Transcript INTELLECTUAL PROPERTY: WHY BOTHER?

New Patent Office Rules
1
Overview
• Introduction to Rules
• Examples of Rule Scenarios
• Best Practices and Suggestions
2
Introduction to Rules
• Limited No. of Continuations - 2 + 1 Rule
• Limited No. of Claims - 5/25 Rule
• Disclosure of “Related” Patents and
Applications
• Rebuttable Presumption of Patentably
Indistinct Claims
3
Themes to Rules
• More front end work required
– Searching
– Filing strategy
• Know the invention better before you file the
application
– Know what problem(s) it solves and how it
differs from what was done before.
• Focus on maximizing claim potential not on the
number of applications
• Allowance of the application takes the application
out of the rules
4
Rules Being Challenged
• Tafas vs. Dudas
– Filed Aug. 22, 2007 (Eastern District of VA)
• GlaxoSmithKline vs. Dudas
– Filed Oct. 10, 2007 (Eastern District of VA)
– AIPLA, IBM, etc. supporting GlaxoSmithKline
– Hearing October 31st
5
Limited Number of Continuations
2 + 1 Continuation/RCE Rules
6
2 + 1 Continuation/RCE Rules
Generally:
• Limited to 2 CONs (or CIPs) of an Initial Application.
These are considered an “Invention Family”.
• Limited to 1 RCE in an Invention Family.
• Restriction Requirement creates a new Invention Family.
• If limits are exceeded:
– RCE is abandoned
– CONs or CIPs do not get the priority date of the Initial Application
7
2 + 1 Continuation/RCE Rules
•
Although described together in the 2 +1 rule, continuing applications and
RCEs are controlled by different rules, which apply differently.
– Continuing Applications - Rule 1.78 “Claiming benefit of earlier filing date and
cross-reference to other applications” (Fail to follow - lose earlier priority claim)
– RCEs - Rule 1.114 “Request for continued examination” (Fail to follow - RCE not
granted, so still have to respond)
•
As applied, the new rules generally have different applicability dates.
– Continuing Applications• Applications filed on or after November 1, 2007 must
– Meet the requirements limiting the number of continuing applications under the new rules OR
– File a Petition.
• One More Exception: Applications only claiming priority to applications filed before
August 21, 2007 do not need to meet the new requirements if:
– The continuing application only claims priority to nonprovisional applications filed before August
21, 2007 AND
– No other applications filed on or after August 21, 2007 claim priority to the continuing application.
– RCEs - Rules only apply to RCEs filed on or after November 1, 2007
• No August 21, 2007 “One More” Exception.
8
Continuation and CIP Applications
• Continuation application
– Discloses and claims only inventions that were:
• Disclosed in a prior-filed application (does not need to be
claimed).
• Continuation-in-part
– Discloses subject matter that was not disclosed in prior-filed
application.
• Continuation or Continuation-in-part (CIP) Priority Claim
(w/o Petition)
– Continuation or CIP applications can claim benefit of no more
than 2 parent applications (Serial aspect)
– Parent applications can only provide priority to one other
application (Parallel aspect)
9
CON and CIP Examples
Utility
Utility
Parallel
Serial
CIP
CIP
CON
Petition
Petition
Family
CON
Family
Petition
10
CON and CIP Examples
Provisional/
Foreign
Application(s)
Provisional and Outside
US (OUS) (i.e., Foreign)
Applications Do Not
Count
Provisional/
Foreign
Application(s)
Utility
Utility
Parallel
Serial
CIP
CIP
CON
Petition
Petition
Family
CON
Family
Petition
11
CON and CIP Examples
Utility
Exceeds the 2
Parent (Serial)
Requirement
CIP
CON
CON
Family
Petition
12
Divisional Applications
•
•
Divisional application
– Discloses and claims only inventions that were:
• Disclosed in a prior-filed application and
• Claimed in the prior-filed application.
– Required to comply with a PCT unity of invention or US restriction requirement in the
prior-filed application.
– Inventions were:
• Not elected for examination and
• Not examined in any prior-filed application.
• Note “examined” does not include PCT examination after filing Demand.
“Examined” only applies to US national stage examination.
Continuation of a Divisional (COD)
– COD claims the benefit of a Divisional.
– COD discloses and claims only the invention(s) disclosed and claimed in the
divisional application.
– COD claims benefit of divisional and divisional’s parents.
– COD claims benefit of at most one intervening application between it and the
divisional. (Serial aspect)
– Divisional parent application can only provide priority to one other application, not
including other divisional applications satisfying the above-mentioned conditions
(Parallel aspect)
– No CIP of Divisional allowed.
13
Divisional & COD Examples
Utility
Claims: A, B
Disclose: A, B
Restriction Elect: A
CON/CIP
Claims: A
Disclose: A, B
DIV
Claims: B
Disclose: A, B
CON/CIP
Claims: A
Disclose: A, B
COD
Claims: B
Disclose: A, B
Petition
COD
Claims: B
Disclose: A, B
Petition
14
Divisional & COD Examples
Number of
Applications to
Originally
Unclaimed
Invention C is
Limited
Utility
Claims: A, B
Disclose: A, B, C
Restriction Elect: A
CON/CIP
Claims: A, C
Disclose: A, B, C
DIV
Claims: B
Disclose: A, B, C
CON/CIP
Claims: C
Disclose: A, B, C
COD
Claims: B
Disclose: A, B, C
Petition
COD
Claims: B
Disclose: A, B, C
Petition
15
Divisional & COD Examples
Utility
Claims: A, B
Disclose: A, B, C
Restriction Elect: A
DIV
Claims: B
Disclose: A, B, C
CON
Claims: A, C
Disclose: A, B, C
COD
Claims: B
Disclose: A, B, C
CON
Claims: A, C
Disclose: A, B, C
COD
Claims: B
Disclose: A, B, C
Petition
16
1. Not a
proper COD
because does
not only claim
the invention
claimed in the
divisional
application.
BUT
2. Permitted
under
CON/CIP
portion of the
Rules.
Divisional & COD Examples
Permitted
Not Permitted
w/o Petition
Utility
Claims: A, B, C
Disclose: A, B, C
Restriction Elect: A
Utility
Claims: A, B, C
Disclose: A, B, C
Restriction Elect: A
DIV
Claims: B
Disclose: A, B, C
DIV
Claims: B
Disclose: A, B, C
CON
Claims: A
Disclose: A, B, C
CON
Claims: A
Disclose: A, B, C
1. Not a proper
COD because
does not only
claim the
invention
claimed in the
divisional
application.
2. Not a proper
CON because
has more than 2
parent
applications.
CON
Claims: A
Disclose: A, B, C
17
Continuing Application Requirements
for Priority Claim Without Petition
•
Continuation of PCT (COP) (Bypass Nationalization)
– COP claims benefit under 35 U.S.C. 120 to PCT application in which:
•
•
•
•
PCT application designated US;
Demand has not been filed in PCT application;
Basic national application fee for PCT has not been paid; AND
PCT does not claim benefit of other non-provisional or other PCT application designating
US.
– COP is a continuation or CIP of no more than 3 parent applications. (Serial aspect)
– Parent applications can only provide priority to 2 other applications (Parallel aspect)
•
Continuation of Abandoned Application Due to Failure to Respond to Missing
Parts (CAMP)
– CAMP claims benefit of a parent non-provisional application
• Parent non-provisional abandoned due to failure to respond to notice to file missing parts
• Parent non-provisional application does not claim the benefit of any other non-provisional or
US designated PCT applications.
– CAMP is a continuation or CIP of no more than 3 parent applications. (Serial aspect)
– Parent applications can only provide priority to 2 other applications. (Parallel aspect)
18
“One more CON” for COP
Of a 120 bypass nationalization of an
international application
– Demand and the basic national fee have not
been filed in the international application
– The international application does not claim
the benefit of any other nonprovisional
application or international application
designating the U.S.
19
“One more CON” for
120 Bypass Nationalization (COP)
PCT
Designate US
No Demand
No 371 Nat’l
PCT
Designate US
No Demand
No 371 Nat’l
CON/CIP
120 Bypass
“COP”
CON/CIP
120 Bypass
“COP”
CON/CIP
“COP”
CON/CIP
“COP”
CON/CIP
“COP”
CON/CIP
“COP”
Petition
Petition
Petition
20
“One more CON” for CAMP
Can file 3rd CON without petition
U.S. Application
– The initial nonprovisional application
abandoned for failure to timely reply to a
Notice of Missing Parts 37 CFR 1.53(f)
– The initial nonprovisional application does not
claim benefit of either a U.S. application or
international application designating the U.S.
21
“One more CON” for
Failure to Respond to Missing Parts (CAMP)
Utility
BUT Abandoned
Fail Respond to
Missing Parts
Utility
BUT Abandoned
Fail Respond to
Missing Parts
CON/CIP
“CAMP”
CON/CIP
“CAMP”
CON/CIP
“CAMP”
CON/CIP
“CAMP”
CON/CIP
“CAMP”
CON/CIP
“CAMP”
Petition
Petition
Petition
22
Summary
Number of Parent
Applications that
Can be Claimed
(Serial Aspect)
Number of Other
Children for Parent
Applications
(Parallel Aspect)
Examination of
Claims
Continuation
2
1
Continuation-in-part
(CIP)
2
1
N/A
N/A
2 (1 Intervening
application between
COD and parent DIV
plus all parent
applications of DIV)
1, Except Unlimited
DIV’s
Continuation of PCT
(COP)
3
2
No demand & no
national stage
(claims unexamined)
Continuation of
Abandoned Missing
Parts App. (CAMP)
3
2
Claims unexamined
DIV
Continuation of
Divisional (COD)
Claims unexamined
23
“One more CON” For Applications
Filed Before Nov. 1st
• Can file 1 more CON/CIP after November 1, 2007 in
Invention Families meeting or exceeding the two
CONs/CIP limit if no CONs/CIPs were filed after August
21, 2007.
• Patent Office has clarified that Divisional applications
and Continuations of Divisional applications (CODs) do
not count against the “one more CON/CIP” Rule.
• Note: There is no limit to the number of CONs filed
before Nov. 1. The 5/25 rule and the rebuttable
presumption of indistinct claims will apply.
24
“One more CON” For Applications Filed Before Nov. 1st
Utility
Utility
Aug. 21, 2007
Nov. 1, 2007
CON/CIP
CON/CIP
CON/CIP
CON/CIP
Petition
Petition
Petition
25
“One more CON” For Applications Filed Before Nov. 1st
Utility
Utility
CON/CIP
CON/CIP
CON/CIP
CON/CIP
CON/CIP
Petition
Petition
CON/CIP
CON/CIP
Aug. 21, 2007
Nov. 1, 2007
CON/CIP
Petition
26
“One more CON” For Applications Filed Before Nov. 1st
Utility
Utility
CON/CIP
CON/CIP
Aug. 21, 2007
CON/CIP
CON/CIP
CON/CIP
CON/CIP
Petition
Petition
Petition
CON/CIP
CON/CIP
Nov. 1, 2007
Petition
27
“One more CON” For Applications Filed Before Nov. 1st
Utility
Claims: A, B
Disclose: A, B
Restriction Elect: A
CON/CIP
Claims: A
Disclose: A, B
DIV
Claims: B
Disclose: A, B
CON/CIP
Claims: A
Disclose: A, B
COD
Claims: B
Disclose: A, B
Petition
COD
Claims: B
Disclose: A, B
Aug. 21, 2007
Nov. 1, 2007
Petition
Note: Can file
more than one if
fall under DIV
and COD Rules
28
Summary of 2 CONs Rule
Number of Con/CIPs
Filed Before
Aug. 21, 2007
Number of Con/CIP
Filed Between
Aug. 21, 2007
and Oct. 31, 2007
Number of Con/CIP
Filed On or After
Nov. 1, 2007
Without a Petition
Initial + 0 Con/CIP
0 Con/CIP
2 Con/CIPs
1 Con/CIP
1 Con/CIP
2 or more Con/CIPs
0 Con/CIP
0 Con/CIP
1 Con/CIP
1 Con/CIP
0 Con/CIP
2 or more Con/CIPs
0 Con/CIP
Initial + ≥1 Con/CIPs
29
RCE
• Can file an RCE without petition if an RCE has not been
previously filed in:
– The application;
– Any parent application (backward priority); or
– Any child application (forward priority).
• Divisional applications - can file an RCE without petition
if an RCE has not been previously filed in:
– The divisional application; or
– Any child application (forward priority).
• Continuation of Divisional (COD) - can file an RCE
without petition if an RCE has not been previously filed
in:
– The COD;
– Any parent application (backward priority); or
– Any child application (forward priority).
30
RCE
• Contrary to the USPTO’s initial slide show, you
can file RCEs in parallel cases without petition
Utility
CON
CON
RCE
RCE
31
Summary of 1 RCE Rule
Number of RCEs
Filed Before
Aug. 21, 2007
Number of RCEs
Filed Between
Aug. 21, 2007
and Oct. 31, 2007
Number of RCEs
Filed On or After
Nov. 1, 2007
Without a Petition
0 RCEs
0 RCEs
1 RCE
1 or more RCEs
0 RCEs
0 RCEs
0 RCEs
1 or more RCEs
0 RCEs
1 or more RCEs
32
Petitions to exceed CON/RCE limit
1.
2.
3.
4.
Petition
$400 fee (1.17(f))
Amendment, argument, or evidence
Provide a showing that the amendment,
argument, or evidence sought to be entered
could not have been submitted during the
prosecution of the prior-filed application.
33
Petition Factors
Factors considered:
• Whether applicant should file an appeal or a
petition under 1.181 rather than a CON/RCE
• The number of applications filed in parallel or
serially with substantially identical disclosures
• Whether evidence, amendments, or arguments
are being submitted with reasonable diligence.
34
Petitions to exceed CON/RCE limit
• Sufficient showing:
– In a CON, an interference is declared in an
application containing both claims
corresponding to the counts and claims not
corresponding to the counts and an APJ
(Admin Patent Judge) suggests that the
claims not corresponding to the counts be
canceled from the continuing application in
the interference and pursued in a separate
application.
35
Petitions to exceed CON/RCE limit
• The following are NOT sufficient showings to
grant petitions for one more CON/RCE:
– Inadequate examination – file petition under 1.181
– Examiner made new arguments or new ground of
rejection in a final Office action
– Independent claims of a second CON in which the
dependent claims contain allowable subject matter
and rewriting the dependent claims as independent
claims would result in the application containing more
than five independent claims
– To include subject matter that was not present at the
time of filing the prior-filed application
– To submit newly discovered references (IDS)
36
Petitions to exceed CON/RCE limit
• More examples of what are NOT sufficient showings to
grant petitions for one more CON/RCE:
– Product becomes commercially viable
– A competing product is newly discovered
– New information is discovered that could have been provided in
the prior application
– Applicant discovers new inherent properties to claim
– Applicant acquires financial resources to file previously
unclaimed inventions
– When clinical trials indicate the previously unclaimed subject
matter may be useful
– When a court determined that the format of a patented claim is
improper and applicant wishes to file a continuing application to
seek proper protection
37
CIP
• Must identify the claims that are supported
by the parent application.
– Does not apply to CIP applications that
received a FAOM before Nov. 1, 2007.
– CIP applications filed before Nov. 1, 2007 that
did not receive a FAOM before Nov. 1, 2007
have a February 1, 2008 deadline to identify
claim support.
• The examiner may require the location in
the specification (page and line number)
that support those claims. 37 C.F.R. 1.105
38
Streamlined Continuation
• Placed on examiner’s Regular Amended docket; not the
New Special docket.
• Requirements
– File complete CON application
– App must disclose and claim only invention disclosed and
claimed in prior-app
– Applicant agrees that any election in response to restriction/unity
of invention in prior app carries over to the CON
– Prior-filed app under final Office action or appeal
– Prior-filed app must be expressly abandoned upon filing of CON.
– Must request that CON be placed on examiner’s Regular
Amended Docket
39
Streamlined Continuation
• Request for
Streamlined
Docketing
Procedure
PTO/SB/201
40
Limits to Number of Claims
5/25 Claim Rule
41
5/25 Claim Limitation Rules
• Applicant may present, without an ESD, up to 5
independent claims and 25 total claims
– Does not include withdrawn claims, but does include reinstated
and rejoined claims
– Later amendments sending claims over 5/25 without an ESD are
non-responsive (Notice will be mailed)
– 15/75 limitation considering 2 continuations in invention family
• If over 5/25, PTO will mail Notice
– Applicant must: (1) Amend, (2) file ESD, or (3) file SRR (appl.
filed before 11/1/07)
• Consider PTA, will exist in certain situations
42
5/25 Claim Limitation Rules
• 5/25 limitation applies collectively to claims
in commonly owned pending applications
with at least one patentably indistinct claim
– If total combined is over 5/25, each
application will be deemed to be over 5/25
– Must (1) cancel patentably indistinct claim
from all but 1 appl, (2) file ESD before FAOM,
or (3) amend to meet 5/25 limitation
• 5/25 limitation does not apply to a PCT
application during international phase.
43
5/25 Claim Limitation Rules
• What is a patentably indistinct claim?
– “The standard for ‘patentably indistinct’ as the term appears in 37
CFR 1.75(b)(4), 1.78 is the same as one-way distinctness in an
obviousness-type double patenting analysis. See MPEP
804(II)(B)(1)(a).” PTO Questions and Answers, J19, J26.
– “If the application at issue is the later filed application or both are
filed on the same day, only a one-way determination of
obviousness is needed in resolving the issue of double
patenting, i.e., whether the invention defined in a claim in the
application would have been >anticipated by, or< an obvious
variation of >,< the invention defined in a claim in the patent.
See, e.g., In re Berg, 140 F.3d 1438, 46 USPQ2d 1226 (Fed. Cir.
1998) (the court applied a one-way test where both applications
were filed the same day).”
44
5/25 Claim Limitation Rules
• What will count as an independent claim?
– A claim that refers to another claim but does not
incorporate by reference all the limitations of the claim
to which such claim refers
– Ex: A method using the apparatus of claim 1,
comprising ….
• Will be counted as an independent claim
• Dependent claim
– A claim which incorporates by reference all the
limitations of the previous claim to which it refers and
specifies a further limitation of the subject matter of
the previous claim
45
5/25 Claim Limitation Rules
• FAOM = first action on the merits = does not include
restriction requirements and requirements for information
• FAOM received before 11/1/07
– 5/25 limitation does not apply (but would apply to CON of app)
• FAOM not received before 11/1/07
– 5/25 limitation does apply
– Notice (2 mo. is extendable), Applicant must: (1) Amend, (2) file
ESD, or (3) file SRR
– Notice may be combined with Rest. Req., if so, can’t file SRR
• Applications filed on or after 11/1/07
– 5/25 limitation does apply
– Notice (2 mo. not extendable), Applicant must: (1) Amend, or (2)
file ESD
– No SRR option after Notice, must be filed earlier
46
ESD
(Examination Support Document)
• Requirements
– Preexamination search statement
– Listing of most closely related references
– Identification of claim limitations disclosed by each reference
(exempt if small entity)
– Detailed explanation of patentability
– Showing of support under 112
• ESD Guidelines Available at:
– http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/clm
contfinalrule.html
• Consider Accelerated Examination if already preparing ESD
• If later amend claims out of ESD scope, must supplement ESD
47
ESD Forms
ESD Transmittal PTO/SB/216
48
ESD Forms
ESD Listing of References PTO/SB/211
49
SRR
(Suggested Restriction Requirement)
• Requirements
– Election of no more than 5/25 claims and explanation
of why the inventions are independent or distinct
– Identification of the elected claims
• Must be filed before the earlier of a FAOM or Rest. Req.
– Best practice tip: file with application
• If accepted, Examiner will set out the restriction in the
FAOM
– Note: it is now too late to get refund for cancelled claims
• If not accepted:
– Examiner makes Rest. Req.: Applicant must make election (if
over 5/25 must further file ESD or amend)
– Examiner makes no Rest. Req.: Notice will be mailed, Applicant
must either file ESD or amend
50
Patent Term Adjustment (PTA)
Consequences for Failure to Comply with
5/25 Rule
• PTA (in this context) only applies to applications filed or nationalized
on or after November 1, 2007 (see Applicability Date section)
– “The changes to 37 CFR 1.78(a) [CON, CIP, DIV Definitions], 1.78(d)(1)
[Limiting to 2 CONs/CIPs,etc.], 1.495 [Default to treat PCT’s entering
national stage via 371] and 1.704(c)(11) [PTA failure to comply with
5/25 claim limit] are applicable only to any application, including any
continuing application, filed under 35 U.S.C. 111(a) on or after
November 1, 2007, or any application entering the national stage
after compliance with 35 U.S.C. 371 on or after November 1, 2007.
– Note: The existing PTA rules carryover, such that PTA will exist in
applications filed before 11/1/07 in situations where applicant fails to
respond to 5/25 Notice within 3 months
51
Patent Term Adjustment (PTA)
Consequences for Failure to Comply with
5/25 Rule
• PTA (in this context) only applies to applications filed or
nationalized on or after November 1, 2007 (see
Applicability Date for Rule 1.704(c)(11)).
– Note: The existing PTA rules carryover, such that PTA will exist in
applications filed before 11/1/07 in situations where applicant fails
to respond to 5/25 Notice within 3 months
• Application filed with more than 5/25 claims – no ESD &
no SRR within 4 months – PTA will exist
– Time begins to run after 4 months and runs until compliance with
5/25 limitation
52
How to Calculate PTA For Failure to Comply
with 5/25 Rule
• Any PTA will be reduced by the number of days
– Beginning on the day after the later of:
• Four months from filing/nationalization date; or
• Filing date of amendment that created the 5/25 non-compliance.
– Ending on :
• Filing date of amendment satisfying 5/25 Rule;
• Filing date of response to restriction requirement in which 5/25 Rule
satisfied;
• Filing date of SRR complying with 5/25 Rule; or
• Filing date of compliant ESD.
53
Refunds for claims fees
• Applies to fees paid after 12/8/04
• Applies to amendments canceling (not just
withdrawing) claims filed before FAOM (no
certificates to get date)
• Request must be filed within 2 mo. of
amendment, and on or after 11/1/07
• Result of the Consolidated Appropriations Act,
was set to expire 9/30/07. Congress passed a
continuing resolution to continue the Act
until 10/19/07. At that time, they will either pass
another continuing resolution or enact a new
Act.
54
Disclosure of “Related”
Patents and Applications
55
Disclosure of “Related”
Patents and Applications
• Applicant must, without PTO prompting,
identify all “related” patents and applications.
• “Related” patent(s) and application(s) have:
– One common inventor, and
– A filing or priority date(s) within 2 months of
one another, and
– A common assignee or obligation to assign
56
Disclosure of “Related”
Patents and Applications
Filing or Priority Dates
• This includes: foreign priority date, actual filing date, and
any prior-filed provisional or non-provisional application
that is the basis of priority.
• All priority/filing dates for an application or patent must
be considered.
• Exceptions - do not need to report
– PCT application not nationalized in US.
• PCT Applications - International filing date (and not 371
national stage date) is used to determine same filing
date or 2-month window.
57
Disclosure of “Related”
Patents and Applications
Common Ownership
• In the case of more than one assignee, application(s)
and/or patent(s) are “commonly owned” if wholly owned
by same (identical) person(s), organization(s)/business
entity(ies) at the time the invention was made.
• Inventions of two, separate, wholly-owned subsidiaries
are commonly owned by the parent company.
• Mergers & acquisitions – determine owner of each,
related document at time the invention was made.
• Parties to a joint research agreement under the CREATE
act are considered an owner (§1.78(h)).
58
Disclosure of “Related”
Patents and Applications
Common Ownership Example
• Companies A and B have a joint development
agreement in place when invention X is made
(as analyzed under the CREATE Act)
– The invention is considered to be owned by AB.
– Any other pending applications and patents owned by
AB (jointly) satisfying the common inventor and
filing/priority date window requirements must be
reported.
– Pending applications and patents owned solely by A,
solely by B or by another entity (e.g., ABC) do NOT
need to be reported by AB.
59
Disclosure of “Related”
Patents and Applications
• Submit “Listing of Commonly Owned
Applications and Patents” to PTO
• (at least by the LATER of):
– 4 months from filing date of application (or
beginning of national stage)
– 2 months from mailing date of filing receipt in
another, related application.
– Applications filed before Nov. 1, 2007, have
until Feb. 1, 2008, or time periods above.
60
Disclosure of “Related”
Patents and Applications
• Exception: Applications filed before Nov. 1, 2007
– The two-month window does not apply.
– Only need to identify if have identical filing/priority date.
• Exception: Application filed on or after Nov. 1, 2007 claiming
priority to applications/patents filed before Nov. 1, 2007
– The two-month window does not apply to the priority applications
filed before Nov. 1, 2007.
– Only need to identify applications/patents if they have identical
filing/priority date before Nov. 1, 2007.
• Note: Applications filed on or after Nov. 1, 2007 or claiming
priority to applications filed on or after Nov. 1, 2007 still
need to identify related applications/patents within the 2
month window.
61
Failure to identify
“Related” Documents
• Second or subsequent Office Action made final,
even when double patenting rejection is new.
• Possible grounds for making the patent
unenforceable due to inequitable conduct.
• Multiple violations - practitioners may be referred
to the Office of Enrollment and Discipline.
62
Listing Of Commonly Owned Applications
And Patents PTO/SB/206
63
Rebuttable Presumption of
Patentably Indistinct Claims
64
Rebuttable Presumption of Patentably
Indistinct Claims
37 C.F.R. §1.78(2)-(3)
Rebuttable presumption that there is at least
one patentably indistinct claim if:
• One common inventor, and
• Common assignee or obligation to assign
to common assignee, and
• Same priority/filing date(s), and
• Substantial, overlapping disclosure.
65
Rebuttable Presumption of Patentably
Indistinct Claims
Substantial overlapping disclosure
• Occurs when one patent/application provides
written description support (35 U.S.C. 112, para.
1) for at least one claim in the other
patent/application.
• Expressly or incorporation by reference
• Single common sentence or disclosed element
most likely not enough
• Drawing(s) in common probably enough
66
Rebuttable Presumption of Patentably
Indistinct Claims
I have a rebuttable presumption, what now?
• Applicant must take action on own
initiative
• Appropriate action depends on disposition
of cases
– Pending application + issued patent / allowed
application
– Pending application + non-allowed application
67
Rebuttable Presumption of Patentably
Indistinct Claims
Pending application + issued patent /
allowed application
• Rebut the presumption (one-way
obviousness test: M.P.E.P.
§804(II)(B)(1)(a)); OR
• File a terminal disclaimer. “Good and
sufficient” reason not required.
Deadline for acting: 4 months from the filing
date (or beginning of national stage) of
pending application.
68
Rebuttable Presumption of Patentably
Indistinct Claims
Pending application + non-allowed
application
• Possible actions:
1. Rebut the presumption; OR
2. Amend/cancel claims (and then rebut); OR
3. File terminal disclaimer; And
Show “good and sufficient” reason for multiple
applications with patentably indistinct claims;
AND
ii. Meet 5/25 limitation for combined total claims
i.
69
Rebuttable Presumption of Patentably
Indistinct Claims
“good and sufficient” reason
• Exceptional cases (subjective)
• Examples:
– allowance in prior-filed application was
withdrawn by PTO;
– Interference declared in prior-filed application.
Later-filed application claims embodiment not
involved in interference.
70
Rebuttable Presumption of Patentably
Indistinct Claims
Pending application + non-allowed
application
• Must take action in both cases
• Deadline for acting: (the later of)
– 4 months from the filing date (or
beginning of national stage); OR
– 2 months from mailing of filing receipt in nonallowed application
71
Rebuttable Presumption of Patentably
Indistinct Claims
Pending application + non-allowed
application
• If amending claims, determine if amended
claim has written description support in
related application.
• Deadline for acting:
– Date amendment is filed.
72
Comparison of Rules – When Implicated
Ownership
Inventorship
Filing/Priority Date(s)
Disclosure
Claims
Reporting:
Identification of
Pending
Applications and
Patents
1.78(f)(1)
Owned by
same
person
At least one
common
inventor
Look at filing date:
If after 11/1/07, 2month window applies
unless priority before
11/1/07;
If before 11/1/07, only
ID if same date.
Rebuttable
Presumption of
Patentably
Indistinct Claims
1.78(f)(2)
Owned by
same
person
At least one
common
inventor
Same as other pending
non-provisional
applications or patents
Eliminate
Patentably
Indistinct Claims
From All but One
Application w/o
Good Reason
1.78(f)(3)
Owned by
same
person
At least
one claim
patentably
indistinct
Group Applications
Together for 5/25
Claim Totals
1.75(b)(4)
Owned by
same
person
At least
one claim
patentably
indistinct
73
Substantially
Overlapping
Comparison of Rules - Actions
Required Action
From Filing
or National
Stage Entry
Date
From Mailing
Date of
Filing
Receipt
Reporting:
Identification of
Pending
Applications and
Patents 1.78(f)(1)
Submit form
identifying other
pending nonprovisional
applications and
patents with
filling/priority dates
within 2 months
(after 11/1/07 unless
priority before
11/1/07) or same
(before 11/1/07).
4 Months
2 Months
Rebuttable
Presumption of
Patentably
Indistinct Claims
1.78(f)(2)
Submit rebuttal or
terminal disclaimer
(with explanation, if
required)
4 Months
2 Months
Other
Date Patentably
Indistinct Claim
Presented
74
Scenarios, Actions & Considerations
75
Scenario 1
• Scenario: How to satisfy the reporting requirement in large
portfolios being handled by both inside and outside counsel?
• Possible Actions:
– Maintain database with all patents and applications
• Internally or
• Outside Counsel
– Use Private PAIR
• Each firm has a client specific customer number
• Each firm (and client) reviews Private PAIR
• Considerations:
– Segregating work between outside counsel based on inventor(s) /
subject matter.
– Even if consolidating outside counsel will not solve problems if
still filing in house.
76
Satisfy Reporting Requirements
• Solution Generally Needs to Address
– Output - How to Easily Check if You Need to
Report Other Applications
– Where to Store Application Data For Reporting
Purposes
– How to Maintain Application Data
• Main issue: communication about applications not
yet published
77
How to Easily Check if You Need to Report
Other Applications
• Consider Web Access Solution to Provide
Universal Availability
• Reporting rule requirements are generally
divided between
– Applications Filed Before Nov. 1st
• Common inventor
• Same Filing/Priority Date
– Applications Filed On or After Nov. 1st
• Common inventor
• Filing/Priority Date within 2-month window
78
Sample Online Database Access
79
How to Easily Check if You Need to Report
Other Applications
• Applications Filed Before Nov. 1st
– Common inventor
– Same Filing/Priority Date
• Use Computer Power to Generate Report
– Use a database to generate reports
– If certain data complete, base report on filing date and
check family information to supplement report
– Simpler solution is to incorporate priority data when
generating report
80
How to Satisfy the Reporting
Requirement
• Applications
Filed Before
Nov. 1st Sample
Matching
Filing Date
and
Common
Inventor
Report
81
How to Easily Check if You Need to Report
Other Applications
• Applications Filed On or After Nov. 1st
– Common inventor
– Filing/Priority Date within 2-month window
• Again Use Computer Power to Generate Report
– If certain data complete, base report on filing date and
check family information to supplement report
– Simpler solution is to incorporate priority data when
generating report
82
How to Satisfy the Reporting
Requirement
• Applications
Filed On or
After Nov. 1st
- Sample “2Month
Window” and
Common
Inventor
Report
83
How to Satisfy the Reporting
Requirement
• Where to Store Application Data For Reporting
Purposes
– Options
• Privately maintain database
• Access public/semi-publicly available records
– No Cookie Cutter Solution
•
•
•
•
Budgetary Factors
Past Practices for Maintaining Application Data
Information Technology Support
Degree of risk willing to bear
• How to Maintain Application Data
– Main issue: communication about applications not yet
published
84
“Private Records” Option
•
Variation - Centralize Application Data
– In House; or
– Outside Counsel
•
Require Reporting Application Data in Standard Format (e.g., Excel
spreadsheet)
– When Application Filed
– Inventorship, Assignment, and/or Priority Changes
– Consider using e-Office Action Pilot Program - email cc: to primary data holder
•
•
Requests are sent to primary data holder before reporting deadline
Data accessed through web portal
App.Data
In House
In House
OR
Outside #1
Outside #2
App.Data
Outside #1
Outside #2
85
How to Satisfy the Reporting
Requirement
• Consider
Double
Checking
Internal
Data with
Public
Data
86
“Public Records” Option
•
File All Applications via EFS With Unique Customer Numbers for the Client. For Example:
–
–
–
•
•
For Each Customer Number Keep Standard Address, but Add All Attorneys/Agents That Work for the
Client as Having Power of Attorney
In House and Outside Counsel will Obtain Application Reporting Data Via Public Records Using
Standard Search Criteria
–
–
–
•
•
In House For Client A - Customer No. 123
Outside Counsel #1 For Client A - Customer No. 456
Outside Counsel #2 For Client A - Customer No. 789
Private PAIR
USPTO Search
Public Databases (if desired) - Delphion, etc.
For a Limited Window of Time - Will Need to Communicate List of Unpublished Applications Pending
Applications Not Associated with the Client Specific Customer Number
Will Need to Report to Other Counsel When Inventorship, Priority, and/or Inventorship Change Creates
an Issue for Other Counsel
PAIR,
USPTO,
Delphion
Outside #1
In House
Outside #2
87
Reporting Requirements - General
• Always Cite Family Members
– Forwards and Backwards
• Use USPTO form PTO/SB/206
• Consider Preparing Report Prior to 4
Month Deadline and not when filed
– Reduces duplicate effort
88
Scenario 2
• Scenario: Application currently (before 11/1/07) under
final rejection
• Considerations:
– Any unclaimed subject matter?
• Possible Actions:
– Search family’s prosecution history to determine if an
RCE has already been filed for the claimed invention.
If yes, file an RCE to add claims before 11/1/07
– Consider filing CONs or amend to add claims before
11/1/07
89
•
•
Scenario 3
Scenario: What is the best way to add unclaimed subject matter ad/or new claims
before Nov. 1, 2007?
Option #1: File multiple continuation applications in parallel before Nov. 1st:
– Positives
• Do not need to file SRR’s.
• Assuming an RCE was not filed in parent case(s) you will be able to file an RCE in each line
of continuation applications.
– Negatives
•
•
•
•
•
•
•
Limited continuations - lose “one more” continuation.
High risk of 5/25 claim violations.
Increase reporting requirements.
Increase chance for a terminal disclaimer.
Expensive.
Need to file before Nov. 1st.
Option #2: Add claims to a single case and file SRR
– Positives
•
Chance to receive restriction requirement
– Increases the number of continuation application opportunities.
– Eliminates need for terminal disclaimer.
– Eliminates some 5/25 claim limit issues.
• Reduces reporting burden.
• Filing fees are less.
• Not necessary to file before Nov. 1st
– Negatives
• Restriction requirement not certain.
•
Option #3: Combine Option #1 and Option #2
90
Scenario 4
• Scenario:
– Invention family with multiple inventions disclosed (e.g.,
inventions A, B & C), and
– At least one invention does not have claims currently pending
• E.g., only one DIV (claims to invention B) currently pending
(before 11/1/07)
• Considerations: After 11/1/07, all continuing applications claiming
priority to DIV may only have claims to invention claimed in DIV
(invention B)
• Possible Actions:
– Amend currently pending DIV to add claims covering unclaimed
invention (and change priority as a CON)
– File CON to unclaimed invention before 11/1/07
91
Scenario 5
•
Scenario: FAOM received in one application before Nov. 1st, but not in
another invention family application
•
Considerations: 5/25 limitation will apply to case in which FAOM not
received (both individually and collectively with all invention family
applications)
•
Possible Actions: Determine if claims are patentably distinct
– Distinct: rebut presumption in both cases
• Must still meet 5/25 limitation individually in case not having FAOM
– Not Distinct: amend to patentably distinct (and rebut presumption)
• Must still meet 5/25 limitation individually in case not having FAOM
– Not Distinct: consolidate into 1 application
• Avoid more than one application justification (§1.78(f)(2)-(3))
• If over 5/25, file SRR or wait for Rest. Req.; could file ESD
92
Scenario 6
•
Scenario: Family contains a large number of non-allowed applications
•
Considerations: Rebuttable presumption of patentably indistinct claims
•
Possible Actions:
– Get cases allowed before Nov. 1st
– If distinct, rebut presumption of patentably indistinct claims
– Consolidate Claims into 1 Case or a CIP
• If over 5/25, submit SRR or wait for possible Rest. Req.; could submit
ESD
• Avoid more than one application justification (§1.78(f)(2)-(3))
– Amend so each non-allowed application presents distinct claims (and
rebut presumption)
• Must still meet 5/25 limitation in individual applications
• Avoid more than one application justification (§1.78(f)(2)-(3))
– File terminal disclaimer
93
Scenario 7
• Scenario: How to claim previously unclaimed subject
matter after 11/1 if application has exhausted 2 CONs +
1 RCE?
• Possible Actions:
– If < 2 years from issuance, file a broadening reissue
with claims to previously unclaimed matter.
– If > 2 years from issuance, possibility to file narrowing
reissue
– With the reissue, you will be able to file 2 CONs + 1
RCE.
– Consider 1 more CON.
94
Scenario 8
• Scenario: Received foreign search report with new references and
already exceeded 2+1. The search report was mailed over 3
months ago so you cannot make a certification under 1.97(e).
•
Considerations:
– RCE NOT possible (see comments to Rules)
• Possible Actions:
– Consider if “one more” rule applies
– Petition to suspend the rules
– Consider Reexamination /Reissue of parent patent
– Memo analyzing relevance
95
Scenario 9
•
Scenario:
–
–
–
–
–
–
Application filed after Nov. 1st has claims directed to Inventions A, B, C and D.
Receive 1st Restriction to Group I - A, B & C and Group II - D.
Respond by electing Group I (A, B & C).
Receive and respond to 1st Non-final OA.
Receive 2nd Restriction Requirement requiring to elect A, B or C.
Respond by electing C
•
Problem: According to rules cannot file divisional applications to Inventions
A & B because A & B already examined.
•
Possible Actions: PTO Less Draconian in FAQ
– 2nd restrictions will now be rare - need to be authorized by head of
Technology Center.
– PTO will consider A & B as not being examined if second restriction
issued.
96
Scenario 10
•
Scenario:
– Received restriction and elected invention A
– Filed divisional to unexamined invention B
•
Problem: Can you file 2 CONs for invention A claiming the benefit of
divisional B?
•
Answer: NO, according FAQ C12, see Rule 1,78(d)(1)(iii). Only can file 2
CONs of divisional B directed to invention B
•
Possible Actions:
– Incorporate claims directed to invention A into the “divisional” B
application and change priority claim from the “divisional” application to
a “continuation” application.
• No petition required to merely change application type after 4 months
• There is an unresolved question as to whether you can do this after an
Office Action. Not sure questions as to whether Rule 1.145 “Subsequent
presentation of claims for different invention” will be treated as a restriction
requirement.
– File another divisional to invention B.
97
Scenario 11
• Scenario: How to increase the certainty of
having multiple divisional applications for
applications filed after Nov 1, 2007.
• Possible Actions:
– File the application as a PCT application
• If possible, designate EP searching authority.
• Can pay additional search fees & file Article 19
amendments
98
Scenario 12
• Scenario: How do you maximize potential to cover future products for
applications filed after November 1, 2007?
• Possible Actions:
– File provisional application
– File PCT application claiming benefit of provisional
• Nationalize or file bypass CON & prosecute with small claim set.
• Appeal often.
• At second continuation (after using RCE) file a large number of claims
with an SRR and hope for restriction so that can file multiple divisional
applications.
• Delays having the restriction requirement set too early before products
are developed.
• Must remain aware of “not examined” requirement for divisionals
because one of the early CONs might hide a similar claim that was
examined
– For Utility applications use a similar tactic
– To reduce SRR risk of not being accepted, instead file large claim
set and SRR in 1st CON so 2nd CON acts as an insurance policy.
99
Scenario 13
•
Scenario: How to reduce the risk that a non-US patent office will cite prior art
too late during prosecution (i.e., after final or allowance)?
•
Possible Actions:
– File in countries outside the US (OUS) that will likely contain the best prior art or
where you will likely foreign file.
• Obtain foreign filing license from USPTO, if needed.
• Request expedited examination (e.g., EPO - no charge & no reason needed to expedite
examination).
– File provisional application to avoid intervening 102(b) prior art issue
• As a practical matter, you might want to file the provisional application first because it
makes obtaining an expedited foreign filing license a little easier.
– File PCT application claiming benefit of provisional and foreign applications
• Pay additional search fees & do not file a demand
– Nationalize in US close to Chapter II deadline to extend time to receive
foreign search results
– Possible added benefit: might be able to expedite US examination through
patent prosecution highway program (Japan and United Kingdom Patent
Offices are participants).
100
Scenario 14
• Scenario: How do you reduce the chance of
being required by the USPTO to file a terminal
disclaimer?
• Possible Actions:
– Remove the rebuttable presumption of patentably
indistinct claim of rule 78(f)(2)
• File applications 1 day apart (e.g., file applications directed to
the molecule/apparatus, method of treatment/use, and method
of manufacturing on different days).
• Do not share common specification and/or drawings.
• Do not incorporate by reference.
101
Scenario 15
• Scenario: You want to maximize the number of claims for
both a Genus and Species and want to minimize impact of
5/25 Rule, reporting requirements, and patentably indistinct
presumption
• Possible Actions:
– Consider Dual PCT and Utility approach claiming
benefit of common provisional (file 1 day apart to avoid
rebuttable presumption)
– File at or near the same time
• US utility applications with Broader (Genus) Claims &
• PCT with narrower (Species) claims - large number of
independent species claims to get unity of invention rejection so
can file multiple divisionals & may strengthen patentably distinct
argument for genus.
– Try to get utility allowed before PCT’s Chap II deadline
– Delays 2+1, 5/25, reporting, and presumption issues
102
Scenario 16
• Scenario: How to address the 5/25 limitation, as well as
others, in large portfolios being handled by multiple firms?
• Possible Actions:
– Maintain claims/subject matter database per invention
family
• Internally or
• Outside Counsel
– Coordinate so that prosecution is serial
– Segregating work between outside counsel based on
subject matter
– Avoid justification (§1.78(f)(2)-(3)) and 5/25 limitation
103
Scenario 17
• Scenario: How can you use the new rules against
competitors?
• Possible Actions:
– Send competitor prior art just after allowance/issue
fee payment so that they waste RCEs or CONs.
• Note: New IDS rules will allow applicant to consent to 3rd
party protest for unsolicited documents
– Litigation-new grounds for inequitable conduct and
estoppel - ESDs, reporting, etc.
104
What To Do
105
What You Need to Do Now (Before Nov. 1st)
• Review all applications under final to
determine if you can/should file RCE .
• Submit all IDS’s requiring a second RCE.
• Review all divisional applications to
determine if to add claims and change to
CON to incorporate unclaimed or
previously claimed inventions.
106
What Would be Nice to Do Now
• Create policy for firms handling work & update data
– Reporting requirements
– 5/25 claim limits
• Create Docket Entries
– February 1, 2008 Deadline
• File related application/patent reports (for cases having the same
filing/priority date) in applications filed before November 1, 2007.
• CIPs filed before Nov. 1, 2007 to determine if claim support report needed
(FAOM received?).
– 4 Month from filing/national stage date
• Submit identification of commonly owned applications and patents
• Check 5/25 - cancel, submit rebuttal of patentably indistinct claims or terminal
disclaimer
– 2 Month from amendment canceling claims
• Request refund
• Review CIPs to determine if you should remove priority - avoid
limiting number of continuations off parent case and CIP.
107
What You Do NOT Need To Do Now
• Don’t worry about the 5/25 claim limits before Nov. 1st
– Although 5/25 rule applies to all applications without FAOM
before Nov. 1st, PTA is NOT a concern because the PTA rule
(Rule 1.704(c)(11)) is only applicable to applications filed on or
after Nov. 1st.
– You will receive a Notice that you exceed 5/25
• 2 month time to reply is extendable
• Applicant must: (1) Amend, (2) file SRR, or (3) file ESD
• Note may lose opportunity to file SRR if notice is combined with
Restriction Requirement
– Note PTA rules will apply if you file a late response to the Notice.
108
What You Need to Do Before Feb. 1, 2008
• Applications Filed Before Nov. 1st
– Submit report identifying applications with same filing/priority date.
– CIPs
• If FAOM before Nov. 1st, no action required.
• If FAOM not before Nov. 1st, file claim support document.
• Applications filed After Nov. 1st
– Submit report identifying applications with filing/priority date within 2
month window (note exceptions to priority claim before Nov. 1st) within 4
months of filing.
– File SRRs even if under 5/25 limit.
– Limit claims to 5/25 limit.
• If over 5/25, file an (1) SRR, (2) wait for possible Rest. Req. (unattractive
option – if don’t receive Rest. Req., must use a CON), or (3) ESD (consider
filing an SRR along with ESD to preserve PTA if ESD is non-compliant).
• Get applications allowed to take them out of the reporting
requirements.
109
What to Consider After Nov. 1st
110
Invention Disclosures
• Try to segregate invention disclosures to individual inventions
– Long term will help with reporting requirements by limiting the number of
inventors on an application
– Granular Invention Disclosures will help with divisional or separate
application decision
– Will help limit the number of references found during search which might
help with future IDS rules
• Requires more detailed invention disclosures
– No surprises when application drafted (new embodiments) can create
unclaimed subject matter and claim limit problems
• Prioritize Invention Disclosures
– How much searching
– How the application is drafted
– How the application is prosecuted
111
Patent Search
• Patent Searches are more important
– Need a better idea of art for drafting claims, so know weaknesses
before the first Office Action (2+1 Rule)
• When available, follow USPTO Search Templates for
ESD purposes
– Available at http://www.uspto.gov/web/patents/searchtemplates/
• If IDS Rules Finalized
– Keep inventions (disclosures) compartmentalized to limit number
of references from each search
• Maintain a list of classes and subclasses from search
because can be helpful in drafting an SRR to show that
the claims cover different classes and subclasses.
112
Patent Search – Types
• Standard Approach
– Quick Search to Find Knockout art
• ESD or ESD Like Approach
– Quick search to find knockout art
– Decision to file
• Draft rough claim with all dependent features
• Search all claims - Use USPTO search templates
– Consider using different searchers for each search
– Leaves option open for ESD
• Consider Filing PCT to Further Gain Benefit of Search
Report
113
Patent Application Drafting
•
General
– Need to understand overall strategy of the case
– Consider if ESD appropriate case (if ever)
•
Specification
– Consider limiting incorporation by reference to reduce the chance of patentably
indistinct presumption
– Limit subject matter described to the invention to avoid describing overlapping
subject matter that would support claims in other case(s) that would create
patentably indistinct presumption
– Cross reference to other related applications where benefit is not claimed needs
to be in a separate paragraph (Rule 1.78(d)(6))
•
Claims
–
–
–
–
–
Limit 5/25
Draft Claims to provoke restriction & consider SRR
Do not leave unclaimed subject matter
Use Markush claims to reduce claim totals
Claim order more important in PCT applications because will dictate the order in
which inventions are prosecuted once nationalized
– Consider interference like omnibus claim (e.g., A or B)
•
Drawings
– Recycling drawings from other applications may invoke presumption of patentably
indistinct claims
114
1st Filed U.S. Applications
• Provisional Applications
– Consider filing a series of provisional applications where product
is being developed because provisionals not subject to 2+1 Rule,
5/25 Rule, and reporting rules
– Consider provisional to delay examination in order to cover future
products
• Utility
– Conduct search for cases that might create presumption
– Foreign Priority - Need to Track Dates for Reporting
– Rule problem discovered - consider converting to provisional to
give time to fix problem (e.g., 5/25 notice - 2 month no EOT)
115
PCT Applications
•
Might be more desirable now – subject to delaying US patent issuance
–
–
–
–
–
•
•
5/25 Rule does not apply during international phase
Search might provide art which will help decide how to prosecute in the US
Can amend claims without wasting an office action
Not subject to reporting requirements until nationalized
Not subject to rebuttable presumption of patentably indistinct until nationalized
Issue: New PCT rules increased filing costs cost more
Nationalization - which way is better
–
371 Route - PCT restriction rules apply
•
•
–
•
•
120 Bypass Route & 371 Route - get generally the same number of CONs (120 Bypass – one more
rule), but must NOT file a Demand, so limited in amendments and arguments
Can pay additional search fees without causing problems for divisionals
Make standard practice to not file a demand to keep nationalization options open
–
•
Claims subject to unity of invention rejection can file separate divisionals at nationalization.
Filing a demand does not cause problem with divisional applications.
Note impact of not filing demand: Will lose opportunity to directly nationalize in a few countries (e.g.,
Switzerland, etc.) if not nationalized by Chap. 1 deadline, but can nationalize through regional office
(e.g., EPO, etc.)
Consider Dual PCT and Utility approach claiming benefit to common provisional
–
–
–
US Broader (Genus) Claims & PCT Narrower Claims
Try to get allowance before PCT’s Chap II deadline
Avoids 2+1, 5/25, reporting, and presumption issues
116
Design Applications
• Only have a 2 Rule and not 2+1 Rule
– Only can file two continuations/CIPs
– RCEs not permitted in Design Applications
• Reporting requirement applies
• Rules not clear about patentably indistinct
presumption
– If common drawing with utility application will likely
create presumption, but easy to rebut.
• Rules not clear how or if 5/25 Rule would apply
to Design Applications
117
Continuing Applications
•
General
–
–
–
–
–
–
•
Continuation
–
•
File rebuttal or terminal disclaimer at filing
Continuation-in-part
–
–
–
–
–
•
Track number of applications in invention family
Track number of RCE’s in invention family
Prosecute Serially
Exhaust CON before filing divisionals
Consider SRR at filing
File Family report when filed & supplement at 4 month from filing
Avoid due to support reporting requirements
Must identify the claims that are supported by the parent application.
The examiner may require the location in the specification (page and line number) that
support those claims. 37 C.F.R. 1.105
File rebuttal or terminal disclaimer at filing
Cannot File CIP of a divisional
Divisional
–
–
–
Still must rebut presumption of indistinct claims - Consider submitting paper at filing indicating
that subject to restriction and presumption should not apply
Restarts 2+1 Rule
CIPs of divisionals not permitted
118
Patent Application Filing
• Identify related applications
• Consider Terminal Disclaimer, ESD, etc.
• File SRR even below 5/25 limit so as to create
opportunity of more divisional applications
• When possible, file non-publication request to
avoid creating 102(b) art that could be used to
invalidate a continuing application that was not
granted a priority date
119
Docket Dates
• Docket 4 month to identify related cases
• Docket 4 month to take action on rebuttable presumption
• If over 5/25, docket 2 weeks to file SRR, amend, or ESD.
(No set date in Rules for this docket entry, but need to
address quickly before the notice.)
• Feb 1, 2008
– Submit related cases reports in cases where filing/priority date is
identical for applications filed before Nov. 1st.
– Identify claim support in CIPs filed before Nov. 1st, that did not
receive a FAOM before Nov. 1st.
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Post Filing Notices
• Receive Notice that application is over 5/25
– Docket 2 months
– Appl. filed before 11/1/07
• Time is extendable
• File SRR, Amend, or ESD
– Appl. filed after 11/1/07
• Time is not extendable
• File Amend or ESD
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Patent Application Assignment
• “Common Ownership”
– Mergers & acquisitions – key is ownership (for all
related documents) at the time the invention was
made.
– Parties to a joint research agreement under the
CREATE act are considered an owner (§1.78(h)).
– Inventions of two separate, wholly-owned subsidiaries
are commonly owned by the parent company.
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Foreign Filing
• Need to Track Prior Foreign Application Filing Dates for Reporting
Purposes
• Alternative #1: Consider foreign filing first in countries that typically
have relevant prior art so that art is available before US examination.
– File counterpart US provisional to avoid 102(b) issues
– EPO consider requesting expedited examination
• Alternative #2: Consider Delaying Examination in Foreign Cases until
after US Prosecution concludes for the first case
– Avoid burning RCE/CON on an IDS
– Might help with limits under new IDS Rules
– Request Foreign Associates to promptly report Search/Examination
Reports so IDS is timely filed
• Might Not Foreign File so can file non-publication request to avoid
creating 102(b) art.
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Publication
• If possible, consider Non-Publication Requests when
application is filed to avoid creating 102(b) art where lose
priority because of violating 2 CON limit or where want to
capture unclaimed subject matter that is disclosed in the
application.
• Consider Filing Application Data Sheet to Identify Current
Owner in Published Applications - easier tracking and
searching for reporting requirements.
• If added new claims, consider filing a request for
republication so that damages toll.
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IDS
• Consider Delaying Examination in Foreign Cases
until after US Prosecution concludes
– Avoid burning RCE/CON on an IDS
– Might help with limits in proposed IDS Rules
– Request Foreign Associates to promptly report Search
Reports so IDS is timely filed
• Consider limiting number of search results from
patent searches (in view of proposed IDS rules)
• Be selective in dependent claims so as to
eliminate irrelevant art
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Restriction
• Never Traverse because a restriction
requirement creates a new “Invention family”
which is entitled to 2 CONs/1 RCE
• Consider filing an SRR in every case where may
have more than 1 invention, even if claims are
less that 5/25.
• PCT Applications might help for restrictions
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Prosecution Practices
First Office Action
•
Under New Rules 2nd Final Office Actions will be more common so prosecution
will be more compact
– Conduct Interviews
– Prepare 1st response like an Appeal Brief
– Submit affidavits or other evidence in 1st response
•
•
Make Claims in Condition for Allowance - know number of independent claims
available
Obviousness Type Double Patenting will be more common
– Be careful – more terminal disclaimers greater risk of not being commonly assigned
•
New/Amended Claims - Check for rebuttable presumption
– Patentably Distinct: Rebut Presumption
– Patentably Indistinct:
• Other case is allowed application/patent, file Terminal Disclaimer
• Other case is non-allowed application
– Make claims distinct: re-amend or delete
– Exceptional circumstances: provide “good and sufficient” reason for addt’l app & don’t exceed 5/25
limit
•
Remove Any Claim Interpretation Issues
– Aids acceptance into Pre-Appeal Brief Review Program
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Second / Final Office Action
• Try to Interview (again) if Examiner
Receptive
• File Response by 2 month deadline
• Prepare Response like appeal brief
• Remove Claim Interpretation Issues
– So you can use Pre-Appeal Brief Program
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RCE
• Final Office Action Before Nov. 1
– File RCE - if one or more RCE’s already in Family
• Use RCE 1st
– want to file petitions off CONS (conservative approach)
• If a petition filed off an RCE is denied, the application can be
abandoned before you receive a decision on the petition.
• If a petition filed off a CON is denied, the application only loses the
priority date
• Track RCE’s in Family
– Note RCE on File
– Track Electronically
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Appeal
•
Consider Pre-Appeal Brief Review Pilot Program
–
–
–
–
Allows to address “bad” final Office Actions without the need to prepare a full appeal brief
Panel of Examiners (including the Examiner for the case) will reconsider grounds for rejection.
Must file request with Notice of Appeal (No EOT) and cannot file with Appeal Brief.
Proper Grounds to Use Program
•
•
–
Improper Grounds to Use Program - Use Full Appeal
•
–
Appeal process continues - 1 issue remains for appeal
Application allowed
Prosecution Reopened
Request denied (improper)
Time period for filing an appeal brief will be reset to later of:
•
•
•
Notice of Appeal along with any EOTs
Pre-Appeal Brief Request for Review Form PTO/SB/33
Arguments - 5 pages or less
DO NOT file an Appeal Brief with Request - will remove from program
Decision from Panel
•
•
•
•
–
Claim interpretation issues
Filing Requirements
•
•
•
•
–
Clear errors in fact or law in the examiner's rejections; or
The examiner's omission of one or more essential elements needed for a prima facie rejection.
One-month from mailing of the decision on the request, or
Two-month time period running from the receipt of the Notice of Appeal.
Proposed Appeals Rules Considerations
–
Stricter requirements (e.g., brief require claim charts, limited extensions, etc.)
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Allowance
• Want Notice of Allowance as soon as possible
– Authorize Examiner Amendments
• For Patentably Indistinct Claims, file Continuation after
Notice of Allowance
– Avoid “good and sufficient” reason justification
– Avoid 5/25 (multiple applications) limitation
• Get Applications Allowed Before Nov. 1
– Avoid 5/25 problems (single or multiple applications)
– Eliminate multiple, non-allowed applications having patentably
indistinct claims (requiring “good and sufficient” reason)
• Check Inventorship at allowance to eliminate any “non”inventors (reduce reporting load)
• Consider filing Comments on Reasons for Allowance to
preserve Broadening Reissue rights
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Issuance and Maintenance Fees
•
Issue Fee Payment
– Pay issue fee as soon as you receive a Notice of Allowance to window of
competitor “game playing” that will cause you to submit additional CON/RCE
•
•
– Place assignee on Patent for tracking
Issue Notification
– Check Patent Term Adjustment Issues
Maintenance Fees
– Must identify and, when necessary, rebut presumption when a common
inventor / common owner situation exists with an application and a
patent that has expired due to failure to pay maintenance fees.
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Reissue
• Reissues
• Same standard to file reissue:
– Error which causes the patent to be "deemed wholly or partly
inoperative or invalid, by reason of a defective specification or
drawing, or by reason of the patentee claiming more or less than
he had a right to claim in the patent.“
• An attorney's failure to appreciate the full scope of the invention was
held to be an error correctable through reissue. MPEP 1402
• Applicants may file a reissue application under 35 U.S.C. 251, if
appropriate, to submit claims with a different scope.
• 2+1 Rule Applies to reissue
– Can file 2 reissue continuation app’s + 1 RCE, w/out justification.
Even if app for original patent was a 2nd continuation app.
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Reissue
• Disclosure of “Related” Documents and Rebuttable
Presumption Applies to Reissue
• 5/25 Rule Applies to Reissue
– Changes apply to reissue app’s filed on or after Nov. 1, 2007 and
any reissue app in which a FAOM was not mailed before Nov. 1,
2007.
• ESD not req’d if reissue app does not seek to change claims
in patent being reissued.
– Change in claims is sought either by addition of a claim,
or amendment to claim or spec which changes a claim.
134
Other Proceedings
• Reexamination
– Consider if unable to file IDS due to 2+1 limit
• Interference
– Less likely to copy claims due to 5/25 limit
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Litigation
• ESD - creates estoppel.
• Obviousness type double patenting issues
magnified by increased number of terminal
disclaimer
– Common assignee issue
• Grounds for inequitable conduct if fail to correct
improper priority claim (see, Nilssen v. Osram
Sylvania (Fed. Cir. 2007)).
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Other Proposed Rules to Consider
•
•
•
•
PCT Rules - Increased Search Fee
IDS - Limit to 20 References
More Stringent Appeals Formalities
Markush Limits
… We’ll be back
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New Final PCT Rules
• Restoration of priority rights - does not yet apply in the US, but the
earliest priority date, including restored dates, will be used as a basis
to calculate PCT time limits/deadlines
• Permits the insertion of a missing portion of the application without
the loss of a filing date via incorporation by reference on PCT
Request
• PCT Rule changes directed to clarifying the circumstances and
procedures under which the correction of an obvious mistake may be
made in an international application - No change needed in the US
• Increased search fee to $1,800.00. The search fee is applicable,
regardless of whether there is a corresponding US prior
nonprovisional application (i.e., no reduced fees if previously filed
counterpart US application)
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Proposed IDS Rules
•
Requirements for each period has changed
–
–
–
–
–
•
Explanation required before FAOM (1st Period)
–
–
–
•
1st Period - IDS filed within 3 month or before FAOM - just submit IDS (exceptions below).
2nd Period - IDS filed after FAOM - explanation and non-cumulative description.
3rd Period - IDS between allowance and issue fee payment - Timeliness certification and
patentability justification (including, explanation and non-cumulative description).
4th Period - IDS after issue fee payment - includes 3rd Period requirements plus petition to
withdraw from allowance, statement of unpatentable claims, amendment, & patentability
reasons for amended claims.
IDS fees eliminated
Cite over 20 references - explanation for all references.
References over 25 pages.
Non-English language documents.
Exceptions
–
–
1st Period Explanation - Not required if submit foreign search report citing the references
2nd Period Explanation and Non-Cumulative Description - Not required if submit foreign
search report and certification submitting within 3 months of first cited.
•
Amendments - re-explanation for IDS or indicate nothing changed.
•
Consent to protest by 3rd party of unsolicited documents received from 3rd party.
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Proposed IDS Rules
Time Periods 1 - 4
From USPTO Presentation
Application Prosecution Timeline
and corresponding IDS requirements
Application
Filed
First Office Action
on the Merits (FAOM)
Allowance of
Application
Payment of
Issue Fee
Time Sufficient for
Consideration
Patent
First Period
Up to 20 citations permitted
w/o any explanation req’d.
• Explanations req’d for:
each ref. >25 pages, or in
non-English language, or for
all refs when more than 20
Second Period
• Explanation, and
• Non-cumulative
description
Third Period
• Timeliness cert., and
• Patentability Justification
which includes: Explanation,
Non-cumulative description,
and either:
(A) Patentability reasons
for unamended claims; or
(B)(1) Statement of
unpatentable claims,
(B)(2) Amendment, and
(B)(3) Patentability reasons for
amended claim(s)
Fourth Period
• Timeliness cert.;
• Patentability Justification which
includes:
Explanation,
Non-cumulative description,
Statement of unpatentable claims,
Amendment, and
Patentability reasons for amended
claim(s); and
• Petition to w/d from allowance
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Proposed Appeals Rules
• Additional format requirements and sections (e.g., claim support,
drawing analysis, etc.)
• Page limits - 25 pages for Appeal Briefs and 15 pages for Reply
Briefs
• Limits Extensions of Times after Appeal Brief Filed
• Further limits arguments that can be presented
• Limits amendments that can be made and evidence presented
• Makes it easier to abandon applications without notice
• Examiner Makes a New Rejection - the applicant must within 2
months (to avoid abandonment) request appeal to continue (file reply
brief) or request reopening of prosecution (file response).
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Proposed Markush Claims Rules
• An intra-claim restriction is proper unless all species
share a substantial feature essential for common utility or
species prima facie obvious over each other.
– Can file an explanation why claim limited to a single invention
• A claim may not incorporate part of the specification by
reference unless absolutely necessary.
• Markush alternatives:
–
–
–
–
must be substitutable;
may not encompass other alternatives;
may not be a set of further alternatives; and
must not make the claim difficult to construe.
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Want to know more?
Woodard, Emhardt, Moriarty, McNett & Henry LLP
Chase Tower
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
317.634.3456
www.uspatent.com
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