Around the Horn: Continuation Rule Changes

• Peter Zura
• Filewrapper.com
• Don Zuhn
• Kevin Noonan
• Stephen Albainy-Jenei
• Rand Bateman
• Steve Nipper
• Dane Carlson
• Eagle Robinson
• Patent Hawk
• KC Jones
• Gene Quinn
• USPTO’s Page on the Final Rules

[Post other relevant links in the comment section (but add substantive comments to a different post)]

Comments

[BabelBoy]

Yo, can someone point me to the actual language of the new rules -- as in, 37 CFR 1.75(d), 1.75(f), etc.? The Registrar appears to only give the PTO spin on the rules in 3 sections: Background, Discussion, and Comments. Where are the actual rules?

Thanks

Babel Boy

[real anonymous]

BabelBoy, check the last nine pages of the 129-page pdf file linked in the Final Rule post.

[BabelBoy]

Thanks, Anony.

[David J. French]

David French writes:

This initiative is a continuation of the policy to cut-down multiple exchanges between examiner's and applicants. The USPTO once allowed multiple office actions before final, a procedure which is still available in Canada. Then, in the 1960s, I believe, the USPTO adopted the policy of making a second examiner's office action final. That is the source of the problem. The objective was to cut-off debate and force applicants to get-it-right when they respond to the first office action.

I think the answer is to file an appeal and to file a continuation at the same time. That will get the examiner's attention and soon you will see many final office actions being withdrawn from final status.

[Anon-e-mouse]

That works, but only if you go to the trouble of filing an appeal brief.