The USPTO has proposed rules to limit the number of continuing, CIP and RCE applications that can be filed by patent applicants. See here for the notice.

Why have continuations become the current whipping boy for the Patent Office? The Notices states that “current practice allows an applicant to generate an unlimited string of continued examination filings” and that “the exchange between examiners and applicants becomes less beneficial and suffers from diminishing returns as each of the second and subsequent continuing applications or requests for continued examination in a series is filed.”

The Notice continually mentions the “burdens imposed” on the USPTO but never mentions all the fees it collects. The USPTO claims that this would “ease the burden of examining multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and common assignee by requiring that all patentably indistinct claims in such applications be submitted in a single application.” Really? Wouldn’t each related application be easier to examine? What about the fact that the patentee is PAYING for the examination of these multiple applications?

The USPTO believes that Applicants should not rely on an unlimited number of continued examination filings to “correct deficiencies in the claims and disclosure that applicant or applicant’s representative have not adequately reviewed.” What about the need to “correct deficiencies” in the examination and response by the Examiner because the specification has not been adequately reviewed and understood?

Clearly, this has not been thought through very well. While the Notice claims that the current unrestricted continued examination practice “does not provide adequate incentives to assure that the exchanges between an applicant and the examiner during the examination process are efficient,” this is precisely what the earlier change in term to 20 years from filing accomplishes. The loss of patent term combined with the fees imposed with continuing practice provides more than enough incentive for expedited prosecution. This would seem to be a solution without a problem.

Proposed § 1.78(a)(3) defines a ‘‘divisional application’’ as a continuing application as defined in § 1.78(a)(1) that discloses and claims only an invention or inventions that were disclosed and claimed in the prior-filed application. This would make it impossible to bring in claims not presented as filed earlier.

Proposed § 1.78(f)(1) provides that if a nonprovisional application has a filing date that is the same as or within two months of the filing date of one or more other pending nonprovisional applications or patents, taking into account any filing date for which a benefit is sought under title 35, United States Code, names at least one inventor in common with the one or more other pending nonprovisional applications or patents, and is owned by the same person, or subject to an obligation of assignment to the same person, as the one or more other pending nonprovisional applications or patents, the applicant must identify each such other application or patent by application number (i.e., series code and serial number) and patent number (if applicable).

Note that proposed Rule § 1.78(f)(2) provides that for applications that fall under set proposed § 1.78(f)(1) above, there will be a rebuttable presumption that the nonprovisional application contains at least one claim that is not patentably distinct from at least one of the claims in the one or more other pending or patented nonprovisional applications. In that case, the applicant in the nonprovisional application must either: (1) rebut this presumption by explaining to the satisfaction of the Director how the application contains only claims that are patentably distinct from the claims in each of such other pending applications or patents; or (2) submit a terminal disclaimer in accordance with § 1.321(c). The USPTO would also have the authority to require elimination of the patentably indistinct claims from the second application under proposed Rule 1.78(f)(3).

The USPTO has also proposed rules to limit the examination of each application to 10 designated claims or less. See here for the notice.

Although this would put U.S. practice more in line with the EPO, these proposed rules do not appear to be favorable to patent applicants or even consistent with other recent USPTO fee changes.

The USPTO has already raised the fees that it charges for each independent claim in excess of three in each application to encourage applicants to file no more than three independent claims in each application (with the understanding that additional independent claims required to cover a complex or multi-faceted invention may be presented in separately filed applications). Under the new rules, applicants would risk having the number of total applications containing the additional independent claims limited by the USPTO if all of the claims are not presented in a single original application.

The patent community is invited to submit their comments directly to the USPTO by May 3, 2006. If you know the impetus behind this proposal, send me a note. I’d love to hear your opinions.

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  1. The new proposals are surprising in their shortsightedness. The USPTO wishes to reduce continuation filings by having Applicant make a showing as to why new claims were not submitted in an initial filing, for the stated reason that this would reduce continuations and help backlog. They ignore the result if the rule is passed-new applications would have numerous more claims, even with extra fees, making examination of each case longer. The Average Office Action response will look like an appeal brief, and Applicant will need to escalate rather than take the RCE and negotiate with the Examiner. Applicant will be encouraged to split his specification to discuss describe embodiments separately (resulting in more filings). Result are easy to see. More new applications and/or more claims in individual applications, Office Actions that look like novels…This is the formation of new backlogs, not relief of existing backlog.

    The quality of patents will go down if new rules are passed, unless Applicant wants to push through with narrow claims. The only Applicant I see who can benefit are the largest corporate filers who supply patents to prospective “Licensees” not so much on merit, but on relevance. The smaller Applicant, who needs the quality patent, will have less to use when he seeks enforcement.

    I hope this proposal goes by way of the $10K continuation application of 2002-2003.

  2. I echo Van’s assessment. Whereas I too support the goals of reduced pendancy and earlier allowance of an applicant’s most broad claims, I fear that these proposed rule changes will have the exact opposite effect.

    My biggest concern is that the patent office is proposing very serious restrictions on an applicant’s right to file the RCEs and continuations that he or she feels are necessary to advance the prosecution of his or her application. The only choice applicants are going to have is to file more appeals. These are extremely costly and time consuming for both applicants and the office.

    I did a quick survey of recently issued patents in class 705 (i.e. computer implemented business methods, a very important area for my clients). It appears that appeals that go to the BPAI are adding about four years to the pendancy of applications in the business method area. By contrast, RCEs add only about one year. Hence overall, the proposed rule changes will significantly delay the public notice of allowed claims that the office is hoping to promote.

    From the standpoint of office productivity, consider the impact of what would happen if a substantial fraction of the 50,000 RCEs filed every year were filed instead as appeals. This could easily outstrip even the maximum productivity benefits the office is hoping to achieve due to the presumptive elimination of the 10,000 or so “second” RCE and continuation filings that are currently submitted per year.

    I think that it would be very prudent for the patent office to undertake a comprehensive feasibility study to more carefully assess the potential impact of these changes before they consider implementing them. I welcome the suggestions on how to most effectively convey this message to the office.