USPTO Significantly Modifies Rules Governing Continuing Applications and Claim Quantities

In January 2006, the U.S. Patent and Trademark Office ('USPTO' or the 'Office') published a proposed rule revising patent practice with respect to continued examination filings, patent applications with patentably-indistinct claims, and examination of claims in patent applications. Following the submission of written comments and public meetings, the Office published its final rule on Aug. 21, 2007. 72 Fed. Reg. 46716 (Aug. 21, 2007) (to be codified at 37 C.F.R. pt. 1). The final rule differs in many respects from the originally proposed rule, and the final rule includes a number of significant changes to patent practice.

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.

For further details regarding the final rule, the reader's attention is directed to the rule itself as well as the number of papers published by the Office for the purpose of summarizing and explaining the final rule, all of which may be found on the Office's Web site: www.uspto.gov/web/offices/pac/dapp/opla/presentation/clmcontfinalrule.html.

Continued Examination Filings

As part of its final rule, the USPTO has revised patent practice with respect to 'continuing' applications, including continuation and continuation-in-part ('CIP') applications, and requests for continued examination ('RCE'), as well as with respect to divisional applications. See 72 Fed. Reg. 46837-81 (to be codified at 37 C.F.R. '1.78, and '1.114). As provided in the final rule, an applicant may file up to two continuing applications and one RCE in an application family, or up to two continuation applications (not including CIP applications) and one RCE in a divisional family, without any justification. However, any additional continuing application or RCE must include an amendment (including a new claim), argument, or evidence and will only be entered on a petition and showing why that amendment, argument, or evidence could not have been presented in a prior-filed application.

As to divisional applications, the final rule provides that a divisional application may only be filed from an application subject to a requirement for restriction and requires that such a divisional application only include claims to non-elected invention(s) that have not yet been examined. Although the final rule does not provide for a 'voluntary divisional,' such a divisional may be filed as a continuation application (and be subject to the two continuing application provisions above). As further provided, a divisional application may be filed in parallel or in series with the prior-filed application that was subject to the restriction and from which the divisional application is filed. Also, a divisional application is not required to be filed during the pendency of the respective prior-filed application (although the copendency requirement must still be met).

As repeatedly noted in the Federal Register notice of the final rule, the final rule does not place a per se limit on the number of continuing applications that may be filed from an initial nonprovisional application. The final rule instead places a restriction on continuing applications after the first two continuing applications, and on RCEs after the first RCE, in an application (or divisional) family.

The final rule does not include any situation in which the USPTO will per se or pro forma grant a petition for an additional continuing application or RCE. Instead, the Federal Register notice indicates that the Office will consider such petitions and showings on a case-by-case basis. And although the final rule itself does not include guidance on showings that would likely result in the Office granting a petition, the Response to Comments section of the Federal Register notice, as well as a Frequently Asked Questions ('FAQ') document published by the Office do provide some guidance (see the above-mentioned Web site for a copy of the FAQ). In ruling upon a petition, the Office will review the showing presented in the petition, and may review the prosecution history of the initial application and the prior continuing applications, or require additional information from the applicant. The Office will consider whether the situation is one in which the applicant should more appropriately file an appeal or petition under 37 C.F.R. '1.181 (e.g., premature finality of an Official Action), the number of applications filed in parallel or serially with substantially identical disclosures and whether the evidence, amendments, or arguments accompanying the filing are being submitted with reasonable diligence.

Within the above framework, the Response to Comments section of the Federal Register notice includes a number of example situations in which the Office will likely deny a petition for an additional continuing application or RCE. These situations include the following:

• If the showing relates to an issue that should be petitioned or appealed;
• If new subject matter in a CIP is not being claimed, but merely being added to circumvent the rule;
• Existence of a high number of applications with identical or substantially identical disclosures, or a high number of applications in the chain of prior-filed copending applications;
• A petition for the sole purpose of partitioning claims to avoid a terminal disclaimer;
• When the applicant indicates why the new invention could not otherwise be protected using another type of application, such as a reissue application or a re-examination proceeding;
• If the examiner made the rejection in the first Official Action of the initial application and maintained it in the subsequent Official Actions, but applicants responded only with arguments, instead of with evidence or an amendment, until after the final Official Action;
• For submitting an information disclosure statement ('IDS') or an amendment necessitated by (or in view of) newly discovered prior art;
• If the examiner only changed a rejection under 35 U.S.C. '102 to a rejection under 35 U.S.C. '103 (or maintained a rejection under 35 U.S.C. '103) with the addition of a new secondary reference in response to an amendment adding a new claim limitation;
• The mere fact that the examiner made a new ground of rejection in a final Official Action;
• By itself, the mere fact that an amendment, argument, or evidence is refused entry because prosecution in the prior-filed application is closed ' e.g., a petition based on the mere showing that the examiner indicates in an advisory action that the entry of an after-final amendment would require a new search, or that the evidence or amendment sought to be entered will overcome a final rejection;
• Absent special circumstances, if some of the claims in the prior application are rejected and other claims are allowed, and applicant wishes to appeal the rejected claims and obtain a patent on the allowed claims;
• When a product recently becomes commercially viable;
• When a competing product is newly discovered;
• When new information is discovered that could not have been provided in the prior application;
• When applicant discovered new inherent properties that he or she now wishes to claim;
• When applicant now has the financial resources to file previously unclaimed inventions;
• When clinical trials indicate the previously unclaimed subject matter may be useful;
• When the court determined that the format of a patented claim is improper and applicant wishes to file a continuing application to seek the proper protection;
• To correct the inventorship of the application due to information discovered after prosecution of the application has closed;
• When an additional continuing application or RCE is solely for the purpose of provoking an interference (but see below for a related circumstance in which the Office will likely grant a petition);
• When the Office changes the examiner assigned to the application either on its own initiative or in response to the applicant's request;
• When applicant changes the practitioner of record, when applicant states that the change of practitioner was made in good faith and certifies that the applicant was dissatisfied with the prior practitioner's claim drafting, or when the delay in filing claims was due to practitioner's error or inaction and was not the fault of the applicant;
• Solely on the basis of 'excusable neglect';
• If the prior-filed application was abandoned in favor of a continuing application that was filed using the Office electronic filing system or if the request for continued examination was filed using the Office electronic filing system; and
• Merely showing that the applicant becomes disabled for a lengthy time during pendency of application.

In addition, the Response to Comments section includes a number of example situations in which the Office will likely grant a petition for an additional continuing application or RCE, albeit significantly fewer examples than in the case in which the Office will likely deny a petition. These situations include the following:

• If, in a continuing application or request for continued examination, the data necessary to support a showing of unexpected results just became available to overcome a new rejection under 35 U.S.C. '103 made in the final Official Action, and the data are the result of a lengthy experimentation that was diligently commenced and could not have been completed earlier;
• If the final rejection, after the two continuing applications and request for continued examination permitted under ”1.78(d)(1) and 1.114(g) without a petition, contains a new ground of rejection that could not have been anticipated by applicant;
• If, in a continuing application or request for continuing examination, the data to demonstrate utility or enablement just became available or could not have been otherwise earlier presented, and the evidence or data resulted from research or testing that was commenced with reasonable diligence;
• Where an interference is declared in a second continuation or continuation-in-part application that contains both claims corresponding to the count and claims not corresponding to the count, and the Board of Patent Appeals and Interferences ('BPAI') suggests that the claims not corresponding to the count be canceled from the application subject to the interference and pursued in a separate application.

In many of the example situations in which the USPTO will likely deny a petition, the Office seems to believe that applicants could have, and in fact should have, sought entry of the presented amendment, argument, or evidence in a prior-filed application in the respective family. For example, a petition is likely to be denied in cases in which the examiner only changed a rejection under 35 U.S.C. '102 to a rejection under 35 U.S.C. '103 (or maintained a rejection under 35 U.S.C. '103) with the addition of a new secondary reference in response to an amendment adding a new claim limitation, since the applicant should have anticipated such a rejection. In other example situations likely to result in a denied petition, the Office seems to be of the opinion that the Office provides other avenues to accomplish the purported goal of the additional continuing application or RCE. For example, the Office is encouraging applicants to utilize the appeal or petition process for those instances in which an appeal or petition may be more appropriate. Also, at least in cases in which the applicant has not already filed two continuing applications but is seeking an additional RCE, the Office is encouraging the applicant to instead file a continuation.

A petition is also likely to be denied in cases in which a continuing application or RCE is submitted for consideration of an information disclosure statement ('IDS') with or without an amendment necessitated by (or in view of) newly discovered art. In such cases, the Office points to another recently proposed rule revising the practice of submitting an IDS that, if adopted, would provide an avenue for such submissions and amendments in certain circumstances. See 71 Fed. Reg. 38808 (Jul. 10, 2006). Before the adoption of the proposed rule related to submission of an IDS, the Office has indicated that an applicant may file an IDS and petition under a rule permitting the suspension of rules (37 C.F.R. '1.183), if that IDS complies with the proposed rule.

The rule changes to continuing application practice are applicable to applications (including reissue applications but not re-examination proceedings) filed or entering the national stage on or after the effective date of the final rule, i.e., Nov. 1, 2007. For applications or application families dating prior to the publication of the final rule, i.e., Aug. 21, 2007, applicants will be permitted 'one more' continuing application without justification, regardless of the number of prior filed continuing applications. Thus, for an application or application family that dates prior to Aug. 21, 2007, and for which two or more continuing applications have been filed, the applicant may file 'one more' continuing application even if that continuing application is filed after the effective date of the final rule.

As to RCEs, the rule changes are applicable to any RCE filed on or after the effective date of the final rule, i.e., Nov. 1, 2007. Thus, although an applicant may file any number of RCEs in an application (or divisional) family before the effective date, any RCE filed on or after the effective date that is a second or subsequent RCE in that application family will require a petition and showing.

Considerations for Applicants

In view of the final rule as it relates to continuing applications and RCEs, for applications filed before Aug. 21, 2007, and that are part of an application family already including two or more continuing applications, applicants should consider any additional continuing applications that may be desired. Applicants should consider filing any additional continuing applications before Nov. 1, 2007, if the applicant is likely to desire more than the Office's allotted 'one more' continuing application (being mindful of the five independent claim or 25 total claim threshold per invention ' referred to herein as 'the 5/25 claim threshold' and discussed in greater detail in the forthcoming second installment). Also, for applications currently under a final rejection, and that are part of an application family in which an RCE has already been filed, applicants should consider filing another RCE with amended and/or new claims before Nov. 1, 2007, in lieu of a response to the final Official Action, if the next step in the event of an unsuccessful response would likely be to file an RCE.

The final rule may push applicants to conduct more pre-filing prior art searches to obtain a better understanding of the prior-art landscape so as to draft more focused claims to help avoid rejections of overly broad claims. The final rule would also seem to warrant applicants strategically planning ahead as to any continuing applications that may be necessary or otherwise desired and 'pulling out all the stops' as early as possible in prosecution of an application so as to avoid the necessity for an RCE. For example, applicants should consider conducting interviews with examiners as a matter of course after a first Official Action, if not before a first Official Action and/or after a final Official Action (if permitted by the examiner). In response to claim rejections in an Official Action, applicants should consider separately arguing the patentability of dependent claims that may otherwise be argued to be patentable merely for reasons similar to those presented for the independent claims from which they depend.

The final rule also warrants an applicant's consideration of filing a petition to challenge petitionable deficiencies in an Official Action as soon as possible following receipt of that Official Action so as to require the USPTO to correct any such deficiencies. As suggested above, a petitionable deficiency may be the issuance of a premature final Official Action. However, a petitionable deficiency may also, and more generally, include any 'error that affects applicant's ability to reply to the Office action.' MPEP '710.06. Some situations in which applicants might consider filing a petition under MPEP '710.06 may include those in which the examiner rejects a claim (likely a dependent claim) but fails to substantively address how the prior art specifically applies to that claim, and may also include those situations in which a dependent claim clearly further limits the independent claim from which it depends, and the examiner rejects the dependent claim merely 'for reasons similar to those provided with respect to its independent claim.' Should the applicant consider filing a petition due to a deficiency in an Official Action, however, it is important to note that filing the petition does not toll the deadline for responding to that Official Action.

Further, as the necessity for an appeal is also likely to increase in view of the final rule, it is important to place an application in the best condition for an appeal as early in prosecution as possible. If the applicant believes it only has a marginal position of patentability of an independent claim over references cited against that claim in an Official Action, the applicant may consider amending the claim to strengthen its position of patentability. In other cases, however, the applicant may believe that it has a strong position of patentability of an independent claim over references cited against that claim in an Official Action, but also believe that an amendment to that claim may make its position even stronger. In these instances, the applicant may consider adding a dependent claim drawn to that aspect that further strengthens the argument for patentability (provided the application does not otherwise already include such a claim, and being mindful of the 5/25 claim threshold for an invention, as discussed in greater detail in the forthcoming second installment), and separately argue the patentability of the independent claim and the new dependent claim.

Conclusion

The final rule will have a sweeping impact on patent practice before the USPTO. Although neither this first installment nor the forthcoming second installment addresses the relative merits of the final rule, it is worth noting that many question not only the final rule itself, but also the USPTO's authority to implement the particular provisions of the final rule. In this regard, in just the first few days after the USPTO published the final rule, at least one lawsuit was filed challenging it. And although there is a possibility that this or another lawsuit may have an impact on the final rule and the Office's implementation of it, applicants should be prudent and begin to prepare today to put themselves in the best possible position come Nov. 1, 2007, and thereafter.

In January 2006, the U.S. Patent and Trademark Office ('USPTO' or the 'Office') published a proposed rule revising patent practice with respect to continued examination filings, patent applications with patentably-indistinct claims, and examination of claims in patent applications. Following the submission of written comments and public meetings, the Office published its final rule on Aug. 21, 2007. 72 Fed. Reg. 46716 (Aug. 21, 2007) (to be codified at 37 C.F.R. pt. 1). The final rule differs in many respects from the originally proposed rule, and the final rule includes a number of significant changes to patent practice.

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.

For further details regarding the final rule, the reader's attention is directed to the rule itself as well as the number of papers published by the Office for the purpose of summarizing and explaining the final rule, all of which may be found on the Office's Web site: www.uspto.gov/web/offices/pac/dapp/opla/presentation/clmcontfinalrule.html.

Continued Examination Filings

As part of its final rule, the USPTO has revised patent practice with respect to 'continuing' applications, including continuation and continuation-in-part ('CIP') applications, and requests for continued examination ('RCE'), as well as with respect to divisional applications. See 72 Fed. Reg. 46837-81 (to be codified at 37 C.F.R. '1.78, and '1.114). As provided in the final rule, an applicant may file up to two continuing applications and one RCE in an application family, or up to two continuation applications (not including CIP applications) and one RCE in a divisional family, without any justification. However, any additional continuing application or RCE must include an amendment (including a new claim), argument, or evidence and will only be entered on a petition and showing why that amendment, argument, or evidence could not have been presented in a prior-filed application.

As to divisional applications, the final rule provides that a divisional application may only be filed from an application subject to a requirement for restriction and requires that such a divisional application only include claims to non-elected invention(s) that have not yet been examined. Although the final rule does not provide for a 'voluntary divisional,' such a divisional may be filed as a continuation application (and be subject to the two continuing application provisions above). As further provided, a divisional application may be filed in parallel or in series with the prior-filed application that was subject to the restriction and from which the divisional application is filed. Also, a divisional application is not required to be filed during the pendency of the respective prior-filed application (although the copendency requirement must still be met).

As repeatedly noted in the Federal Register notice of the final rule, the final rule does not place a per se limit on the number of continuing applications that may be filed from an initial nonprovisional application. The final rule instead places a restriction on continuing applications after the first two continuing applications, and on RCEs after the first RCE, in an application (or divisional) family.

The final rule does not include any situation in which the USPTO will per se or pro forma grant a petition for an additional continuing application or RCE. Instead, the Federal Register notice indicates that the Office will consider such petitions and showings on a case-by-case basis. And although the final rule itself does not include guidance on showings that would likely result in the Office granting a petition, the Response to Comments section of the Federal Register notice, as well as a Frequently Asked Questions ('FAQ') document published by the Office do provide some guidance (see the above-mentioned Web site for a copy of the FAQ). In ruling upon a petition, the Office will review the showing presented in the petition, and may review the prosecution history of the initial application and the prior continuing applications, or require additional information from the applicant. The Office will consider whether the situation is one in which the applicant should more appropriately file an appeal or petition under 37 C.F.R. '1.181 (e.g., premature finality of an Official Action), the number of applications filed in parallel or serially with substantially identical disclosures and whether the evidence, amendments, or arguments accompanying the filing are being submitted with reasonable diligence.

Within the above framework, the Response to Comments section of the Federal Register notice includes a number of example situations in which the Office will likely deny a petition for an additional continuing application or RCE. These situations include the following:

• If the showing relates to an issue that should be petitioned or appealed;
• If new subject matter in a CIP is not being claimed, but merely being added to circumvent the rule;
• Existence of a high number of applications with identical or substantially identical disclosures, or a high number of applications in the chain of prior-filed copending applications;
• A petition for the sole purpose of partitioning claims to avoid a terminal disclaimer;
• When the applicant indicates why the new invention could not otherwise be protected using another type of application, such as a reissue application or a re-examination proceeding;
• If the examiner made the rejection in the first Official Action of the initial application and maintained it in the subsequent Official Actions, but applicants responded only with arguments, instead of with evidence or an amendment, until after the final Official Action;
• For submitting an information disclosure statement ('IDS') or an amendment necessitated by (or in view of) newly discovered prior art;
• If the examiner only changed a rejection under 35 U.S.C. '102 to a rejection under 35 U.S.C. '103 (or maintained a rejection under 35 U.S.C. '103) with the addition of a new secondary reference in response to an amendment adding a new claim limitation;
• The mere fact that the examiner made a new ground of rejection in a final Official Action;
• By itself, the mere fact that an amendment, argument, or evidence is refused entry because prosecution in the prior-filed application is closed ' e.g., a petition based on the mere showing that the examiner indicates in an advisory action that the entry of an after-final amendment would require a new search, or that the evidence or amendment sought to be entered will overcome a final rejection;
• Absent special circumstances, if some of the claims in the prior application are rejected and other claims are allowed, and applicant wishes to appeal the rejected claims and obtain a patent on the allowed claims;
• When a product recently becomes commercially viable;
• When a competing product is newly discovered;
• When new information is discovered that could not have been provided in the prior application;
• When applicant discovered new inherent properties that he or she now wishes to claim;
• When applicant now has the financial resources to file previously unclaimed inventions;
• When clinical trials indicate the previously unclaimed subject matter may be useful;
• When the court determined that the format of a patented claim is improper and applicant wishes to file a continuing application to seek the proper protection;
• To correct the inventorship of the application due to information discovered after prosecution of the application has closed;
• When an additional continuing application or RCE is solely for the purpose of provoking an interference (but see below for a related circumstance in which the Office will likely grant a petition);
• When the Office changes the examiner assigned to the application either on its own initiative or in response to the applicant's request;
• When applicant changes the practitioner of record, when applicant states that the change of practitioner was made in good faith and certifies that the applicant was dissatisfied with the prior practitioner's claim drafting, or when the delay in filing claims was due to practitioner's error or inaction and was not the fault of the applicant;
• Solely on the basis of 'excusable neglect';
• If the prior-filed application was abandoned in favor of a continuing application that was filed using the Office electronic filing system or if the request for continued examination was filed using the Office electronic filing system; and
• Merely showing that the applicant becomes disabled for a lengthy time during pendency of application.

In addition, the Response to Comments section includes a number of example situations in which the Office will likely grant a petition for an additional continuing application or RCE, albeit significantly fewer examples than in the case in which the Office will likely deny a petition. These situations include the following:

• If, in a continuing application or request for continued examination, the data necessary to support a showing of unexpected results just became available to overcome a new rejection under 35 U.S.C. '103 made in the final Official Action, and the data are the result of a lengthy experimentation that was diligently commenced and could not have been completed earlier;
• If the final rejection, after the two continuing applications and request for continued examination permitted under ”1.78(d)(1) and 1.114(g) without a petition, contains a new ground of rejection that could not have been anticipated by applicant;
• If, in a continuing application or request for continuing examination, the data to demonstrate utility or enablement just became available or could not have been otherwise earlier presented, and the evidence or data resulted from research or testing that was commenced with reasonable diligence;
• Where an interference is declared in a second continuation or continuation-in-part application that contains both claims corresponding to the count and claims not corresponding to the count, and the Board of Patent Appeals and Interferences ('BPAI') suggests that the claims not corresponding to the count be canceled from the application subject to the interference and pursued in a separate application.

In many of the example situations in which the USPTO will likely deny a petition, the Office seems to believe that applicants could have, and in fact should have, sought entry of the presented amendment, argument, or evidence in a prior-filed application in the respective family. For example, a petition is likely to be denied in cases in which the examiner only changed a rejection under 35 U.S.C. '102 to a rejection under 35 U.S.C. '103 (or maintained a rejection under 35 U.S.C. '103) with the addition of a new secondary reference in response to an amendment adding a new claim limitation, since the applicant should have anticipated such a rejection. In other example situations likely to result in a denied petition, the Office seems to be of the opinion that the Office provides other avenues to accomplish the purported goal of the additional continuing application or RCE. For example, the Office is encouraging applicants to utilize the appeal or petition process for those instances in which an appeal or petition may be more appropriate. Also, at least in cases in which the applicant has not already filed two continuing applications but is seeking an additional RCE, the Office is encouraging the applicant to instead file a continuation.

A petition is also likely to be denied in cases in which a continuing application or RCE is submitted for consideration of an information disclosure statement ('IDS') with or without an amendment necessitated by (or in view of) newly discovered art. In such cases, the Office points to another recently proposed rule revising the practice of submitting an IDS that, if adopted, would provide an avenue for such submissions and amendments in certain circumstances. See 71 Fed. Reg. 38808 (Jul. 10, 2006). Before the adoption of the proposed rule related to submission of an IDS, the Office has indicated that an applicant may file an IDS and petition under a rule permitting the suspension of rules (37 C.F.R. '1.183), if that IDS complies with the proposed rule.

The rule changes to continuing application practice are applicable to applications (including reissue applications but not re-examination proceedings) filed or entering the national stage on or after the effective date of the final rule, i.e., Nov. 1, 2007. For applications or application families dating prior to the publication of the final rule, i.e., Aug. 21, 2007, applicants will be permitted 'one more' continuing application without justification, regardless of the number of prior filed continuing applications. Thus, for an application or application family that dates prior to Aug. 21, 2007, and for which two or more continuing applications have been filed, the applicant may file 'one more' continuing application even if that continuing application is filed after the effective date of the final rule.

As to RCEs, the rule changes are applicable to any RCE filed on or after the effective date of the final rule, i.e., Nov. 1, 2007. Thus, although an applicant may file any number of RCEs in an application (or divisional) family before the effective date, any RCE filed on or after the effective date that is a second or subsequent RCE in that application family will require a petition and showing.

Considerations for Applicants

In view of the final rule as it relates to continuing applications and RCEs, for applications filed before Aug. 21, 2007, and that are part of an application family already including two or more continuing applications, applicants should consider any additional continuing applications that may be desired. Applicants should consider filing any additional continuing applications before Nov. 1, 2007, if the applicant is likely to desire more than the Office's allotted 'one more' continuing application (being mindful of the five independent claim or 25 total claim threshold per invention ' referred to herein as 'the 5/25 claim threshold' and discussed in greater detail in the forthcoming second installment). Also, for applications currently under a final rejection, and that are part of an application family in which an RCE has already been filed, applicants should consider filing another RCE with amended and/or new claims before Nov. 1, 2007, in lieu of a response to the final Official Action, if the next step in the event of an unsuccessful response would likely be to file an RCE.

The final rule may push applicants to conduct more pre-filing prior art searches to obtain a better understanding of the prior-art landscape so as to draft more focused claims to help avoid rejections of overly broad claims. The final rule would also seem to warrant applicants strategically planning ahead as to any continuing applications that may be necessary or otherwise desired and 'pulling out all the stops' as early as possible in prosecution of an application so as to avoid the necessity for an RCE. For example, applicants should consider conducting interviews with examiners as a matter of course after a first Official Action, if not before a first Official Action and/or after a final Official Action (if permitted by the examiner). In response to claim rejections in an Official Action, applicants should consider separately arguing the patentability of dependent claims that may otherwise be argued to be patentable merely for reasons similar to those presented for the independent claims from which they depend.

The final rule also warrants an applicant's consideration of filing a petition to challenge petitionable deficiencies in an Official Action as soon as possible following receipt of that Official Action so as to require the USPTO to correct any such deficiencies. As suggested above, a petitionable deficiency may be the issuance of a premature final Official Action. However, a petitionable deficiency may also, and more generally, include any 'error that affects applicant's ability to reply to the Office action.' MPEP '710.06. Some situations in which applicants might consider filing a petition under MPEP '710.06 may include those in which the examiner rejects a claim (likely a dependent claim) but fails to substantively address how the prior art specifically applies to that claim, and may also include those situations in which a dependent claim clearly further limits the independent claim from which it depends, and the examiner rejects the dependent claim merely 'for reasons similar to those provided with respect to its independent claim.' Should the applicant consider filing a petition due to a deficiency in an Official Action, however, it is important to note that filing the petition does not toll the deadline for responding to that Official Action.

Further, as the necessity for an appeal is also likely to increase in view of the final rule, it is important to place an application in the best condition for an appeal as early in prosecution as possible. If the applicant believes it only has a marginal position of patentability of an independent claim over references cited against that claim in an Official Action, the applicant may consider amending the claim to strengthen its position of patentability. In other cases, however, the applicant may believe that it has a strong position of patentability of an independent claim over references cited against that claim in an Official Action, but also believe that an amendment to that claim may make its position even stronger. In these instances, the applicant may consider adding a dependent claim drawn to that aspect that further strengthens the argument for patentability (provided the application does not otherwise already include such a claim, and being mindful of the 5/25 claim threshold for an invention, as discussed in greater detail in the forthcoming second installment), and separately argue the patentability of the independent claim and the new dependent claim.

Conclusion

The final rule will have a sweeping impact on patent practice before the USPTO. Although neither this first installment nor the forthcoming second installment addresses the relative merits of the final rule, it is worth noting that many question not only the final rule itself, but also the USPTO's authority to implement the particular provisions of the final rule. In this regard, in just the first few days after the USPTO published the final rule, at least one lawsuit was filed challenging it. And although there is a possibility that this or another lawsuit may have an impact on the final rule and the Office's implementation of it, applicants should be prudent and begin to prepare today to put themselves in the best possible position come Nov. 1, 2007, and thereafter.