Final Rule: Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications

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:

• File Attachment: Final Continuation Rules.txt (982 KB)
• File Attachment: Final Continuation Rules.pdf (657 KB)

Comments

[anonymousAgent]

this week I am too busy with client deadlines to read this monster, but I have PRACTICAL QUESTION for those who get to read this document:

A question about the 25 claim limit:
often I provide dependent claims to clearly provide examples of what I meant in the independent claim. these dependent claims are not necessarily fallback positions, but are rather meant to imbue clarity into the independent claim.
can I:
a) file an application with more than 25 claims;
b) in a preliminary amendment filed the same date as the filing date of the application, cancel some of the "extra claims."
WIHOUT triggering the requirement for the "examination document."
Even today, often we do this if the client wants a claim "on the record" but does not want to pay for the extra claim.
according to the new rules, would this "irreversably trigger" the requiremenet for the examination document, or would I be OK as long as I cancel the extra claims? does the 25 claim refer to the application as filed, or the application as being examined ??????

Thanks.

[Zeke]

"a) file an application with more than 25 claims;
b) in a preliminary amendment filed the same date as the filing date of the application, cancel some of the "extra claims."

What the.

On the record? Why not just prose-ify(TM) them and stick them in the disclosure?

Are these clients of yours alchemists?

[lester]

The strategy of filing a lot of claims and then canceling them in a prelim amdt would be useful if you wanted to later bring them back in the case for whatever reason rather than rely on just what is in the spec. the prelim amdt would say that the claims are being canceled without prejudice to being brought in again.

[Mark Perdue]

These things are really a frigging abomination.

A pox on the house of Dudas, Doll and Peterlin.

[patent leather]

Somebody please file suit ASAP! I wish I could, but what do prosecutors know about litigation?

[anon]

The PTO bellyaches about the the amount of its work, and assures us that it can't hire its way out of the backlog problem. How do they solve the problem? Pass rules that artificially (arbitrarily and capriciously?) constrict the front end of the patenting process. The new rules appear to hinder, not "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." 25 claims? Why not 5? Why not 400? Why does the PTO get to set this number? 3 CON/CIPs and 2 RCE's? Why any? Why not 10? Why any set limit at all? It's almost the definition of arbitary. I'm sure they'll trot out some "scholarly" article on how these artificial limits don't effect a high percentage of applicants thus ignoring the fact they are still arbitrary and harmful to legitimate invention. It will be interesting to see if any corporation, entity or individual has the time and means to file suit against these rules.

[Steven Sereboff]

I'm going to extend my contrarian neck here and say that there are some good things in the package. It reflects a lot of hard work and impressive thinking. There's a pretty good effort to skirt the APA issues, and my hat's off to PTO management for their focus and bravado.

[hp]

I wonder if Judge Moore will recuse herself when the cases challenging this arbitrary crap finally reach the Fed. Cir.?

For someone that never prosecuted anything - her wacked "continuations bad" law review article sure has made a mess of things.

[step back]

Anon,

Exactly.
I was waiting for someone else to notice it first.

Why are the 5/25 numbers something other than arbitrary and capricious rule making with no rational basis in facts? Why are the 2+1 numbers something other than arbitrary and capricious?

Where is the PTO's definition of "invention". They sure use that word a heck of a lot in their new rules of span-english inquisition. But there is no definition. Their rules are indefinite and subject to whimsical abuse at the hands of every power hungry examiner.

P.S. Has OMB approved (err... rubber stamped) the PTO's financial impact statement?

[Help]

So does this mean that all of us who have been rushing to file continuations the last few months now have to provide these statements against interest (SAI's) for each of those unexamined cases (beyond the permitted 2+1 for the parent)? What about if we abandon those cases which have been unexamined - does that mean no RCE is available for the parent without a SAI?

Help.

[steve]

It is telling when the defense of the rules (120 pages) is longer than the actual rules (8 pages).

[Malcolm Mooney]

"all of us who have been rushing to file continuations"

Maybe it's time to get back to the bench and do some inventing.

[SF]

"It is telling when the defense of the rules (120 pages) is longer than the actual rules (8 pages)."

It takes a lot of pages to spin practitioners' legitimate concerns into straw men that they can knock down.

[America's Hero]

Dates I will never forget:

December 7, 1941;
September 11, 2001; and
August 21, 2007.

[Help]

Thanks for your typical insight and wisdom Malcolm. Especially your deep understanding of the inventing process and nature of continuing to protect a growing seed of invention in a way that enables a company to compete in the marketplace.

Dimwit.

Anyone have a useful comment?

[practitioner]

Why does the patent office think it has the right to limit 35 USC 120 authorized applications by amending 37 CFR?

[Malcolm Mooney]

Don't forget June 1995 when inventors and patent prosecutors jumped from skyscapers to their deaths, unable to accept the loss of patent rights 17 years from issuance. I even remember seeing one couple in Silicon Valley holding hands as they leapt from the roof of their garage where they used to invent stuff together, like, every other day.

Tragic.

[Zeke]

"Anyone have a useful comment?"

Ok, how about waiting until the rules are actually published before rushing to beat them?

[Davy Jones]

Practitioner - From an article by Stuart Weinberg:

"Some critics also argued the PTO doesn't have the right to change the law, claiming this right resides with U.S. Congress. Peterlin poured cold water on this argument, saying the PTO consulted with members of Congress and with the Office of Management and Budget before proposing the changes. "It's not as if the PTO would just rush out with something that we weren't allowed to," she said. "That being said, do I expect people to challenge us? Absolutely."

I think what the PTO is forgetting, however, is that consultations with a few members of Congress and the OMB do not constitute binding law.

[Malcolm Mooney]

"Anybody have a useful comment?"

You can make a cool sailboat out of an empty plastic milk container. You'll need scissors, glue and a stick for the mast.

[Davy Jones]

"You can make a cool sailboat out of an empty plastic milk container. You'll need scissors, glue and a stick for the mast."

Malcolm's conception of the inventive process, I presume. Unfortunately, it lacks an enabling disclosure... ;-)

[Patent Law Student]

I have yet to come across changes to the IDS rules, (i.e., limiting the number of references to 20, or so) Is this change in there, or is it going to be implimented in a different manner?

[FirstGlance]

Correct me if I am wrong, but it looks like those of us who are trying to get continuations filed before the rule comes into effect may still do so. The retroactive portion of the rule apparently only applies to divisionals without a restriction requirement and applications with more than 5 independent or 25 dependent claims in cases where a first office action has not been received by November 1. Here is the relevant language:

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.

Rules 75 and 142 relate to claims and restriction requirements respectively. Rule 265 is the new rule regarding the requirements for examination support documents. I'm reading this to exclude the rules applicable to continuations and CIPs.

Anyone else agree?

[jimmiejohn]

FirstGlance,

The section you quote means that, if you filed an application last week (before publication of the rules), the new rules will apply to application unless you receive an Office Action before Nov. 1, 2007.

Don't you think the PTO is going to sit on a lot of Office Actions and mail them en masse on Nov. 1?!!

[KCB]

America's Hero, aparrently your love life is lacking. Personally, I have a few more relevant dates worthy of memorialization:)

[metoo]

jimmiejohn - FirstGlance is correct. Only certain of the new rules will apply to applications in which a first office action on the merits is not mailed before Nov. 1, 2007. As for the proposed IDS rules, those are currently before the OMB for review. They will likely go into effect in early 2008 (I think).

[We're Going to Need a Bigger Boat]

What if I have a recently filed case with more than 5 independent and/or more than 25 total claims. Can I file a voluntary divisional of that case today to split up my claims or would that count as one of my continuations?

It seems to me that it would burn one of my continuations only if I filed such a voluntary divisional after November 1. See the comments at the bottom right of p. 46720. But see also Rule 1.78(d)(1)(B) - continuation can claim benefit only of an application that has had its benefit claimed in only one other application - seems to make all of this retroactive

I'd appreciate anyone else's thoughts on this. We have lots of cases that fall into this scenario

[Just an ordinary inventor(TM)]

Dear KCB,

In the big picture, I think you and America’s Hero are on the same track:

Two species of the same genus, both species beginning with “F.”

[johng]

Man, that "Examination Support Document" described in Rule 1.265 is a bitch! A mean and nasty one. I just finished writing an application that has 32 claims total, two independent. Obviously, we must cancel 7 of these claims or combine them in some way to bring the total to 25.

[NP]

I've seen repeatedly on the forum accusations that the rule changes on continuations are illegal or unconstitutional. I'm wondering if anyone can provide why this is the case...

I notice that 35 USC 132 (b) states, "The director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant." This appears to mean that not all requests for continued examination need to be approved, only that they need to be made available, and the director can prescribe regulations on how this can be done. It seems that a rule change that allows for zero continuations that do not include supporting the request "by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted” would be perfectly allowable under the law, as there are still regulations prescribed for the continued examination of applications for patent at the request of the applicant.

I also notice that the constitution states that Congress has the power "To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” It seems that this gives the Congress the ability to secure for limited times to authors and inventors the exclusive right to their respective writings and discoveries, which is performed in part through the USPTO issuing patents. I notice that this does not seem to give any rights to inventors, though. In fact, it seems that it would be unconstitutional to issue bad patents, as they can hinder progress. But, it seems that there is no requirement that a patent needs to be granted at all (no matter how well the application is written, or how novel and non-obvious the invention is), even if the patent would somehow promote science and useful arts, as the patents are the means to the end of promoting the progress of science and useful arts, not a requirement of Congress. I recognize that there are laws that give rights to the inventors, and require that patents be granted in certain instances, but I do not understand how the Constitution comes into the arguments.

So, if anyone can shed some constructive light on how the rule changes can be interpreted as being illegal or unconstitutional, I would be grateful.

[Barry]

Some of the rules take effect today:

"With respect to applications that claim the benefit under 35 USC 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 USC 120, 121, or 365(c) only of nonprovisional applications filed before August 21, 2007 or applications entering the national stage after compliance with 35 USC 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 USC 120, 121, or 365(c) of such prior-filed nonprovisional applications or international applications."

(from "Supplementary Information)

see also the response to comment 332, which references "...(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)..."

[ALS]

FirstGlance:

I agree.

It appears that the continuation rules will not affect applications filed before 11-1-2007 regardless of whether a first office action is received. If this is true, you are likely to see a mad rush to file continuations before the cutoff date.

The reason why the USPTO is not attempting to apply the rules retroactively for the continuations rules, in the same way as they are applying it to the other rules changes, is probably quite straightforward. After you have already filed and paid the filing fees for your applications, there's no way they can refuse to examine it based on later issued rules. This would be considered an illegal taking. For example, suppose you cannot profer a reason for filing your third continuation. Can they simply deny examination based on a new rule they issued after you already filed and paid the fees? Of course not.

On the other hand, the other rules are not all-out changes. For example, the limitations on the number of claims, can be remedies by filing a lengthy report. So even if you filed 100 claims before 11-1-2007, it would not be considered an illegal taking to deny examination, because you can easily remedy that by filing a report.

So I guess, it's now time to rush to the patent office with all the continuation you want to file.

[NL]

Has everyone checked out this webpage:

http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/clmcontfinalrule.html

It contains the PTO's descriptions of the rule changes. The PowerPoint presentation, in particular, was interesting.

[Barry]

JohnG,

Go here for the voluminous negative comments received concerning these rules when proposed:

http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/continuation_comments.html

A number of the comments indicate why the PTO isn't allowed to do what it did. I don't remember specifically which ones, but try the ABA and AIPLA comments.

[anon]

Start with page 7 of PHARMAs brief. Link:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/phrma_con.pdf or click on "anon" (embedded link)

[anon]

Another brief on whether PTO has sufficient authority:
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_claims/phrma.pdf

[We're Going to Need a Bigger Boat]

Re Barry's comment just above regarding retroactivity, I guess this means that in the case I just inherited from another attorney that has 12 independent claims, my best course of action is to file one voluntary divisional to split it into two cases, each with 5 independents and somehow figure out which 2 independents (and corresponding dependents) to cancel. Talk about a Hobson's choice!

[metoo]

Ironically, the often dreaded restriction requirement will now be most welcomed by many applicants. Of course that makes one wonder if the PTO will pressure examiners to cut down on the number of restriction requirements.

[tuolome]

"So, if anyone can shed some constructive light on how the rule changes can be interpreted as being illegal or unconstitutional, I would be grateful."

The constitutional grounds for challenging the rules may be a little shaky, maybe some kind of takings-based argument on applications that have already been filed. The illegality argument depends on the "justification" the Office requires to file that third continuation and basis upon which the agency is making the rule. The PTO commentary puts forth a lot of folderol about public policy, uncertainty, public notice, etc., but I really wonder if this is any of the PTO's business. In addition, can the PTO really argue that lack of its own resources is a legitimate basis for limiting continuations in this manner? What if the petitioner's argument is simply "the parent application is in litigation and the defendant is exploiting a potential ambiguity in language to avoid a finding of infringement" or even "I just recognized a potential ambiguity in claim language and I want to address it"? The PTO appears to assume that most people filing continuations are doing something illegitimate, when what they are doing is arguably perfectly legitimate, especially considering that Congress has done nothing affirmative to directly address it. For example, the PTO argues that nothing in the legislative history of the Patent Act of 1952 says that unlimited continuations have to be allowed but, by the same token, I doubt there's anything in that history that enables the PTO to limit continuations in the manner proposed and for the reasons provided. This is the weakest part of their argument IMO. The 5/25 and related applications stuff will be a nightmare, particularly for large corporate entities that file cases using multiple law firms.

[Barry]

The real trick will be to get stubborn examiners to follow the new rules. I suppose a lot of request for recon to the group director and/or petitions to various PTO functionaries may end up being more in order than they used to be. The rules place all the burden to streamline prosecution on applicants, no burden on examiners.

[metoo]

Barry - as noted in your last sentence, the new rules place no additional burden on examiners - nada, zilch. In light of that, did you mean to say that "the real trick will be to get stubborn examiners to follow the *existing* rules"?

[MeAnonToo]

Wow...these ESD's are the devil. Wonder what patent prosecution malpractice rates will do after a few years of this...

And I can't believe you have to wait until an application is abandoned before canceling withdrawn claims and filing a divisional...

[johng]

I picked the wrong day to quit smoking! Yeah, that ESD thing is a snaggle tooth sea hag of a rule that bothers me more at this time than the continuation changes. That, along with the IDS rules to come are the real but- busters.

Man, I am jonesin for a drag!

[Stephanie]

"Ironically, the often dreaded restriction requirement will now be most welcomed by many applicants. Of course that makes one wonder if the PTO will pressure examiners to cut down on the number of restriction requirements."

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. They go on to say that independent and distinct inventions are typically not restricted to a single invention if the search and examination of all the claims in the application can be made withut serious burden.

What's a more serious burden for the examiner? Reading an ESD or restricting and doing their own work. I think restriction requirements are a thing of the past.

[Just an ordinary inventor(TM)]

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:

http://www.patentlyo.com/patent/2007/06/mercexchange_v_.html#comments

Also, may I refer you to this thread’s comment?

http://www.patentlyo.com/patent/2007/08/in-re-seagate-t.html
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

[Malcolm Mooney]

"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?

[Just an ordinary inventor(TM)]

Dear Malcolm,

For anecdotal after 5pm interest, excerpts from:

http://wiki.answers.com/Q/If_a_large_strong_man_punches_a_smaller_man_is_the_victim_justified_in_killing_his_attacker_to_prevent_continued_battery
“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."

[FirstGlance]

ALS:

The PTO's PowerPoint presentation makes things a little less clear. Take a look at slides 30 and 32(http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/ccfrslides.ppt#30). 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?

[metoo]

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.

[Just an ordinary inventor(TM)]

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.

[metoo]

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. http://www.ft.com/cms/s/0/b81b69c4-5007-11dc-a6b0-0000779fd2ac,dwp_uuid=e8477cc4-c820-11db-b0dc-000b5df10621.html

[Davy Jones]

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.

[anonymous]

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?

[me]

> 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".

[snowman]

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.

[JK]

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???

[johng]

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.

[snowman]

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)

[KCB]

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.

[snowman]

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.

[patent leather]

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.

[USPTO is bait & switching]

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.

[JM]

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?

[anon]

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.

[Gideon]

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.

[Gideon]

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!

[Alan Harrison]

"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.

[anon]

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

[Alan Harrison]

"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 (http://www.ll.georgetown.edu/federal/judicial/fed/opinions/06opinions/06-1179.pdf) but there's no cite listed, just the docket number.

[Just an ordinary inventor(TM)]

Dear anon,

Why would I do that? Do you think I like what the PTO has done? When pigs fly!

[Corporate Attorney]

Mr. Harrison,

Pfizer v.. Ranbaxy is at 457 F3d 1284, I believe.

[anon]

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).

[Alan Harrison]

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.

[anon]

Wahpeton, not Whapeton

[NL]

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?

[Ms. Culpability]

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.

[Jay]

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.

[JM]

Anyone know any parties currently preparing a suit against the USPTO? The sooner the better.

[JarJarBinks]

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 :)

[JarJarBinks]

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 :)

[SF]

"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.

[Mr. T]

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.

[Mr. T]

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?

[metoo]

Mr. T - glad to see my name for ESDs is catching on - "Document of Doom" http://www.patentlyo.com/patent/2007/08/uspto-webcast-o.html#comments

[JM]

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.

[Ms. Culpability]

"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.

[MeAnonToo]

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.

[Malcolm Mooney]

"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.

[JS]

"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?

[Ms. Culpability]

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?

[gideon]

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 Mooney]

"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.

[Inquiring Mind]

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).

[Mr. T]

Yeah, "Document of Doom" sounds better than the other one (estopple suicide document).

[ironicslip]

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...

[Malcolm Mooney]

most contentious and public infringegment case in the past 10 years was

*click*

[ironicslip]

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

[Davy Jones]

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.)

[me]

> 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?

[me]

THEN claim it. Sorry.