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New Patent Rules

Jim Ruttler, Patent Attorney

Posted Sunday, September 9, 2007 by Jim Ruttler

New patent rules pertaining to claims and continuation practice will go into effect on November 1, 2007 and are retroactive to all applications that have yet to receive a first office action on the merits. The new rules are an attempt by the patent office to reduce patent application backlog and improve overall efficiency of the patent process by permitting examiners to focus more on new applications.

The claims are the section of the patent application that set forth the ownership rights of the invention. The standard non-provisional filing fee permits up to 3 independent claims and 20 total independent and dependent claims to be filed without additional charge. However, an applicant can exceed this baseline number of claims without limit by paying additional fees. In some cases, applications include thousands of claims making it more difficult for prompt examination of the application. The new rules therefore limit the number of claims that can be filed in an application to 5 independent claims and 25 total claims. Although additional claims are allowed when an examination support document is filed prior to the first office action, the costs associated with preparing the examination support document are significant.

Continuation practice refers to the practice of filing continuation, continuation-in-part, and divisional applications and requests for continued examination during the examination process. A request for continued examination requires the examiner to review an application for patentability again after a final rejection is issued. A continuation application is an additional non-provisional application for an invention already contained in a previous non-provisional application. A continuation-in-part application is similar to a continuation application, but it also contains new subject matter. A divisional application is a non-provisional application having claims directed towards an invention that was restricted out from a previous non-provisional application. Current continuation practice has no limitation on the number of these applications and requests that may be filed thereby making it more difficult to attend to entirely new applications. Therefore, the new patent rules limit the number of continuation and continuation-in-part applications to 2 and the number of requests for continued examination to 1 per family of applications. Although additional continuation practice is possible upon a showing of necessity, it will presumably be difficult for applicants to meet this standard.

View the new rules

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