Continuation Limitation: “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.”
Claim Limitation: “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.”
Patent Application Limitations: “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.”
Analysis to come: …
New Rules:
I do not find any talk of an examination support document in either the Senate or House Bill restricting Independent and dependent claims to 5/25. Was this just a proposal?? or am I missing the language? thanks
… You’re also missing the USPTO’s Frequently Asked Questions page ( link to uspto.gov )
Here’s an exerpt regarding the applicability of 1.78(d)(1) — which discusses the petition and showing:
K2. Do the changes to 37 CFR 1.78 affect the applications filed before November 1, 2007?
The changes to 37 CFR 1.78 (except for 37 CFR 1.78(a) and 1.78(d)(1)) are applicable to any nonprovisional application pending on or after November 1, 2007.
The changes to 37 CFR 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.
“What am I missing?”
Until the new rules take effect in November, there is no basis for limiting the number of continuation applications which may be filed.
“What am I missing? Thanks!”
You’re missing RTFR’s comment: link to patentlyo.com
The “one more” rule applies to the exemption from having to file a petition & a showing. However, no petition or showing is required for any application filed prior to November 1, 2007.
RTFR and SF (or anyone else!) – What is the precise basis for your contention that one could file more than 2 continuations on a family before November 1? You state that one could get away with such filings, giving up only the “one more” continuation (while still worrying about the 5/25 rules, of course), but I read the rules as saying that if you file “one more” after 8/21, then you’re done if the family has 2 or more continuations already. What am I missing? Thanks!
I haven’t seen anybody comment specifically on this (although lgb somewhat touched on it), so I hope it is not duplicative – for all of those looking at filing, or in anticipation of this rule being published, did file, numerous continuations, §1.75(b)(4) could cause some problems if the Exminer decides that the claims are “patentably indistinct” from each other. If I am reading this correctly, they can limit the ACCUMULATED TOTAL of all the claims from the related applications to the 5/25 limit, and this applies to all cases which have not received an Office Action prior to the Nov. 1 cut-off. So, even if you filed 3 continuations off of a single case three weeks ago, the PTO has still managed a way into potentially causing you issues.
Ouch.
“So if I have a long chain of continuations prior to Aug. 21, I can file several continuations in parallel prior to Nov. 1, but no more after Nov. 1, since I more than used up my ‘one more con’ after Aug. 21.”
Yep. If your client cares about keeping a continuation alive as long as possible to address competitors’ design arounds, the “one more” has some appeal because the “one more” application may not be filed for years depending upon when the last in the chain was filed and the current backlog in its art unit. But, if your client cares about claim coverage, multiple continuations with patentably distinct claims filed before November 1, 2007 may be a better route — but be prepared to rebut the presumption that the claims are patentably indistinct.
RTFR – thank you for the clarification – I guess I really need to read the comments to the rules much more carefully. This one was confusing – I had to read the FR section you referenced plus your comments for it to sink in. So if I have a long chain of continuations prior to Aug. 21, I can file several continuations in parallel prior to Nov. 1, but no more after Nov. 1, since I more than used up my “one more con” after Aug. 21. Your caution about the 5/25 rule is certainly correct, as well.
lgb:
The slides 32-33, which refer to August 21st and discuss the “one more” application, are misleading.
Turn to page 46736 of the Final Rules and look for the discussion about “August 21, 2007” in the last paragraph on the page. There you will find a discussion of how the USPTO will give a special exemption from having to file a petition and showing for “one more” application — even if its priority chain is huge — so long as the application is the only one filed after August 21, 2007 that claims priority to the applications in that priority chain. This means that, even if the application is filed well after November 1, 2007, no petition and showing will be necessary.
BUT REMEMBER: *no* petition and showing will be necessary for *any* application filed *before* November 1, 2007. That means that you can file unlimited continuations between now and then without having to file a petition and showing.
Slides 32-33, however, don’t tell you this and slide 33 even seems to suggest that all second applications filed after August 21, 2007 require a petition and showing. That’s not true. The petition and showing is not necessary for any application file before November 1, 2007. Plain and simple.
So file all you want before November 1, 2007, you’ll get the priority claim. ***BUT*** you may have to file an ESD for all those continuations if, for example, the claims are not patentability distinct. (All those continuations will not receive a first office action on the merits prior to November 1, 2007 and thus will be subject to the 5/25 rule.) ***ALSO***, you won’t get the benefit of the “one more” exemption for a continuation filed after November 1, 2007. (But what do you care if all of these continuations cover what you want?)
I’ve seen some comments here that the rules allow you to file as many continuations as you want prior to Nov. 1, after which you are limited to one more. However, the slides from the webinar and the comments precding the rules published in the FR state that for applications filed prior to Aug. 21, you can only file one more application after Aug. 21 – 2 more, I suppose, if you haven’t filed any continuations. The rules appear to be truly retroactive to prevent what some here are saying we can do – filing multiple continuations prior to Nov. 1. Now, it does appear you can file an RCE before Nov. 1 regardless of how many you’ve filed in the past, but after Nov. 1, your ability to file an RCE will be dependent upon what you have filed pre Nov. 1. But if you filed a continuation or CIP already prior to Aug. 21, you only have one more. If you filed 10 con’s or cips prior to Aug. 21, you have one more – regardless whether you decide to file it Aug. 22 or Dec. 5.
The PTO’s headline for their webcase announcing the new rules shouldn’t have been “Clarity Moves Innovation” as evidenced by how confusing and limiting some of the new rules are.
A better title would have been “US Economy Takes a $1B Hit as USPTO Shirks Responsibility for Patent Examination onto Inventors.”
Note in the FR the PTO estimated the burden of these new regulations to be 3,724,791 hours. Figure maybe $260/hour for average IP rates… it’s a billion dollar hit!
“I wonder whether you can use that “one more” to provoke multiple restriction requirements and spawn several divisionals, each of which being entitled to two continuations.”
The best strategy for provoking a restriction requirement may to be file each application with five different inventions (described in five independent claims) going in completely different directions, being absolutely certain to keep your claims at or below the 5/25 claim limit. Then the examiner will have no reason not to restrict. (Of course, this strategy will not always be possible.)
Possible Practice Point: Once you pass 5/25 hoping for restriction, I believe you are completely at the examiner’s mercy(he has zero incentive to restrict if you will be forced to submit the ESD), and the mercy of the ESD requirements and the 2-month non-extendable time limit. If you need to be higher than 5/25, append claims 6-N and 26-NN to the detailed description (before I/We claim or What is claimed is:). That way, while you may trigger an objection, it can mitigate furher prosecution and claim incorporation issues/problems down the road caused by the 5/25 limit.
“My understanding: you can file as many continuations as you want on a new application filed before November 1, *provided* you file the continuations before November 1. After November 1, the number of continuations you can file will be limited (or perhaps eliminated) by the rules (and by what you’ve already done).”
That’s correct, but filing tons of continuations may still run afoul of the 5/25 issues.
The benefit of *not* filing any continuations between now and Nov. 1st is that the rules give you “one more” that will not be subject to the continuation-number rules. (For more information, search on the phrase “publication date” in the published rules.)
I wonder whether you can use that “one more” to provoke multiple restriction requirements and spawn several divisionals, each of which being entitled to two continuations.
My understanding: you can file as many continuations as you want on a new application filed before November 1, *provided* you file the continuations before November 1. After November 1, the number of continuations you can file will be limited (or perhaps eliminated) by the rules (and by what you’ve already done).
Does filing a new application before November 1 allow you to avoid the limitation on the number of continuations?
Comments please.
“Seems to me that you want to add claims to a single application, send in the SSR, and hope for a restriction. This way you get DIVs + 2 CONS.”
And hope is right, I believe, if you have more than 25 claims total in the application! **Why wouldn’t the shrewd (or contentious) examiner always decide not to restrict any application with more than 25 claims?** Then you will have 2 months to get in your ESD on all five inventions (i.e. you’re doing all the search and claim analyzing work for him) or the application goes abandoned (two counts). It’s a win-win situation for him after the non-restriction: either an easy count or two (with you doing the search/claim work or getting a two-month letter), or you’ll need to abandon and re-file a continuation with less than 25 claims.
And what about the office policy that a restriction is *always* proper? Couldn’t they squeeze an ESD out of you and then one action later restrict??
Any thoughts?
How about this:
Pre 8/21, you have 5 applications that each already goes back to the same three or four cases one of which had an RCE.
1. We are done with RCEs in these five cases.
2. On 11/01 we will be done with continuations.
3. Today, I can file as many continuations as I want.
Am I missing something?
Lets say I have a pre-8/21 case that discloses 5 “extra” inventions beyond what is currently claimed. If I file 5 CONs between now and 11/1, then post 11/1 I don’t think ANY CONS are allowed because of 1.78(d)(i)(B).
Seems to me that you want to add claims to a single application, send in the SSR, and hope for a restriction. This way you get DIVs + 2 CONS.
telco said: “Jay,
“I took your challenge and sorry but I think see the flaw in this strategy you posted:
‘It appears a voluntary divisional per 37 CFR 1.78(a) would not be redefined as a continuation application until 11-01-2007, and 1.78(d)(1) doesn’t kick in until that date, either. Thus, one could conceivably file a number of voluntary divisionals in the next 2 months in lie of CONs.'”
For accuracy’s sake, it was Davey Jones’ challenge, not mine.
telco said: “See C4 pg 10 of the USPTO’s FAQ. The USPTO considers “so-called “voluntary” divisional applications” as continuation applications. The FAQ makes clear “voluntary divisionals” before November 1 will be considered by the USPTO as continuation applications.
“I searched 35 USC and 37 CFR, but could not find a provision for “voluntary divisionals.” The USPTO FAQ implies that “voluntary divisional” was an informal term for what was formally a continuation application.”
I agree.
I think another way to phrase the element of the rules Davey Jones was asking about is: for pre-8/21 families, you get at least one more continuation w/o a petition regardless of how many other continuations you filed pre-8/21; beyond that one ‘freebie,’ you’re can take the next two months to file as many continuations as you can, but come 11/1 you’ll need to petition for each one.
“I have reviewed yet another request for information pursuant to 37 CFR section 1.105.”
I know it’s off topic. But I have recently had a spike in these in my practice as well (as in, 2 in the past week and NONE in the 20 years before that)
Jay,
I took your challenge and sorry but I think see the flaw in this strategy you posted:
“It appears a voluntary divisional per 37 CFR 1.78(a) would not be redefined as a continuation application until 11-01-2007, and 1.78(d)(1) doesn’t kick in until that date, either. Thus, one could conceivably file a number of voluntary divisionals in the next 2 months in lie of CONs.”
See C4 pg 10 of the USPTO’s FAQ. The USPTO considers “so-called “voluntary” divisional applications” as continuation applications. The FAQ makes clear “voluntary divisionals” before November 1 will be considered by the USPTO as continuation applications.
I searched 35 USC and 37 CFR, but could not find a provision for “voluntary divisionals.” The USPTO FAQ implies that “voluntary divisional” was an informal term for what was formally a continuation application.
> the myriad of definitions that may be given to term “is”.
*cough*
Jay – The more I look at it, the more I think your interpretation is right, because 37 CFR 1.78(d)(1) applies only to applications filed on or after 11-01-2007; the “one more” rule looks to be a post-November 1 exception to the general limitation on the number of continuations.
FirstGlance – I agree about the presentation (esp. slides 30 & 32) – it does make it look as if the date is 08-21-2007. I think the presentation is just incomplete.
I still wonder if going with voluntary DIVs, to the extent one can, would be a better way to go given the additional flexibility within DIV families for other RCEs/CONs…
Thanks.
This is a message to our friends in the USPTO. I have reviewed yet another request for information pursuant to 37 CFR section 1.105. Careful, careful, you are making the ex parte process look like an inter partes process. I strongly recommend that you consult with your legal department, because when interrogatories are submitted you have to make sure that you define your terms; otherwise, you will be provided with the following phrase:
I have insufficient information with respect to for a belief, becauase the interrogatory is vague due to the myriad of definitions that may be given to term X.
Jay,
This was my interpretation as well, but I am starting to waver with these “one more” rules. If you look at the PTO’s FAQ (link to uspto.gov) under section K4, it seems to suggest that families that have more than one continuation filed before August 21st will only get “one more” continuation (i.e. after Aug 21st). Although, I’m still clinging to hope that this is not the case. I guess we’ll find out more after our webcast tomorrow…
Dennis, is there any way you could break these comments up into rule sections. For example, this entry would fit nicely under a “Continuations” section. Other sections might include “Constitutionality Questions”, “RCE’s”, “Divisionals”, “ESDs”, “5/25 Rule”, and “General Rants”.
“it appears that the PTO is limiting the number of CONs that can be filed after 08-21-2007 to one, if the family in which the CON is filed already has 2+ CONs. However, I’m not seeing – yet a similar limitation on the number of voluntary divisionals. It appears a voluntary divisional per 37 CFR 1.78(a) would not be redefined as a continuation application until 11-01-2007, and 1.78(d)(1) doesn’t kick in until that date, either. Thus, one could conceivably file a number of voluntary divisionals in the next 2 months in lie of CONs.
If anyone can poke holes in this strategy, I’d appreciate hearing about it. Thanks in advance.”
I was wondering about those time windows as well and reached a slightly different interpretation than you have. I don’t think the first part of what you said is correct. That is, I don’t believe the PTO is limiting the number of continuations you can file after 8/21:
“The changes to CFR 1.78(a) and 1.78(d)(1) … are applicable only to any application, including any continuation application, filed … on or after November 1, 2007.” p. 46716, col 3.
As I understand it, there’s nothing to prevent you from filing as many continuations as you want for the next two months, not just divisionals.
I read the the first full paragraph on pg 46717 to mean that, if you have a parent application with a pre-8/21/07 filing date with umpteen continuations, also with pre-8/21/07 filing dates, you can, post 11/1/07, file a single additional continuation without a petition, as long as (1) you’re only claiming priority to pre-8/21/07 nonprovisional applications and (2) you didn’t file any continuations between 8/21 and 11/1 (i.e. you didn’t employ a strategy such as the one you suggest in your post).
That’s just based on my preliminary and incomplete reading of the Fed Reg. If anyone disagrees, I’d like to hear it.
THEN claim it. Sorry.
> How do you explain to your investors that the business plan you have been talking about is no longer feasible, and that the money they paid so far is was flushed into the public domain by the PTO with the stroke of a pen?
Your business plan is to keep on filing continuations until someone else finds an invention in your voluminous disclosure, and they claim it?
Ahem – a real question about the new rules, if I can wade through the “Mooneys” out there – so it appears that the PTO is limiting the number of CONs that can be filed after 08-21-2007 to one, if the family in which the CON is filed already has 2+ CONs. However, I’m not seeing – yet a similar limitation on the number of voluntary divisionals. It appears a voluntary divisional per 37 CFR 1.78(a) would not be redefined as a continuation application until 11-01-2007, and 1.78(d)(1) doesn’t kick in until that date, either. Thus, one could conceivably file a number of voluntary divisionals in the next 2 months in lie of CONs.
If anyone can poke holes in this strategy, I’d appreciate hearing about it. Thanks in advance.
PS – Malcolm – for your business, why did you decide on trade secret protection? (This is a real question, not snark – just curious.)
ahh mooney or is it *money*? an obvious candidate for contraction
i would really be hurt if you made negative comments about my musings… please please leave me alone
rotlol
how will the rules mesh with change in appeals practice as being proposed — 25 page limit? looks more and more like a market-based (read big company) registration system with no accountability and litigation on several levels at the heart of dispute resolution…
in a parallel patent sstem far far away … georgia? north carolina? florida? maine?
it would be easier to let *giggle* index all material– in fact, use the bounty model with ad-supported references for secific claim element terms with higher value under any number of IP valuation matrix (eg, anyone for the term “non-interfering” in art unit XX) — the level of granularity will likely follow the leadership of each art unit and the corresponding prosecutors from the applicant side; connect any other sources by 3rd party search affiliates to the same index; have the pto groups determine “broadest reasonable meanings” with visual mappings of these terms commensurate with the group art in which the case was filedm — use file histories to clean up the terminology index and prevent *wakipedia* problems and gaming the system; write patent applications which are directed specifically to the methods and apparatii that include the terms but spend more time on claim construction and context to meet 112 para1 while demonstrating 102/103 patentability– and bring in an outside contractor to administer the process so that the government can make more money from fees err taxes…
although it is clear somethin is a bad patent, it doesn’t make much economic sense. a bad patent is only bad if the cost exceeds the return.
the pto is one of the only if not the only government agency that makes money! not even treasury can claim that… so these changes have to reflect some other issue that is missing from the minutae of the 129 pages of explanation and clearly make for pre-emptive efforts at letting the rules come into effect…
hmm… conspiracy theory … fodder for summer musings
most contentious and public infrinegment case in the past 10 years was arguably? who was involved in that case? industry perceived to benefit most from these rule changes based on public comments? how many times did points raised by the porposed rule changes get raised by the case above? what executive branch officials have been overseeing the rule changes? if lawyers, from which firm?
it is crazy to contemplate that while these changes are being made copyright term extensions and doj directives on pursuing copyright infrinegers is higher priority…
Yeah, “Document of Doom” sounds better than the other one (estopple suicide document).
JS wrote:
“Another practice tip– This is rarely used in my experience, but priority can be dropped from applications. This might become commonplace now. If you have a CIP and you don’t need the priority date, you can amend the first paragraph to drop the priority claim(s).”
If you did that, assuming the prior app has been published, wouldn’t it then be prior art against the CIP?”
I think this might get rid of the few remaining reasons for filing
a CIP at all, and there weren’t many, because in many cases the parent
is available anyway as art against the CIP–please see an article
by Kirk Teska entitled “The False
Security of Continuation-in-Part Applications” in the March 2001
issue of the Journal of the Patent and Trademark Office Society
(ha ha ha, I know, but see the article anyway–it makes some
excellent and completely independently verifiable points about
CIPs).
“Please do enlighten us then. How do you explain to your investors”
I don’t have investors. I have customers.
“the business plan you have been talking about is no longer feasible”
Any attorney who helped formulate a business plan in the last 5-10 years whose success hinged on patent law stasis or broadening of patent rights had his/her head wedged deeply up into a dark place.
“the money they paid so far is was flushed into the public domain by the PTO with the stroke of a pen”
Get a grip.
I figure this is worse for Examiners than applicants.
Now Examiners will be cringing when they send out that Final Rejection that now will result in an Appeal Brief but that previously resulted in a quick and nifty RCE.
Hah!
Malcolm,
The depth of your relevant experience is impressive. Please do enlighten us then. How do you explain to your investors that the business plan you have been talking about is no longer feasible, and that the money they paid so far is was flushed into the public domain by the PTO with the stroke of a pen?
“Another practice tip– This is rarely used in my experience, but priority can be dropped from applications. This might become commonplace now. If you have a CIP and you don’t need the priority date, you can amend the first paragraph to drop the priority claim(s).”
If you did that, assuming the prior app has been published, wouldn’t it then be prior art against the CIP?
“Malcolm Mooney and Gideon, I read between the lines that you were never employed by an innovative start-up company.”
Folks, after many failed attempts, we have a winner. John Edward the TV Psychic better watch his back. It is true: like nearly every patent attorney, I was never employed by an “innovative” start-up company.
I do run a couple businesses of my own on the side, though, and my methods are kept as trade secrets.
Mr. T said:
“I’d much rather see a push to require a Document of Doom (i.e., ESD) in all cases, that all examiners be fired so we can hire them to do our ESD searches, and the PTO filing fees slashed accordingly. How’s that PTO? We no longer need your asses.”
I agree. Get rid of all the Examiners. The PTO will become a clearing house. All of the examiners will go into private practice and charge $250/hour.
Then we’ll see how much big business enjoys what it has wrought.
“Unlike most of the comments in this thread, at least reading the new rules doesn’t bring back unpleasant memories of teenagers whining about, god-forbid, having to put some effort into learning something new”
Jay, I am amused by your appetite for the crap the PTO is feeding us.
Somebody please post if they know of any party that is going to challenge the rules and request a preliminary injunction before they take effect on Nov. 1? Although is seems unlikely it could happen that quickly.
Mr. T – glad to see my name for ESDs is catching on – “Document of Doom” link to patentlyo.com
The point I am making is that the major reason the PTO exists is to search an invention. Once they abdicate that responsibility, what use are they?
I’d much rather see a push to require a Document of Doom (i.e., ESD) in all cases, that all examiners be fired so we can hire them to do our ESD searches, and the PTO filing fees slashed accordingly. How’s that PTO? We no longer need your asses.
“The takings issue is one of depriving one of the benefit of their property by legislative actions. This results from the retroactivity of the change in laws. Therefore, the government can do this . . . they just have to pay for it.”
I don’t think there is a 5th amendment takings here. I believe a 5th amendment takings would require the applicants to be deprived of all economic viability in their patent applications. Since they can submit as many claims as they want for all currently pending applications (as long as they provide the claim analysis document) there is no such deprivation. You may want to try another theory.
Anon said:
at a minimum the new rules reduce the burden on the PTO. Reducing regulatory burden is a perfectly good and sufficient reason.
Response:
Really, why is that?. In fact, the USSC has stated numerous times that savings of money never justifies abrogating Constitutional duties. This is an interesting intersection of competing interests. Is it possible for a governmental agency to abrogate its Consitutional duties in furtherance of reducing its burden in order to save money. Maybe our Marines should use that reasoning in Fallujah. I can see it now, . . . Mr. President, the budgetary constraints that we are presently under makes it more cost effective to surrender than to fight. As a result the 2nd MarDiv was handed over to the enemy at 0800 hours this morning.
Anon said:
Otherwise, the PTO should do *unlimited* work to make sure it never issues an incorrect rejection.
Response:
No, the PTO should be held monetarily liable for damages caused to a defendant for an invalid patent. Again this is simply accountability-something which this government is short on.
Anon said:
I am not saying that the ex-post nature of the change is completely fair or desirable; nor am I saying that the limits are necessarily a good idea; nor am I saying that the PTO isn’t money grubbing while doing no work. But please, please leave the constitution out of this.
Response:
Why, there are literally volumes of law review articles on the unconstitutionality of executive agencies. It is time we trifurcate the same and this act by Dudas is the most glaring example in over 228 years of the Republic as to why the Separation of Powers is a good thing. Besides, if we control this executive agency . . . just think what can be done with the IRS 🙂
Anon said:
OK, I understand that the retroactive change in rules is somewhat unfair, and I sympathize to some small extent, but can we stop invoking the Constitution in all of this? Anyone who thinks they have a winning constitutional challenge, at least one that will win in a U.S. federal court, is delusional.
Response
I disagree. Were there clearly no Constitutional infirmities present then the USPTO would not have wasted three pages of Constitutional defense of their rules. In fact your matter-of-fact position on this matter leads me to believe that you are acting as an agent of the USPTO. I suspect that one of the big pharmacy companies is going to test the Constitutionality of these rules by the filing of a TRO within two or three weeks.
First, the on ex post facto takings issue. Now this statement here is what makes me think you work in the USPTO. It evidences a lack of understanding of the Constitution to the same level of the new rules. Firstly, ex post facto was found to apply only to criminal matters. This was from Chief Justice Rhienquists decision in the mid 1908s. I have historical evidence that this is, in fact, not the case. The ex post facto clause was ALWAYS intended to apply to ANY government action. However, since, Rheinquist was heavily medicated during the time he authored this opinion, I believe the opinion should be given no weight. Nonetheless, it is another example of statist elitism espoused by the Rheinquist court and we must suffer under the same for the time being.
The takings issue is one of depriving one of the benefit of their property by legislative actions. This results from the retroactivity of the change in laws. Therefore, the government can do this . . . they just have to pay for it. This happens all the time and there is no reason why the USPTO should be immune from the same. It is actually great, because now instead of suing a patent attorney for making a wrong determination in pursuing the wrong set of claims, the client can sue the government for a taking. Alternatively, should a client sue me for this, I will file an indemnification action against the U.S. government based upon the takings issue. This is really great stuff. The USPTO has, in effect, become an insurance company.
Anon said:
You are joking if you suggest that the constitution forbids the PTO from raising its fees.
Response:
Duh, it does unless granted the authority by Congress.
Anon said:
at a minimum the new rules reduce the burden on the PTO. Reducing regulatory burden is a perfectly good and sufficient reason.
Response:
Really, why is that?. In fact, the USSC has stated numerous times that savings of money never justifies abrogating Constitutional duties. This is an interesting intersection of competing interests. Is it possible for a governmental agency to abrogate its Consitutional duties in furtherance of reducing its burden in order to save money. Maybe our Marines should use that reasoning in Fallujah. I can see it now, . . . Mr. President, the budgetary constraints that we are presently under makes it more cost effective to surrender than to fight. As a result the 2nd MarDiv was handed over to the enemy at 0800 hours this morning.
Anon said:
Otherwise, the PTO should do *unlimited* work to make sure it never issues an incorrect rejection.
Response:
No, the PTO should be held monetarily liable for damages caused to a defendant for an invalid patent. Again this is simply accountability-something which this government is short on.
Anon said:
I am not saying that the ex-post nature of the change is completely fair or desirable; nor am I saying that the limits are necessarily a good idea; nor am I saying that the PTO isn’t money grubbing while doing no work. But please, please leave the constitution out of this.
Response:
Why, there are literally volumes of law review articles on the unconstitutionality of executive agencies. It is time we trifurcate the same and this act by Dudas is the most glaring example in over 228 years of the Republic as to why the Separation of Powers is a good thing. Besides, if we control this executive agency . . . just think what can be done with the IRS 🙂
Anyone know any parties currently preparing a suit against the USPTO? The sooner the better.
Unlike most of the comments in this thread, at least reading the new rules doesn’t bring back unpleasant memories of teenagers whining about, god-forbid, having to put some effort into learning something new.
Steven Sereboff, you are a complete imbecile. If you admire leadership by deceit so much, I hope you are writing from Iraq.
Malcolm Mooney and Gideon, I read between the lines that you were never employed by an innovative start-up company.
I just send the following questions for tomorrow’s webcast:
1) If I have an application that’s presently pending (with no continuations files as of yet) and I file three continuation applications prior to the effective date of Nov. 1, 2007, will any of those continuation applications be themselves entitled to further continuation applications?
2) If I have an application that’s presently pending (and was filed well before the rules were published) that claims priority from multiple parent applications, and one of those applications has had an RCE filed during its prosecution (perhaps a year or two ago), is the pending application entitled to an RCE once these rules come into effect?
By any chance, does anyone here know the answers?
Wahpeton, not Whapeton
Thanks for the Whapeton reference. I was just curious as to what the CAFC thought would not constitute “incorporation by reference” in a claim referencing the prior claim. Ranbaxy provided an interesting answer.
why bother about Ranbaxy – all that clarifies is that your incorrectly dependent claim is invalid for form. However, its been settled that such a claim is non-infringable (and therefore useless) for years (Whapeton canvas).
Mr. Harrison,
Pfizer v.. Ranbaxy is at 457 F3d 1284, I believe.
Dear anon,
Why would I do that? Do you think I like what the PTO has done? When pigs fly!
“Pfizer Inc. v. Ranbaxy Labs. Ltd., 437 F.3d 1284 (Fed. Cir. 2006)” is cited to by the USPTO (at 46724) as justification for its changes to the rules for dependent claims …
Does it bother anyone else that this cite does not check? (It leads to a vacated criminal appeal in which the holding was, “Holding: The Court of Appeals, Stephen F. Williams, Senior Circuit Judge, held that payments received by defendant, a police officer, for information retrieved by defendant’s use of computer data base linked to state data bases concerning fictitious individuals were not “for or because of an official act,” as required to sustain conviction. Reversed.”)
Does anyone know of the correct F.3d cite? I found the case on Georgetown University’s site (link to ll.georgetown.edu) but there’s no cite listed, just the docket number.
We (and many other firms in the know) filed a bunch of continuations on Monday after someone got hold of the rules and read the “before August 21, 2007” paragraph. That was an underhand tatic by the PTO.
Note to JAOI – don’t get all panicky and accuse me of being “un-American” for condeming the USPTO
“righteous … righteous” (sorry, just watched Finding Nemo again)
The practitioners who strive to claim “what the art does not teach” are probably making a big mistake, regardless of these rule changes – because they do so in reliance on their own inadequate prior art search, and on the PTO’s inadequate prior art search.
That’s why their broad allowed claims look so great to their clients, and are so easy for their clients’ competitors to have invalidated.
Oh yeah –
But these rule changes are sure going to make it tougher on the “claim what the art does not teach” crowd.
Now you won’t have 5 RCE’s to keep refining what “the art does not teach”.
Oh well.-
I suppose now you’ll just have to focus on the actual invention.
My my how tough things have gotten!
Rules are fine.
This puts the emphasis where it should have been already – on filing applications that claim the correct invention scope in a form you are ready to defend.
The divisional rules are fine.
I’m a little surprised that so many practitioners have an issue with this.
Personally I dislike the serial RCE practice – much better to get claims you can live with and appeal.
OK, I understand that the retroactive change in rules is somewhat unfair, and I sympathize to some small extent, but can we stop invoking the Constitution in all of this? Anyone who thinks they have a winning constitutional challenge, at least one that will win in a U.S. federal court, is delusional.
First, the on ex post facto takings issue. Sure, patent applicants disclosed thinking they were going to get unlimited continuations, now they are not. Surely they would have preferred unlimited continuations, and surely at least a couple of patent applicants would not have applied without unlimited continuations and instead hid their inventions as a trade secret. But that logic applies to *any* change in PTO regulations that applies to currently pending applications. If the PTO raised the fee for continuations, surely patent applicants would prefer the lower fee, and surely at least a couple of patent applicants would not have applied if the fee had been higher. You are joking if you suggest that the constitution forbids the PTO from raising its fees.
Second, some people apparently think that limiting the number of continuations, or limiting the number of claims, violates the “promote the progress” clause. These people apparently have never heard of “rational basis review” that applies to this clause. See Eldred v. Ashcroft. If the court can imagine a rationale, real or hypothetical, that is good in some way, it is constitutional. I’m not even going to wade into the debate about whether too many continuations can hinder progress (which it clearly might, or at least Congress and the PTO could think so without being nuts); at a minimum the new rules reduce the burden on the PTO. Reducing regulatory burden is a perfectly good and sufficient reason. Otherwise, the PTO should do *unlimited* work to make sure it never issues an incorrect rejection. Again, you are joking if you suggest this.
I am not saying that the ex-post nature of the change is completely fair or desirable; nor am I saying that the limits are necessarily a good idea; nor am I saying that the PTO isn’t money grubbing while doing no work. But please, please leave the constitution out of this.
Another practice tip– This is rarely used in my experience, but priority can be dropped from applications. This might become commonplace now. If you have a CIP and you don’t need the priority date, you can amend the first paragraph to drop the priority claim(s). The USPTO will remove the priority claims in the “continuity data” in PAIR (I have done this before in order to increase an application’s patent term and they made the change fairly quickly). I am assuming then the application would not already be considered a continuation and you would have the maximum number of continuations.
Anyone see a problem with this approach?
How can this rule change be Constitutional. If this sort of action took place in the consumer world, the state attorney general would have to step in to prosecute for consumer fraud.
That is because it is a classic example of a “bait and switch scam” where an unsuspecting consumer is lured in to make a purchase with a false promise , only to discover that the merchant has no intention of honoring the initial promise whatsoever. In the case of Continuations, patent applicants are lured in to make full and complete disclosures of their inventions, on the promise that the United States government via the USPTO will guarantee them the opportunity to seek protection for any and all that they disclose. The logic behind that promise was based on the Constitution’s “promote the useful arts” goal, as it is in the interest of society to have inventors disclose all up front rather than sequester their inventions until after they obtain protection.
By making the rule change retroactive, the PTO has implemented a bait and switch scam on applicants who already disclosed their inventions and cannot “undisclose” them. Surely those applicants would not have made full disclosures had they known.
The rule change cannot justly be retroactive!
There is another problem. Hence forth applicants will have to decide what to conceal from the applications they file, taking into account the issue of how much they are equipped financially or otherwise to pursue in prosecution. “Intentionally conceal”? How can a rule that forces inventors to “intentionally conceal” be promoting the useful arts? Therefore it is anti-Constitutional or plain un-Constitutional.
There is still another problem. If applicants are forced to intentionally withhold parts of their invention, how does one determine abandonment? There is now “coerced abandonment” courtesy of the PTO itself. In view of this, again, how can this be anything but anti-Constitutional or un-Constitutional?
But of all these problems, the “bait and switch” aspect of retroactivity has to be the most troubling. The USPTO is apparently stooped to scamming (literally) the tax paying law abiding public, thanks to this rule change.
JK, I don’t think so. I think your options are to now either file as many cons as you want before the rules take effect, or after they take effect you can have only one more.
This is what pisses me off about the rules. This rule change was completely unforeseeable when apps were filed years ago. Some CIPs I’ve filed didn’t really have to be CIPs had I only known.
i’m not sure i’m reading this right, but it looks like if you already have a pretty long spidery con chain, that you can get ‘one more’ on each of the legs, no matter how far back it goes. But has anyone figured out the RCE restriction? if i’ve already got one, it looks like i’m done doing that again. Looks like the board or petitions people are gonna be busy.
How fast can i get the examiner to give me an FAOM on my cases?? Glad the end of the year is here – maybe get a few more moved before i’m locked out on some of my current cases.
Hey TM:
The only one who is critiquing is you. I merely stated facts. I didn’t even draw a judgment. I note that you judge the situation as being evil.
johng-
seems to me like a restriction by original presentation will still work to get a div, but i don’t think a mid-stream restriction will if the examiner has already ‘examined’ the claims. Hopefully the examiners will know to stop that practice! (hah)
snowman, does “a divisional is now defined as a filing responsive to a restriction requirement – and only if the claims have never been examined before (1.78(d)(1)(ii)(A)-(B))” mean no more restrictions allowed in mid prosecution?
Also, suppose you reserve one claim space (one of the allowed 25) for a claim to be introduced during prosecution. Could the examiner restrict like before: “not elected by original presentation?” Seems like a divisional could be filed off this restriction.
In the SUMMARY PART, Under “Supplementary Information”….
“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….”
The way I look at this is, if I have a application that has three CIPs already, I still can file another two CIPs.
Am I right on this???
a general thought on the con process after reading this thing:
Don’t file voluntary divisionals effective today – they are nothing more than continuations (1.78(a)(2) and (3)) (effective date of 1.78(d)(1) looks like the publication date of the final rule – not November 1. See page 46736-46737). A divisional is now defined as a filing responsive to a restriction requirement – and only if the claims have never been examined before (1.78(d)(1)(ii)(A)-(B)). So if you are already in a con chain, the voluntary divisional is your one and only ‘one more’. Which sort of means that if you file one too many, it loses its priority to the earlier application and is just another application with the filing date as the date you filed the app – just waiting for that publication of the prior app that you thought you were claiming priority to to nail you. So instead maybe file a suggested restriction requirement (1.142(c)) and hope the examiner agrees with you so you can file the div’s. If the examiner doesn’t restrict, then you are stuck figuring out that ESD thing in 1.265 or get within 5/25.
> If you notice on page 46740 they amended section 1.142 to state that an examiner “may” (rather tha “will”) require restriction if two or more independent and distinct inventions are claimed in a single application.
That is not a change. It has and will continue to read “may”.
All this stuff is nuts. I know we have to eventually learn it, but all these rules are insane. Listen to what we are arguing about!
I read in the Washington Post yesterday that George Bush feels like a dissident because of his failed attempts in spreading democracy around the world. In fact, it turns out that this guy who would wipe tyranny off the face of the globe is the biggest tyrant among us. He’s putting all these barriers up, making things more complicated, stealing taxpayers blind and licking the fat behinds of the big players at our expense.
Except for a dedicated few out there (you know who you are), I am ashamed of everyone in this business, most notably, the professional IP organizations. How could you let the idiots running the PTO do these things?
Johng – I think you’re right about restriction requirements being a thing of the past. FR46740 states that 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 [citations omitted].”
I think it’s a given that Examiners have, in the past, found “serious burden” if the lights are on when they look at the claims and discern two inventions. Presumably, with the 5/25 rule and the limitations on CONs/RCEs, such “burden” would vanish, ironically leaving it up to the Applicant to convince the Examiner that burden does, indeed, exist, so as to squeeze out a few more divisional applications.
Interesting article on the effect of a recent anti-patent ruling in India – Novartis has decided to move hundred of millions of dollars in R&D from India to China in light of the court ruling. link to ft.com
Dear KCB,
As I suggested earlier in a context where you were groin thinking, in the big picture, you miss the boat.
Stuff happens, even evil stuff, even in America. Are you contributing anything in any particular field, or is your job just another F’in critic.
I think you can file as many continuations as you want between now and Nov. 1st. At the same time, the rules give you a freebie after Nov. 1 if you are only claiming priority to apps/patents filed before Aug. 21st (today) and there are no other apps filed between today and Nov. 1 which claim priority to one of those pre 8/21 apps/patents. I think this is intended to lessen the number of continuations filed between now and Nov. 1st. It’s an interesting approach, since you have to decide if you want to file one or more continuations now or keep one in your back pocket for use at any time in the future.
ALS:
The PTO’s PowerPoint presentation makes things a little less clear. Take a look at slides 30 and 32(link to uspto.gov). What do you make of this “one more” rule? I initially thought that the continuation rules were only applicable after November 1 so that you could file as many continuations as you want before the November 1 date.
However, I’m not sure I fully understand this “one more” rule. It appears to limit the number of continuations you could file in cases filed before today to “one more” continuation beyond two. If this is the case, it would make a mass filing of continuations only allowable for cases filed after today if the mass filing were done before November 1. Any other thoughts?
Dear Malcolm,
For anecdotal after 5pm interest, excerpts from:
link to wiki.answers.com
“In Texas, under state law, if the repo man is reposessing your car at your home at night, you can shoot him dead as long as he is on your property when you shoot him (e.g. in your driveway).
“In Montana, if you have your property in the hills posted no trespassing and you shoot a trespasser dead for being on your property without even checking to see if he is a lost teenager (he was shot from the front porch and was too far away to know who he was), the grand jury will not indict you for murder. To be fair, the person turned out to have a criminal record.”
“I believe in some states you can shoot a trespasser if he doesn’t stop when you give him fair warning.”
Even if the trespasser has good reason to believe that he isn’t trespassing? Or if the only escape from the property is to jump off a cliff to certain death?
Dear NP,
My particular Constitutional interest has to do the Supremes’ Constitutionally-inconsistent eBay ruling – – I’ll leave others to talk about continuations et al.
My position may be found on this June 11, 2007 Patently-O thread, titled, “MercExchange v. eBay: Injunction Hearing.” My thoughts begin near the top with “Dear Brian.” Here is a link:
link to patentlyo.com
Also, may I refer you to this thread’s comment?
link to patentlyo.com
Dear Lionel,
With what other areas of civil litigation would you compare patent enforcement to?
Trespass? Hell, I believe in some states you can shoot a trespasser if he doesn’t stop when you give him fair warning.
No treble damages? No Injunction? It costs tens of thousands for a talented professional to prosecute an inventor’s invention into an enforceable patent, and several millions of dollars to effectively enforce a patent.
<> Are you in favor of a country where only wealthy inventors and big business get to try their hand at inventing?
<> Are you in favor of compulsory licensing?, equivalent to EMINENT DOMAIN for big business? Is that Constitutional even without an amendment?
Please also comment on this, what KR and I said above:
“If there’s no ability to get more than a reasonable royalty or lost profits, and no ability for non-competing inventors to enjoin an infringer, why take a license? Just do what you want and let the court system negotiate a license for you after the fact.”
Yours Truly,
Just an ordinary standup Constitutional philosopher(TM)
a/k/a