Rule Changes Triage: Dealing with already pending claims prior to November 1

Patent prosecution attorneys are dealing with dozens of fires started by the new PTO rules.  This post deals only with the quickly approaching deadline of November 1, 2007 when the new rules become effective. The following tips come from practicing patent attorneys dealing who suggest potential actions to be taken prior to November 1, 2007 for currently pending applications.

• Applications under final Office Action having already filed an RCE
• James McEwen: If there is already a request for continued examination (RCE) filed in a family of applications, and the application is currently under a final Office Action, it would be advisable to file an RCE prior to November 1 since it will be the applicant's last chance to file such an RCE without a Petition under 37 CFR 1.114(g). 
• Multiple Applications of a Family under separate final Office Actions
• James McEwen: Regardless of whether an RCE has already been filed in a family, if multiple members of the family are currently under final Office Actions, file an RCE in each case prior to November 1.  Otherwise, the applicant will be limited to only one RCE in the family without the required Petition.  
• Pending Continuations-In-Part
• Brad D. Pedersen: Disclaim priority to parent cases. If the claims cover subject matter that was added in the CIP case, then the claim of priority to the parent cases is not necessary and actually can limit the number of other continuing applications that may be filed off that parent case. By disclaiming priority, a child CIP case will not count against the continuation limits applied to a parent case under Rule 78(d)(1)(i)B. Ideally, the parent case can be removed as obviousness-type prior art by using the common assignee invention exemption under 35 USC 103(c).
• Brad D. Pedersen: File a table showing priority date for each claim. If some of the claims are fully supported by a parent case and need that claim of priority for prior art purposes, then a table showing the priority date for each claim should be filed by November 1, 2007 pursuant to Rule 78(d)(3). Late filing of the table may require the filing of a petition to correct the claim of priority for the application.
• Emily Berger & Sarah Gates: Examine CIPs. Identify your pending continuation-in-part (CIP) applications and determine whether they were properly labeled as CIPs in the first place. If an application is in fact a CIP, identify those claims supported by applications in the priority chain. Under the new rules, if a rejection is traversed by stating that a claim is entitled to the filing date of an earlier application in the priority chain and that, therefore, the applied reference is not prior art to that claim, the Examiner may make the next office action final – even if new art is presented. By properly identifying the priority date for each claim, you may avoid “wasting” the Request for Continued Examination (RCE) or one of the limited number of permitted continuation applications, in order to respond to a final action.
• Cancel Claims Subject to Restriction Requirement
• James McEwen: It is permissible to maintain non-elected claims in an application after a restriction or election requirement.  However, when non-elected claims depend from an elected claim and the elected claim becomes allowable, the non-elected claims are rejoined and examined.  Under the new rules, the rejoinder of the non-elected claims can result in the application violating the 5/25 rule.  As an examination support document (ESD) cannot be filed after a first Office Action, it is likely that the applicant would be forced to cancel the non-elected claims due to 37 CFR 1.75(b)(1).  Moreover, as the rejoinder is technically a withdrawal of the original restriction requirement, applicant would not be able to file a divisional application containing the claims needing to be cancelled, and would instead need to use any remaining continuation applications allowed under 37 CFR 1.78.  Thus, when an application is subject to a restriction requirement, non-elected claims should be immediately cancelled so that a divisional application containing the non-elected claims can be filed and to ensure that the applicants do not accidentally violate the 5/25 rule upon rejoinder.
• Move claims in pending applications to applications under active examination
• James McEwen: As 37 CFR 1.75(b)(1) and 37 CFR 1.75(b)(4) do not apply to applications having received a first Office Action by November 1, 2007, such applications are prime to receive new claims without exceeding the 5/25 rule.  An example of such a circumstance may be when a provisional obviousness-type double patenting rejection is received.  Thus, patentably indistinct claims in multiple copending applications can be cancelled from applications that are merely pending, and be reintroduced in applications which are under active examination to avoid violating the 5/25 rule for multiple copending applications set forth in 37 CFR 1.75(b)(4).  A possible further benefit is that such an addition could provoke a restriction of the new claims under 37 CFR 1.145, thereby obtaining an additional two continuations and an RCE for the claims while avoiding the issues under 37 CFR 1.75(b)(4) and 37 CFR 1.78(f)(2) or 1.78(f)(3).  As such, unless filing a terminal disclaimer would result in allowance before November 1, 2007, move patentably indistinct copending claims to the application being currently examined and cancel the claims from the copending application.  

Notes:

• Patent Docs on the case
• Patently-O Comments Provide Some Suggestions
• File Attachment: McEwen - Rule Change.doc (215 KB)
• File Attachment: Pederson - Rule Changes.DOC (34 KB)
• File Attachment: Macedo - Rule Change.DOC (72 KB)
• http://www.nipra.org/ownrules.htm
• http://www.nipra.org/rce114.html
• Register for a Webinar by Charles Macedo: link.
• IPO Survey

Comments

[SF]

MM: It's pretty clear that the USPTO is attempting to deter the use of CIPs going forward by requiring the identification of priority on a claim-by-claim basis and by giving examiners the power to ask for that priority. It seems to me that the current rules package is just one step towards what you believe is "the right thing": ending CIP practice.

I'd have no problem with ending CIP practice either because CIP practice can be used to draft broad claims that cover both the original subject matter and the new matter, when only the original subject matter was contemplated in the original application. I would rather force applicants to get the broad claims in the original application based on its written description.

[me]

Does the NIPRA really address the the OG coming out Nov. 8? Of course, since it comes out the 8th, maybe we can gain some advantage betweent he 1st and the 8th...anyone thought that through?

[real anonymous]

"Does the NIPRA really address the the OG coming out Nov. 8?"

Me, we address the OG notice to be issued on Nov. 6 in questions 22-24 and 29 of the quiz linked at:

http://www.nipra.org/action.html

Unfortunately, the USPTO may now be generating "stuff" (for lack of a better word) faster than anyone can address it....

But we do now have a reasoned plea to the Director (which if you are reading this, Mr. Dudas, I hope you read... thank you):

http://www.nipra.org/dd-berlin.html

[me]

Thanks RA! You guys are quick!

[kalvin635]

Here's a hypo:

What happens if I file a divisional off a CIP for which compliance with 1.78(d)(3) has not been met? (Presume there are no other co-pending applications and the CIP is only being used for continuity of pending applications) Would the divisional be entitled to priority beyond the CIP, or would priority only be granted to the filing date of the CIP? If the non-compliance was unintentional, would I be able to file the petition and fee to be afforded an earlier priority date?

Any ideas?

[me]

Once you get notice in the CIP you will need to adress the issue or it will go abandoned - thus no DIV can be filed.

You might also get reported to OED because, well...do they need a reason?

[kalvin635]

So, if compliance with 1.78(d)(3) is not met, the Office will notify the applicant? If non-compliance is continued, then the consequence is that the CIP will go abandoned?

Just trying to get a full grasp on all this jibberish . . . er . . . rules.