Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

USPTO Significantly Modifies Rules Governing Continuing Applications and Claim Quantities

By Andrew T. Spence, James T. Pinyerd, Guy R. Gosnell
September 28, 2007

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.

Read These Next
New York's Latest Cybersecurity Commitment Image

On Aug. 9, 2023, Gov. Kathy Hochul introduced New York's inaugural comprehensive cybersecurity strategy. In sum, the plan aims to update government networks, bolster county-level digital defenses, and regulate critical infrastructure.

The DOJ's Corporate Enforcement Policy: One Year Later Image

The DOJ's Criminal Division issued three declinations since the issuance of the revised CEP a year ago. Review of these cases gives insight into DOJ's implementation of the new policy in practice.

The Bankruptcy Hotline Image

Recent cases of importance to your practice.

How AI Has Affected PR Image

When we consider how the use of AI affects legal PR and communications, we have to look at it as an industrywide global phenomenon. A recent online conference provided an overview of the latest AI trends in public relations, and specifically, the impact of AI on communications. Here are some of the key points and takeaways from several of the speakers, who provided current best practices, tips, concerns and case studies.

Use of Deferred Prosecution Agreements In White Collar Investigations Image

This article discusses the practical and policy reasons for the use of DPAs and NPAs in white-collar criminal investigations, and considers the NDAA's new reporting provision and its relationship with other efforts to enhance transparency in DOJ decision-making.