USPTO Significantly Modifies Rules Governing Continuing Applications and Claim Quantities

As discussed in detail in this two-part series, the final rule places a number of restrictions on various aspects of patent practice. This first installment examines the final rule as it relates to continued examination filings. The second installment, then, will examine the final rule as it relates to examination of claims, applications with patentably-indistinct claims, second-action final practice, and refund of excess-claim fees.

Although the portions of the final rule discussed in this two-part series are likely to have the most sweeping impact on patent practice before the USPTO, it is important to note that these are not the only changes to patent practice included in the final rule. In addition, there are nuances to many aspects of the final rule that are beyond the scope of this series and will not be discussed here. Rather, the purpose of this series is to provide the reader with a broad understanding of the changes being promulgated by the final rule, as well as considerations that may need to be taken into account from now until the final rule becomes effective on Nov. 1, 2007, and going forward beyond Nov. 1. It is also worth noting that although the second installment will publish after the effective date of the final rule, i.e., Nov. 1, 2007, the portions of the final rule most likely leading to considerations for applicants before the effective date are discussed in this first installment. That is, although some actions that applicants may consider taking in view of the portion of the final rule discussed in this first installment may result in appreciable benefit if taken before the effective date rather than after, this is less likely the case for the portion of the final rule discussed in the forthcoming second installment.