of the amendment
resulting in the non-compliance with
§ 1.75(b), or four months from the filing
date of the application in an application
under 35 U.S.C. 111(a) or from the date
on which the national stage commenced
under 35 U.S.C. 371(b) or (f) in an
application which entered the national
stage from an international application
after compliance with 35 U.S.C. 371,
and ending on the date that an
examination support document in
compliance with § 1.265, an election in
reply to a requirement under § 1.142(a),
1.146 or 1.499 resulting in compliance
with § 1.75(b), an amendment resulting
in compliance with § 1.75(b), or a
suggested restriction requirement in
compliance with § 1.142(c), was filed;
*
*
*
*
*
Dated: August 2, 2007.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. E7–15565 Filed 8–20–07; 8:45 am]
BILLING CODE 3510–16–P
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Agencies
[Federal Register Volume 72, Number 161 (Tuesday, August 21, 2007)]
[Rules and Regulations]
[Pages 46716-46843]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E7-15565]
[[Page 46715]]
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Part II
Department of Commerce
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Patent and Trademark Office
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37 CFR Part 1
Changes To Practice for Continued Examination Filings, Patent
Applications Containing Patentably Indistinct Claims, and Examination
of Claims in Patent Applications; Final Rule
Federal Register / Vol. 72, No. 161 / Tuesday, August 21, 2007 /
Rules and Regulations
[[Page 46716]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket Nos.: PTO-P-2005-0022; PTO-P-2005-0023]
RINs 0651-AB93; 0651-AB94
Changes To Practice for Continued Examination Filings, Patent
Applications Containing Patentably Indistinct Claims, and Examination
of Claims in Patent Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice in patent cases relating to continuing
applications and requests for continued examination practices, and for
the examination of claims in patent applications. The Office is
revising the rules of practice to require that any third or subsequent
continuing application that is a continuation application or a
continuation-in-part application, and any second or subsequent request
for continued examination in an application family, be filed to obtain
consideration of an amendment, argument, or evidence, and be supported
by a showing as to why the amendment, argument, or evidence sought to
be entered could not have been previously submitted. The Office is also
revising the rules of practice to provide that an applicant must
provide an examination support document that covers all of the claims
in an application if the application contains more than five
independent claims or more than twenty-five total claims. The Office is
also revising the rules of practice with respect to multiple
applications that have the same claimed filing or priority date,
substantial overlapping disclosure, a common inventor, and common
ownership. These changes will allow the Office to conduct a better and
more thorough and reliable examination of patent applications.
DATES: Effective Date: November 1, 2007. For applicability and
compliance dates see SUPPLEMENTARY INFORMATION.
FOR FURTHER INFORMATION CONTACT: The Office of Patent Legal
Administration, by telephone at (571) 272-7704, by mail addressed to:
Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450, or by facsimile to (571) 273-0100, marked to
the attention of the Office of Patent Legal Administration.
SUPPLEMENTARY INFORMATION: The Office is revising the rules of practice
in patent cases relating to continued examination filings (continuing
applications and requests for continued examination), multiple
applications containing patentably indistinct claims, and the
examination of claims in applications.
The Office is revising the rules of practice for continuation
applications, continuation-in-part applications and requests for
continued examination. Under these revisions, an applicant may file two
continuation applications (or continuation-in-part applications), plus
a request for continued examination in the application family, without
any justification. An application family includes the initial
application and its continuation or continuation-in-part applications.
Applicant may file any additional continuation application,
continuation-in-part application, or request for continued examination
with a justification. Specifically, the Office is revising the rules of
practice to require a justification for any third or subsequent
continuing application that is a continuation application or a
continuation-in-part application, and any second or subsequent request
for continued examination in an application family. The third or
subsequent continuing application or request for continued examination
must be filed with a petition showing why the amendment, argument, or
evidence sought to be entered could not have been previously submitted.
The Office is also revising the rules of practice for divisional
applications. Under these revisions, an applicant is permitted to file
a divisional application of an application for the claims to a non-
elected invention that has not been examined if the application was
subject to a requirement for restriction. The divisional application
need not be filed during the pendency of the application subject to a
requirement for restriction, as long as the copendency requirement of
35 U.S.C. 120 is met. Thus, applicant may file the divisional
application during the pendency of the application that was subject to
a requirement for restriction or the pendency of any continuing
application of such an application. Applicant may also file two
continuation applications of the divisional application plus a request
for continued examination in the divisional application family, without
any justification. A divisional application family includes the
divisional application and its continuation applications. In addition,
applicant may file any additional continuation application or request
for continued examination in the divisional application family with a
petition and adequate justification.
The Office is also revising the rules of practice for the
examination of claims in an application to provide that if the number
of independent claims is greater than five or the number of total
claims is greater than twenty-five, the Office will require the
applicant to help focus examination by providing additional information
to the Office in an examination support document covering all of the
claims (whether in independent or dependent form) in the application.
The Office is also revising the rules of practice with respect to
multiple applications that have patentably indistinct claims and a
common assignee by either requiring that all patentably indistinct
claims in such applications be submitted in a single application or
effectively treating the multiple applications as a single application.
These changes will mean more effective and efficient examination
for the typical applicant without any additional work on the part of
most applicants. However, in the applications that place an extensive
burden on the Office, the applicant will be required to help focus
examination by providing additional information to the Office.
Applicability Dates: The changes to 37 CFR 1.75, 1.142(c), and
1.265 are applicable to any nonprovisional application filed under 35
U.S.C. 111(a) on or after November 1, 2007, and to any nonprovisional
application entering the national stage after compliance with 35 U.S.C.
371 on or after November 1, 2007. The changes to 37 CFR 1.75, 1.142(c),
and 1.265 are also applicable to any nonprovisional application filed
before November 1, 2007, in which a first Office action on the merits
was not mailed before November 1, 2007.
The changes to 37 CFR 1.117 are applicable to any nonprovisional
application filed before, on, or after November 1, 2007, with respect
to any fee under 37 CFR 1.16(h), (i), or (j) or 1.492(d), (e), or (f)
paid on or after December 8, 2004.
The changes to 37 CFR 1.78(a), 1.78(d)(1), 1.495 and 1.704(c)(11)
are applicable only to any application, including any continuing
application, filed under 35 U.S.C. 111(a) on or after November 1, 2007,
or any application entering the national stage after compliance with 35
U.S.C. 371 on or after November 1, 2007. Except as otherwise indicated
in this final rule, any application filed under 35 U.S.C. 111(a) on or
after November 1, 2007, or any application entering the national stage
after compliance with 35 U.S.C.
[[Page 46717]]
371 on or after November 1, 2007, seeking to claim the benefit under 35
U.S.C. 120, 121, or 365(c) and 37 CFR 1.78 of a prior-filed
nonprovisional application or international application must either:
(1) Meet the requirements specified in one of 37 CFR 1.78(d)(1)(i)
through (d)(1)(v); or (2) include a grantable petition under 37 CFR
1.78(d)(1)(vi).
With respect to applications that claim the benefit under 35 U.S.C.
120, 121, or 365(c) only of nonprovisional applications or
international applications filed before August 21, 2007: an application
is not required to meet the requirements set forth in 37 CFR 1.78(d)(1)
if: (1) The application claims the benefit under 35 U.S.C. 120, 121, or
365(c) only of nonprovisional applications filed before August 21, 2007
or applications entering the national stage after compliance with 35
U.S.C. 371 before August 21, 2007; and (2) there is no other
application filed on or after August 21, 2007 that also claims the
benefit under 35 U.S.C. 120, 121, or 365(c) of such prior-filed
nonprovisional applications or international applications.
The changes to 37 CFR 1.114 are applicable to any application in
which a request for continued examination is filed on or after November
1, 2007. Specifically, a petition under 37 CFR 1.114(g) must accompany
any request for continued examination filed on or after November 1,
2007, in an application in which a request for continued examination
has previously been filed, or in a continuation application or
continuation-in-part application of an application in which a request
for continued examination has previously been filed, or in an
application whose benefit is claimed in a continuation application or
continuation-in-part application in which a request for continued
examination has previously been filed.
The changes to 37 CFR 1.17, 1.26, 1.52, 1.53, 1.76, 1.78 (except
1.78(a) and 1.78(d)(1)), 1.104, 1.105, 1.110, 1.136, 1.142(a), and
1.145 are applicable to any nonprovisional application pending on or
after November 1, 2007.
Compliance Date: For applications filed before November 1, 2007,
applicants must comply with the requirements in 37 CFR 1.78(f)(1)
within the time periods specified in 37 CFR 1.78(f)(1)(ii), or by
February 1, 2008, whichever is later, and applicants must comply with
the requirements in 37 CFR 1.78(f)(2) within the time periods specified
in 37 CFR 1.78(f)(2)(iii), or by February 1, 2008, whichever is later.
Table of Contents
I. Background
A. Changes to Practice for Continued Examination Filings
B. Changes to Practice for Examination of Claims in Patent
Applications
C. Changes to Practice for Patent Applications Containing
Patentably Indistinct Claims
D. Retention of First Action Final Practice and Changes in
Second Action Final Practice
II. Discussion of Specific Rules
This final rule amends the following sections in title 37 of the
Code of Federal Regulations (CFR): Sec. Sec. 1.17, 1.26, 1.52,
1.53, 1.75, 1.76, 1.78, 1.104, 1.105, 1.110, 1.114, 1.136, 1.142,
1.145, 1.495, and 1.704. This final rule adds Sec. Sec. 1.117, and
1.265 to title 37 of the CFR.
III. Response to Comments
A. Changes to Continuing Application Practice
B. Treatment of Third and Subsequent Continuation or
Continuation-In-Part Applications
C. Treatment of Second and Subsequent Requests for Continued
Examination
D. Petitions Related to Additional Continuation Applications,
Continuation-In-Part Applications, and Requests for Continued
Examination
E. Treatment of Multiple Applications
F. Changes to Practice for Examination of Claims
G. Number of Independent and Total Claims Permitted Without an
Examination Support Document
H. Examination Support Document Requirements
I. The Office's Authority to Promulgate the Changes in this
Final Rule
J. Changes to Internal Practice
K. Suggestions Relating to Legislative Changes
L. Effective Date of the Changes in this Final Rule
M. Miscellaneous
IV. Rule Making Considerations
A. Administrative Procedure Act
B. Regulatory Flexibility Act
C. Executive Order 13132 (Federalism)
D. Executive Order 12866 (Regulatory Planning and Review)
E. Executive Order 13175 (Tribal Consultation)
F. Executive Order 13211 (Energy Effects)
G. Executive Order 12988 (Civil Justice Reform)
H. Executive Order 13045 (Protection of Children)
I. Executive Order 12630 (Taking of Private Property)
J. Congressional Review Act
K. Unfunded Mandates Reform Act of 1995
L. National Environmental Policy Act
M. National Technology Transfer and Advancement Act
N. Paperwork Reduction Act
I. Background
In view of the need for a better focused and effective examination
process to reduce the large and growing backlog of unexamined
applications while maintaining or improving the quality of issued
patents, the Office published two notices in January of 2006 proposing
changes to the practice for continuing applications, requests for
continued examination, multiple applications containing patentably
indistinct claims, and the examination of claims in applications. See
Changes to Practice for Continuing Applications, Requests for Continued
Examination Practice, and Applications Containing Patentably Indistinct
Claims, 71 FR 48 (Jan. 3, 2006), 1302 Off. Gaz. Pat. Office 1318 (Jan.
24, 2006) (proposed rule) (hereinafter ``Continuing Applications
Proposed Rule'') and Changes to Practice for the Examination of Claims
in Patent Applications, 71 FR 61 (Jan. 3, 2006), 1302 Off. Gaz. Pat.
Office 1329 (Jan. 24, 2006) (proposed rule) (hereinafter ``Claims
Proposed Rule'').
Both the Continuing Applications Proposed Rule and the Claims
Proposed Rule requested public comments and provided a comment period
of four months to give the public an opportunity to submit written
comments. The Office provided this extended comment period to ensure
that the public would have sufficient time to submit written comments
on the proposed changes to the rules of practice and to ensure that the
Office would receive comments from all interested persons and
organizations. In addition to the notices and requests for written
comments, the Office conducted public meetings including town hall
meetings and presentations at various locations in the United States to
discuss the proposed changes and obtain feedback from the public. The
Office received over five hundred written comments from government
agencies, universities, intellectual property organizations, industry,
law firms, individual patent practitioners, and the general public. The
Office has spent nearly one year carefully analyzing and considering
all of the written comments that were received. The comments and the
Office's responses to the comments are provided in Section III,
Response to Comments. In response to the comments, the Office has made
appropriate modifications to the proposed changes to balance the
interests of the public, patent owners, applicants, practitioners, and
other interested parties with the need to reduce the large and growing
backlog of unexamined patent applications, improve the quality of
issued patents, and make the patent examination process more effective.
Under the proposed changes, applicants would have been permitted to
file one of the following without any
[[Page 46718]]
justification: A continuation application, a continuation-in-part
application, or a request for continued examination. By contrast, this
final rule permits applicants to file two continuation applications or
continuation-in-part applications, plus a single request for continued
examination in an application family, without any justification.
Applicant may file any additional continuing application or request for
continued examination with a justification. Under the proposed changes,
about eleven percent of the applications and requests for continued
examination filed in fiscal year 2006 would have required a
justification, where under the changes being adopted in this final rule
less than three percent of the applications and requests for continued
examination filed in fiscal year 2006 would have required a
justification.
The proposed changes would have permitted applicants to file a
divisional application of an application for the claims to a non-
elected invention if the application is subject to a requirement for
restriction and the divisional application is filed during the pendency
of that application. However, this final rule permits applicant to file
a divisional application of an application if the application is
subject to a requirement for restriction and the divisional application
meets the copendency requirement of 35 U.S.C. 120. Thus, this final
rule allows applicants to file divisional applications in series
whereas the proposed rule would have required applicants to file
divisional applications in parallel. This final rule also permits
applicant to file two continuation applications of a divisional
application, plus a request for continued examination in the divisional
application family, without any justification. Under the proposed
changes, about thirteen percent of divisional applications filed in
fiscal year 2006 would need to have been filed earlier, where the
changes being adopted in this final rule would not have required any of
the divisional applications filed in fiscal year 2006 to have been
filed earlier.
The proposed changes would have required applicant to provide an
examination support document before the first Office action on the
merits if applicant designated more than ten representative claims
including all of the independent claims in the application for initial
examination. The Office received a substantial number of comments from
the public opposing this ``representative claims'' examination approach
and suggesting that the Office should simply adopt a threshold to
invoking the examination support document requirement based upon
whether an application contains more than a given number of independent
and total claims. The Office took those comments into consideration and
adopted a similar approach. This final rule requires an applicant to
submit an examination support document before the issuance of a first
Office action on the merits of an application to assist in the
patentability determination when the applicant presents more than five
independent claims or more than twenty-five total claims in an
application. This final rule also encourages applicant to submit all of
the claims that are patentably indistinct in one single application and
requires applicant to identify multiple applications that contain
patentably indistinct claims (same as the proposed rule). Therefore,
for each invention, an applicant is permitted to present up to fifteen
independent claims and seventy-five total claims via an initial
application and two continuation or continuation-in-part applications
without providing either an examination support document or
justification, as long as those applications are either prosecuted
serially or contain patentably distinct claims. An examination support
document must include a preexamination search statement, a listing of
references deemed most closely related to the subject matter of each of
the claims, an identification of all of the claim limitations that are
disclosed in the references, a detailed explanation particularly
pointing out how each of the independent claims is patentable over the
cited references, and a showing of where each claim limitation finds
support under 35 U.S.C. 112, ] 1, in the application and any prior-
filed application. The examination support document will assist the
Office in the examination process and the determination of
patentability of the invention by providing the most relevant prior art
and other useful information.
Under the proposed changes, about one percent of the applications
filed in fiscal year 2006 would have required either the cancellation
of one or more independent claims or an examination support document.
Furthermore, about eighty percent of the applications filed in fiscal
year 2006 would have required either a designation of dependent claims
for initial examination or an examination support document. Under the
changes being adopted in this final rule, less than eight percent of
the applications filed in fiscal year 2006 would have required either
the cancellation of one or more independent claims or an examination
support document. In addition, less than twenty-five percent of the
applications filed in fiscal year 2006 would have required either the
cancellation of one or more dependent claims or an examination support
document. However, by prosecuting an initial application and two
continuation applications serially, about ninety-five percent of the
applications filed in fiscal year 2006 would not have required either
the cancellation of any claims or an examination support document.
A. Changes to Practice for Continued Examination Filings
The volume of continued examination filings (including both
continuing applications and requests for continued examination) and
duplicative applications that contain ``conflicting'' or patentably
indistinct claims, is having a crippling effect on the Office's ability
to examine ``new'' (i.e., non-continuing) applications. Continued
examination filings, other than divisional applications, as a
percentage of overall filings, has increased from about 11.4 percent in
fiscal year 1980, to about 18.9 percent in fiscal year 1990, to 21.9
percent in fiscal year 2000, to 29.4 percent in fiscal year 2006. The
cumulative effect of these continued examination filings is too often
to divert patent examining resources from the examination of new
applications disclosing new technology and innovations, to the
examination of applications that are a repetition of prior applications
that have already been examined and have either issued as patents or
become 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 with an uncertainty 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 an applicant's use of the unrestricted
continuing application and request for continued examination practices
may 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
[[Page 46719]]
Continuations, 84 B.U. L. Rev. 63, 64 (2004). The burden 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 appropriate for the Office to clarify the
applicant's duty to advance applications to final action by placing
some conditions 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). The changes in this
final rule will permit the Office to apply the patent examining
resources otherwise consumed by these applications to the examination
of new applications and thereby reduce the backlog of unexamined
applications.
The Office also notes that not every application as filed
particularly points out and distinctly claims what the applicant
regards as his or her invention. For example, this may occur where the
applicant's attorney or agent has not adequately reviewed or revised
the application documents received from the applicant. Applicants
frequently file literal translations of foreign documents as
applications, resulting in problems with compliance with U.S. patent
law, such as the written description requirement, as well as problems
with formatting and presentation of the claims. 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 could have
corrected earlier. In addition, while only a small minority of
applications are a third or subsequent continuing application, it
appears that some applicants and practitioners have used multiple
continued examination filings as a strategy to delay the conclusion of
examination. The Office, however, considers such a strategy to be a
misuse of continued examination practice. Specifically, the Office
considers such a strategy to be inconsistent with an applicant's and
practitioner's duty under 37 CFR 10.18(b)(2)(i) not to submit an
application or other filing to cause unnecessary delay or needless
increase in the cost of prosecution before the Office. This misuse of
continued examination practice also prejudices the public by keeping
applications in pending status while awaiting developments in similar
or parallel technology and then later amending their applications to
cover these developments. The courts have permitted the addition of
claims, when supported under 35 U.S.C. 112, ] 1, to encompass products
or processes later discovered in the marketplace. See PIN/NIP, Inc. v.
Platt Chemical Co., 304 F.3d 1235, 1247, 64 U.S.P.Q.2d 1344, 1352 (Fed.
Cir. 2002). However, the practice of maintaining continuing
applications to delay the conclusion of examination for the purpose of
adding claims after such discoveries is inconsistent with the duty
under 37 CFR 10.18(b)(2)(i) not to submit filings to cause unnecessary
delay or needless increase in the cost of prosecution before the
Office.
The Office, in light of its backlog and anticipated continued
increase in application filings, is making every effort to become more
efficient. Achieving greater efficiency