1. USPTO Rule Changes to Focus the Patent Process in the 21st Century
© 2007 Roberts Mlotkowski & Hobbes, P.C.
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2. 2. Continuation Practice 3. Accelerated Examination 4. IDS Practice
Overview
1. Claims Practice
2. Continuation Practice
3. Accelerated Examination
4. IDS Practice
*Based on presentations available through USPTO web site entitled: “Claims and Continuations Final Rule”; “The Accelerated Examination Webinar”; and “Changes to Information Disclosure Statement (IDS) Requirements Notice of Proposed Rulemaking (NPR)”

3. Examination of Claims 37 CFR 1.75(b)
Applicants may present, without an Examination Support Document (ESD), up to:
Five (5) independent claims, and
Twenty-five (25) total claims in an application (5/25 claim threshold).
Applicant may present more than 5/25 claims, if applicant files an ESD before the first Office action on the merits (FAOM).

4. Examination of Claims 37 CFR 1.75(b)
The 5/25 claim threshold does not count withdrawn claims.
Applicant may provide a suggested restriction requirement (SRR) before first Office action or a restriction requirement.
The 5/25 claim threshold does count all of the claims present in other copending application(s) having a patentably indistinct claim, but not the claims in issued patents.
Applicant may present up to 15/75 claims via an initial application and 2 continuation or CIP applications prosecuted serially.

5. Applications Containing Patentably Indistinct Claims - 37 CFR 1
Applications Containing Patentably Indistinct Claims - 37 CFR 1.78(f)(1)
Applicants must identify other commonly owned application(s) or patent(s) that has:
An inventor in common with the application; and
A claimed filing or priority date within two months of the claimed filing or priority date of the application.

6. Applications Containing Patentably Indistinct Claims - 37 CFR 1
Applications Containing Patentably Indistinct Claims - 37 CFR 1.78(f)(2)
There is a rebuttable presumption that the application and the other application(s) or patent(s) contain at least one patentably indistinct claim,
If the other commonly owned application or patent also has:
Substantial overlapping disclosure with the application, and
A claimed filing or priority date that is the same as the claimed filing or priority date of the application.

7. Applications Containing Patentably Indistinct Claims - 37 CFR 1
Applications Containing Patentably Indistinct Claims - 37 CFR 1.78(f)(3)
For commonly owned pending applications that contain at least one patentably indistinct claim,
The Office will treat each application as having the total number of claims present in all of the applications for determining whether each application exceeds the 5/25 claim threshold. See § 1.75(b)(4).
In the absence of good and sufficient reason, the Office may require elimination of the patentably indistinct claims from all but one of the applications.

8. Identification of Other Applications 37 CFR 1.78(f)(1)(i)
For the example below, applicant for application “A” is required to identify application “B” and applicant for application “B” is required to identify application “A” because the foreign priority date of application “A” is within two months from the filing date of a prior-filed nonprovisional application for which benefit is claimed in application “B”.
Foreign FD
Actual FD
Application “A”
FD of a prior-filed
provisional app.
FD of a prior-filed
nonprovisional app.
Actual FD
Application “B”
2 months

9. Continuing Applications 37 CFR 1.78(d)(1)(i)
Applicant may file two continuation or CIP applications (parallel or serial) without a petition and showing. For example: I I
Initial Application “A” C
Continuation or CIP “B” C C C
Continuation or CIP “C”

10. Continuing Applications 37 CFR 1.78(d)(1)(vi)
Applicant may file a third or subsequent continuation or CIP application with a petition and showing. For example: I
Initial Application “A” I C
Continuation or CIP “B” C C
Continuation or CIP “C” C
Continuation or CIP with a petition and showing P P

11. Request for Continued Examination 37 CFR 1.114(f)
Applicant may file a single RCE in an application family, without a petition or showing. For example: I I
Initial Application “A” C R
RCE C C
Continuation or CIP “B” R C
Continuation or CIP “C”

12. Request for Continued Examination 37 CFR 1.114(g)
Applicant may file a second or subsequent RCE with a petition and showing. For example: I
Initial Application “A” C
Continuation or CIP “B”
Continuation or CIP “C” C
First RCE R
RCE with a petition and showing P

13. Divisional Applications
For example: the initial application discloses and claims inventions “X”, “Y”, and “Z”; the application is subject to a 3-way restriction requirement; and applicant elected invention “X” for examination in the initial application.
X & Y & Z Y
Divisional Application #1 claims only invention “Y”, a non-elected invention that was not examined in in the initial application.
Divisional Application #2 claims only invention “Z”, a non-elected invention that was not examined in the initial application and the divisional application #1. Z

14. Divisional Applications 37 CFR 1.78(d) and 1.114(f)
A divisional application is not required to be filed during the pendency of the initial application, as long as the copendency requirement of 35 USC 120 is met. For example: I
Initial application “A” w/ restriction requirement C
CON or CIP “B” C
CON or CIP “C”
RCE R D
Divisional application “D”

15. Divisional Applications 37 CFR 1.78(d)(1)(ii)
Applicant may file the divisional applications in parallel or in series.
For example: I I C C D C D D D D

16. Divisional Applications 37 CFR 1.78(d)(1)(ii) and (iii)
Applicant may file two continuation applications (but not CIPs) of a divisional application, without a petition and showing. For example: I
Initial application “A” I
Continuation or CIP “B” C C
Continuation or CIP “C” C C
Divisional “D” D D
Continuation “E” C C C
Continuation “F” C

17. Request for Continued Examination 37 CFR 1.114(f)
Applicant may file a single RCE in a divisional application family, without a petition and showing. For example: I I C C C R C D D C C C C R R

18. Transitional Practice for Continuing Applications 72 Fed. Reg. 46736-37
Applicant may file “one more” continuation or CIP application on or after November 1, 2007, for applications filed before August 21, 2007, without a petition and showing. For example: I C C C C
August 21, 2007
November 1, 2007

19. Transitional Practice for Continuing Applications 72 Fed. Reg. 46736-37
Applicant may not file “one more” continuation or CIP application on or after November 1, 2007, without a petition and showing if applicant filed one or more continuation or CIP applications between August 21, 2007 and October 31, For example:
August 21, 2007
November 1, 2007 C I C C P

20. Transitional Practice for Continuing Applications 72 Fed. Reg. 46736-37
Applicant may not file an “extra” (i.e., third) continuation or CIP application on or after November 1, 2007, without a petition and showing if applicant filed fewer than two continuation or CIP applications before August 21, For example:
August 21, 2007
November 1, 2007 I C C P

21. Request for Continued Examination 37 CFR 1.114
Applicant may file one RCE in an application family on or after November 1, 2007, without a petition and showing. For example: I C C R
November 1, 2007

22. Request for Continued Examination 37 CFR 1.114
Applicant may file a second or subsequent RCE in an application family on or after November 1, 2007, with a petition and showing. For example: R P I C C
November 1, 2007

23. Accelerated Examination Program: What It Does
Allows applicants to obtain a final decision on an application within 12 months
Created for situations where prolonged pendency could doom the patent application and/or commercial viability
Available only for Section 111(a) applications, including by-pass procedure from PCT
Not available for Reissues, plant applications

24. Accelerated Examination: Benefits to Applicants
Expedited handling throughout the entire patent application process:
Office of Initial Patent Examination (OIPE)
Examination
Post-appeal process

25. AE Program and Petition to Make Special – 12 Month Goal
The 12-month goal is successfully achieved when one of the following final dispositions occurs:
Notice of Allowance
Final Office action
Notice of appeal
Request for Continued Examination (RCE)
Abandonment

26. Filing Requirements The application must contain:
3 or fewer independent claims
20 or fewer total claims
The application must not contain any multiple dependent claims
The claims must be directed to a single invention

27. Pre-Examination Search Requirements
Statement that a pre-examination search was conducted
U.S. Patents
U.S. Patent application publications
Foreign patent documents
Non-patent literature
Search directed to the claimed invention where claims are given their broadest reasonable interpretation
Search should encompass disclosed features that may be claimed

28. Filing Requirements
Accelerated Examination Support Document (AESD) must include:
An information disclosure statement (IDS) citing each reference deemed most closely related to the subject matter of each claim
An identification of where each claim limitation disclosed in the references is found
A detailed explanation of how each claim is patentable over the reference
A concise statement of utility of the invention
A showing of support for each claim limitation in the specification and any parent application, including any means-plus-function limitations
An identification of any cited references that may be disqualified as prior art under 35 U.S.C. 103(c)

29. Evaluating the Accelerated Examination Support Document (AESD)
The USPTO will adopt a rule of reason when evaluating the AESD
An identification of where each claim limitation is found in the reference
Not intended to be an exhaustive listing of every conceivable subjective interpretation of how a claim limitation may read on the reference
Applicants should point out the relevant representations of the limitation in the reference
The identification will be deemed to be sufficient unless the correspondence is so deficient that it would materially effect examination of the application

30. Processing & Examination Procedures
Prior to mailing any first Office action rejecting claims,
An interview will be conducted, unless an interview is deemed unlikely to overcome the rejection
A conference will be conducted in the USPTO to ensure the viability of the rejection(s)
There will also be a conference before mailing any final Office action

31. Processing & Examination Procedures
Office actions will have a shorter period for reply:
One-month (or 30 days) SSP for any action, other than a final rejection or allowance
No extensions of time under § 1.136(a) permitted for non-final Office Action
Failure to timely file a reply will result in abandonment of the application
Extensions of time are only available under § 1.136(b)

32. Processing & Examination Procedures- Applicant’s Response
Any reply must be:
Filed via EFS-Web
Complete, fully responsive
Limited to the rejection(s), objection(s) and requirements made
An updated AESD is required for any amended or newly added claims that are not encompassed by the previously-filed AESD
The above requirements are imposed in order to be able to complete the examination within 12 months

33. Processing & Examination Procedures- Applicant’s Response
The Office will treat any amendments (including after-final amendments and RCE submissions) as not being fully responsive if the amendment:
Exceeds the 3/20 claim limit
Presents claims to a non-elected invention
Presents claims not encompassed by the pre-examination search
Presents claims requiring an updated AE Support Document, which is not submitted

34. The e-Filing Process Additional petition fee of $130 is required
No fee required for applications concerning:
Environmental quality
Energy
Counter-terrorism

35. Proposed Changes in Information Disclosure Statement (IDS) Requirement Notice of Proposed Rulemaking (NPR)

36. IDS Requirements

37. Proposed Changes
Concept: Impose “additional disclosure” requirements which encourage applicants to submit a limited number of citations, submit IDS before 1st Office action, and provide helpful information about cites in certain circumstances.
Proposals: IDSs with a limited number of cites (20 or less) can be submitted before 1st Office action w/o any “additional disclosure” requirement, except for large (more than 25 pages) or foreign language documents.
IDSs submitted after 1st Office action must meet increasing “additional disclosure” requirements. This would permit, but discourage, later filed IDSs, while providing helpful information if submitted.
Eliminate fee requirements in toto, as they are inconsistent with quality and timeliness objectives of proposals.

38. Time Sufficient for Consideration
Time Periods 1- 4
Application Prosecution Timeline
and corresponding IDS requirements
First Office Action
on the Merits (FAOM)
Allowance of
Application
Payment of
Issue Fee
First Period
Up to 20 citations permitted
w/o any explanation req’d.
Explanations req’d for:
each ref. >25 pages, or in
non-English language, or for
all refs when more than 20
Second Period
Explanation, and
Non-cumulative
description
Third Period
Timeliness cert., and
Patentability Justification which includes: Explanation,
Non-cumulative description, and either:
(A) Patentability reasons
for unamended claims; or
(B)(1) Statement of unpatentable claims,
(B)(2) Amendment, and
(B)(3) Patentability reasons for amended claim(s)
Fourth Period
Timeliness cert.;
Patentability Justification which includes:
Explanation,
Non-cumulative description,
Statement of unpatentable claims,
Amendment, and
Patentability reasons for amended claim(s); and
Petition to w/d from allowance
Patent
Time Sufficient for Consideration

39. Requirements for IDS filed in 1st period
1st period: Before a 1st Office action*:
General rule: IDS may be submitted w/o any explanations
Exceptions: An “explanation” would be required for:
1. Any English language document over 25 pages**
2. Any non-English language document**
3. All documents when cites exceed 20 (cumulatively)**
* Or within three months of filing, whichever is later.
**Exceptions: Sequence listings, computer program listings, cites from a foreign search report submitted with the report (§ 1.97(e)(1) certification, including compliance with three month time period, not required), and cites responsive to an Office § requirement.

40. Requirements for IDS filed in 1st period
What is the “explanation” if it is required?
A. An identification of:
(1) the specific feature, showing, or teaching that caused the document to be cited, with
(2) a portion of the document where the specific feature, may be found, and
B. A correlation of the feature, showing or teaching to corresponding specific claim language, or to a specific portion(s) of the supporting specification, where the document is cited for that purpose.

41. Requirements for IDS filed in 2nd period
2nd period: After 1st Office action; ends with allowance, or NIRC
General rule: an “explanation” as well as a “non-cumulative description” is required for all cites*.
The current timeliness certification per § 1.97(e)(1) or (2), or fee, would no longer be required
What is the “non-cumulative description” requirement?
A description of how each document is not merely cumulative of any other document, e.g., a description of a specific feature, showing or teaching in each cited document that is not found in any other citation in any (prior or current) IDS, or any information cited by the examiner.
*Exceptions: Cites submitted with a § 1.97(e)(1) timeliness certification and copy of foreign search report, or cites responsive to an Office § requirement will not require an explanation or non-cumulative description.

42. Requirements for IDS filed in 3rd and 4th periods
3rd period: after allowance; ending with payment of the issue fee
An IDS requires a § 1.97(e)(1) or (2) timeliness certification, and one of the 2 permitted “patentability justifications.” (See next slide)
4th period: after payment of issue fee, or NIRC; but in sufficient time to be considered by the examiner prior to issuance
An IDS requires a § 1.97(e)(1) or (2) timeliness certification; a “patentability justification” as defined in § 1.98 (a)(3)(vi)(B) including: an unequivocal statement that one or more claims are “unpatentable” in view of the cited document(s), and an amendment to such “unpatentable” claims; and a petition to withdraw the application from issue pursuant to § 1.313(c)(1).

43. Requirements for IDS filed in 3rd and 4th periods
What are the two types of “patentability justification?”
Only for 3rd period: (1) An “explanation”, (2) a “non-cumulative description”, and (3) reasons why the independent claims are patentable over the information in the IDS, considered together, and in view of any information already of record. (§ 1.98 (a)(3)(vi)(A))
For 3rd or 4th periods: (1) and (2) above, (3) an unequivocal statement that one or more claims are “unpatentable” in view of the cited document(s) and in view of any information already of record, (4) an amendment to such “unpatentable” claims, and (5) reasons why an amendment causes the claims admitted to be unpatentable to now be patentable over the IDS information when considered together. (§ 1.98 (a)(3)(vi)(B))

44. IDS With Submission That Does Not Comply With the Additional Disclosure Requirements
For any IDS that does not comply with the additional disclosure requirements, the examiner may choose not to consider the non-compliant IDS. If documents are considered during the determination of non-compliance, the examiner should initial each considered reference and place a line through the non-considered references.
This is applicable to IDSs filed during any time period

45. Addressing Some Very Large IDS Submissions
Problem: Applicants sometimes receive very large numbers of references from a third party, e.g., from litigation in a patent related to the application under examination, and they feel they must submit them whether or not they believe they are relevant. Such large submissions impose significant burdens on applicants, and the Office, provide little if any useful information to the examiner, while wasting his/her limited amount of examining time.
Proposal: Indicate in protest rule, § 1.291, that applicants need not submit such information, as they can, instead, provide a consent to a protest by such third party, and thereby shift the burden back to the 3rd party to submit the information directly to the Office by complying with the protest rule requirements.

46. Third Party Submissions after Pre-Grant Publication
The window of time for any 3rd party to file a submission under § 1.99 would be extended to 6 months after pre-grant publication of an application, or until the notice of allowance, whichever occurs first.
It would be clarified that only a 3rd party (not an applicant) could file a submission under § 1.99.

47. Entry of Certain Amendments After Allowance
To decrease the need to file a RCE or a continuation, amendments affecting the following items would be entered after allowance and before (or with) issue fee payment:
Bibliographic data;
Reference to a joint research agreement;
Change in the order of inventors; and
Correction of inventorship
These formality amendments would be entered after payment of the issue fee, if submitted in sufficient time to permit the patent to be printed with the amended information.

48. Addressing Practitioner’s Concerns Regarding “Additional Disclosure” Requirements
Objective: Address the bar’s concern that the “additional disclosure” requirements, when triggered, may expose practitioners to inequitable conduct charges.
Proposal: Add a safe harbor to § 1.56 that applies to a party, when attempting to comply with the “additional disclosure” requirements of § 1.98, who has made reasonable inquiry of the relationship of the documents to the claims, has acted in good faith, and has a reasonable basis for the statements provided.

49. Duty to Review (§10.18)
An IDS, like any other paper filed in the Office, is subject to the provisions of §
Section 10.18(b)(2) requires an “inquiry reasonable under the circumstances.”
Thus, each item of information being contemplated for inclusion in an IDS must be reviewed before submission of the IDS to the Office to assure that the submission will not:
(1) Cause unnecessary delay or needlessly increase the cost of examination, or
(2) Result in the obscuring of material information.
Failure to review an IDS can also implicate obligations of registered practitioners under §§ 10.23(b) and (c), and § 10.77(b) (handle a legal matter w/o preparation adequate in the circumstances).

50. Duty to Review (§10.18) WHEN:
An IDS includes several documents of marginal relevance, and
Other evidence suggests that the marginally relevant information was submitted with the intent to obscure material information.
THEN:
An inference that the applicant or their representative attempted to cover up or conceal a material reference could be drawn.
See § 10.18(b); and see Molins PLC v. Textron, Inc., 48 F.3d 1172, 1184, 33 USPQ2nd 1823, 1831 (Fed. Cir. 1995) (“burying a particularly material reference in a prior art statement containing a multiplicity of other references can be probative of bad faith”)

51. “Explanation” Example
Compliance with the “explanation” requirement need not require an extensive submission. Example:
Facts: Patent A teaches a rotary pump, as element 32 in Figure 3; and
Claim 1 of the application being examined recites a rotary pump (as taught in Patent A).
Explanation: Patent A teaches a rotary pump as element 32 in Figure 3, which correlates to the recitation of a rotary pump in claim 1.

52. Updating Updating of additional disclosure required:
With each amendment that affects the scope of the claims (other than an examiner’s amendment);
Any previously submitted “explanation” must be reviewed and updated where necessary; or
A statement supplied that updating is unnecessary.

53. Practice Tips: RCEs
Review patent portfolios to identify patent families in which an RCE has already been filed and then consider filing an additional RCE in the following circumstances before November 1, 2007 to obtain an additional non-final action on the merits:
Applications having an amendment after final filed but not entered or refused entry or is unlikely to be entered because of claims amendments or new evidence being submitted. Filing of an RCE ensures entry of the amendment and/or evidence and an action on the merits.
Applications with prosecution closed on the merits and information is known that should be cited in an Information Disclosure Statement (IDS). Filing of an RCE before November 1, 2007 can be used to obtain consideration of the information, since after November 1, 2007 an RCE will not be available for this purpose per USPTO.
Applications having a Notice of Appeal filed but that the Applicant may prefer further prosecution before the examiner instead of filing an appeal brief.
If an RCE has already been filed in an application, the Applicant will not be permitted to file an additional RCE without petition after November 1, 2007. 
If an application that has already had an RCE filed has received a final rejection, consider filing an RCE with the response before November 1, 2007 to ensure entry of any additional amendments. 
Due to the extreme time sensitivity, consider immediately identifying applications that the filing of an RCE application prior to November 1, 2007 may be appropriate.

54. Practice Tips: Continuations
After November 1, 2007, Applicants will be limited to two continuations in a patent family without petition. If two or more continuing applications had already been filed in a patent family before August 21, 2007, Applicants will be entitled to “one more” continuing application in the family. The additional continuing application may be filed at any time before or after November 1, 2007.
Although the USPTO cannot prevent the filing of multiple continuing applications before November 1, multiple continuing applications may be aggregated under the new rules, and the USPTO will examine only 5 independent claims and 25 total claims among aggregated applications.
Recommend Applicants not to rush to file the “one more” continuation application, since the application may be filed at any time before or after November 1.
Recommend Applicants give careful consideration before filing multiple continuations before November 1, 2007, since the USPTO may not allow full examination of all of the continuations.

55. Practice Tips: Claims
After November 1, 2007, the USPTO will examine only up to 5 independent and 25 total claims per application (5/25 limit) without the submission of an examination support document (ESD), with this limit applicable to all pending applications without a first action on the merits, as of the implementation date of the rules.
Applicants should consider reviewing their application portfolios to identify applications over the 5/25 limit.
If an action on the merits can be prompted before November 1, 2007, the limit will not apply.
After November 1, 2007, Applicants will be required to cancel claims over the limit or file an ESD.

56. Practice Tips: Pending Applications
After November 1, 2007, for any non-allowed application, Applicants must identify any other pending applications or issued patents that have:
a) a filing or priority date that is within two months of the filing or priority date of the application at issue;
b) at least one common inventor; and
c) common ownership or obligation to assign.
Applicants should consider reviewing their portfolios to identify applications that have a common inventor, common assignee, and any filing or priority date within two months of each other, as Applicants will be required to identify such pending applications to the USPTO by February 1, 2008.
Applications meeting these criteria may be prosecuted by different US law firms, and as such, it may be difficult for the US attorneys to identify all applications meeting the noted criteria. Since this process may be difficult and time consuming, preparation should begin as soon as practical.

57. Thank you!