Rule: Patent Cases: Continuing Applications Continued Examination Filings, Applications Containing Patentably Indistinct Claims, and Claims Examinations

Tuesday,
August 21, 2007
Part II
Department of
Commerce
Patent and Trademark Office
37 CFR Part 1
Changes To Practice for Continued
Examination Filings, Patent Applications
Containing Patentably Indistinct Claims,
and Examination of Claims in Patent
Applications; Final Rule
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46716 Federal Register / Vol. 72, No. 161 / Tuesday, August 21, 2007 / Rules and Regulations
DEPARTMENT OF COMMERCE SUPPLEMENTARY INFORMATION: The Office application family with a petition and
is revising the rules of practice in patent adequate justification.
Patent and Trademark Office cases relating to continued examination The Office is also revising the rules of
filings (continuing applications and practice for the examination of claims in
37 CFR Part 1 requests for continued examination), an application to provide that if the
multiple applications containing number of independent claims is greater
[Docket Nos.: PTO–P–2005–0022; PTO–P– patentably indistinct claims, and the than five or the number of total claims
2005–0023] examination of claims in applications. is greater than twenty-five, the Office
The Office is revising the rules of will require the applicant to help focus
RINs 0651–AB93; 0651–AB94 practice for continuation applications, examination by providing additional
Changes To Practice for Continued continuation-in-part applications and information to the Office in an
requests for continued examination. examination support document covering
Examination Filings, Patent
Under these revisions, an applicant may all of the claims (whether in
Applications Containing Patentably
file two continuation applications (or independent or dependent form) in the
Indistinct Claims, and Examination of
continuation-in-part applications), plus application.
Claims in Patent Applications The Office is also revising the rules of
a request for continued examination in
AGENCY: United States Patent and the application family, without any practice with respect to multiple
Trademark Office, Commerce. justification. An application family applications that have patentably
ACTION: Final rule. includes the initial application and its indistinct claims and a common
continuation or continuation-in-part assignee by either requiring that all
SUMMARY: The United States Patent and applications. Applicant may file any patentably indistinct claims in such
Trademark Office (Office) is revising the additional continuation application, applications be submitted in a single
rules of practice in patent cases relating continuation-in-part application, or application or effectively treating the
to continuing applications and requests request for continued examination with multiple applications as a single
for continued examination practices, a justification. Specifically, the Office is application.
and for the examination of claims in revising the rules of practice to require These changes will mean more
patent applications. The Office is a justification for any third or effective and efficient examination for
revising the rules of practice to require subsequent continuing application that the typical applicant without any
that any third or subsequent continuing is a continuation application or a additional work on the part of most
application that is a continuation continuation-in-part application, and applicants. However, in the applications
application or a continuation-in-part any second or subsequent request for that place an extensive burden on the
application, and any second or continued examination in an Office, the applicant will be required to
subsequent request for continued application family. The third or help focus examination by providing
examination in an application family, be subsequent continuing application or additional information to the Office.
filed to obtain consideration of an request for continued examination must Applicability Dates: The changes to 37
amendment, argument, or evidence, and be filed with a petition showing why the CFR 1.75, 1.142(c), and 1.265 are
be supported by a showing as to why amendment, argument, or evidence applicable to any nonprovisional
the amendment, argument, or evidence sought to be entered could not have application filed under 35 U.S.C. 111(a)
sought to be entered could not have been previously submitted. on or after November 1, 2007, and to
been previously submitted. The Office is The Office is also revising the rules of any nonprovisional application entering
also revising the rules of practice to practice for divisional applications. the national stage after compliance with
provide that an applicant must provide Under these revisions, an applicant is 35 U.S.C. 371 on or after November 1,
an examination support document that permitted to file a divisional application 2007. The changes to 37 CFR 1.75,
covers all of the claims in an application of an application for the claims to a non- 1.142(c), and 1.265 are also applicable
if the application contains more than elected invention that has not been to any nonprovisional application filed
five independent claims or more than examined if the application was subject before November 1, 2007, in which a
twenty-five total claims. The Office is to a requirement for restriction. The first Office action on the merits was not
also revising the rules of practice with divisional application need not be filed mailed before November 1, 2007.
during the pendency of the application The changes to 37 CFR 1.117 are
respect to multiple applications that
subject to a requirement for restriction, applicable to any nonprovisional
have the same claimed filing or priority
as long as the copendency requirement application filed before, on, or after
date, substantial overlapping disclosure,
of 35 U.S.C. 120 is met. Thus, applicant November 1, 2007, with respect to any
a common inventor, and common
may file the divisional application fee under 37 CFR 1.16(h), (i), or (j) or
ownership. These changes will allow
during the pendency of the application 1.492(d), (e), or (f) paid on or after
the Office to conduct a better and more
that was subject to a requirement for December 8, 2004.
thorough and reliable examination of The changes to 37 CFR 1.78(a),
restriction or the pendency of any
patent applications. 1.78(d)(1), 1.495 and 1.704(c)(11) are
continuing application of such an
DATES: Effective Date: November 1, application. Applicant may also file two applicable only to any application,
2007. For applicability and compliance continuation applications of the including any continuing application,
dates see SUPPLEMENTARY INFORMATION. divisional application plus a request for filed under 35 U.S.C. 111(a) on or after
FOR FURTHER INFORMATION CONTACT: The continued examination in the divisional November 1, 2007, or any application
Office of Patent Legal Administration, application family, without any entering the national stage after
by telephone at (571) 272–7704, by mail justification. A divisional application compliance with 35 U.S.C. 371 on or
addressed to: Mail Stop Comments— family includes the divisional after November 1, 2007. Except as
Patents, Commissioner for Patents, P.O. application and its continuation otherwise indicated in this final rule,
Box 1450, Alexandria, VA 22313–1450, applications. In addition, applicant may any application filed under 35 U.S.C.
or by facsimile to (571) 273–0100, file any additional continuation 111(a) on or after November 1, 2007, or
marked to the attention of the Office of application or request for continued any application entering the national
Patent Legal Administration. examination in the divisional stage after compliance with 35 U.S.C.
Federal Register / Vol. 72, No. 161 / Tuesday, August 21, 2007 / Rules and Regulations 46717
371 on or after November 1, 2007, Table of Contents while maintaining or improving the
seeking to claim the benefit under 35 I. Background quality of issued patents, the Office
U.S.C. 120, 121, or 365(c) and 37 CFR A. Changes to Practice for Continued published two notices in January of
1.78 of a prior-filed nonprovisional Examination Filings 2006 proposing changes to the practice
application or international application B. Changes to Practice for Examination of for continuing applications, requests for
must either: (1) Meet the requirements Claims in Patent Applications continued examination, multiple
specified in one of 37 CFR 1.78(d)(1)(i) C. Changes to Practice for Patent applications containing patentably
through (d)(1)(v); or (2) include a Applications Containing Patentably indistinct claims, and the examination
grantable petition under 37 CFR Indistinct Claims of claims in applications. See Changes
D. Retention of First Action Final Practice
1.78(d)(1)(vi). to Practice for Continuing Applications,
and Changes in Second Action Final
With respect to applications that Practice Requests for Continued Examination
claim the benefit under 35 U.S.C. 120, II. Discussion of Specific Rules Practice, and Applications Containing
121, or 365(c) only of nonprovisional This final rule amends the following Patentably Indistinct Claims, 71 FR 48
applications or international sections in title 37 of the Code of Federal (Jan. 3, 2006), 1302 Off. Gaz. Pat. Office
applications filed before August 21, Regulations (CFR): §§ 1.17, 1.26, 1.52, 1.53, 1318 (Jan. 24, 2006) (proposed rule)
1.75, 1.76, 1.78, 1.104, 1.105, 1.110, 1.114, (hereinafter ‘‘Continuing Applications
2007: an application is not required to 1.136, 1.142, 1.145, 1.495, and 1.704. This Proposed Rule’’) and Changes to
meet the requirements set forth in 37 final rule adds §§ 1.117, and 1.265 to title 37 Practice for the Examination of Claims
CFR 1.78(d)(1) if: (1) The application of the CFR.
in Patent Applications, 71 FR 61 (Jan. 3,
claims the benefit under 35 U.S.C. 120, III. Response to Comments
A. Changes to Continuing Application 2006), 1302 Off. Gaz. Pat. Office 1329
121, or 365(c) only of nonprovisional
Practice (Jan. 24, 2006) (proposed rule)
applications filed before August 21,
B. Treatment of Third and Subsequent (hereinafter ‘‘Claims Proposed Rule’’).
2007 or applications entering the Both the Continuing Applications
Continuation or Continuation-In-Part
national stage after compliance with 35 Proposed Rule and the Claims Proposed
Applications
U.S.C. 371 before August 21, 2007; and C. Treatment of Second and Subsequent Rule requested public comments and
(2) there is no other application filed on Requests for Continued Examination provided a comment period of four
or after August 21, 2007 that also claims D. Petitions Related to Additional months to give the public an
the benefit under 35 U.S.C. 120, 121, or Continuation Applications, opportunity to submit written
365(c) of such prior-filed Continuation-In-Part Applications, and
Requests for Continued Examination
comments. The Office provided this
nonprovisional applications or extended comment period to ensure that
international applications. E. Treatment of Multiple Applications
F. Changes to Practice for Examination of the public would have sufficient time to
The changes to 37 CFR 1.114 are Claims submit written comments on the
applicable to any application in which G. Number of Independent and Total proposed changes to the rules of
a request for continued examination is Claims Permitted Without an practice and to ensure that the Office
filed on or after November 1, 2007. Examination Support Document would receive comments from all
Specifically, a petition under 37 CFR H. Examination Support Document interested persons and organizations. In
1.114(g) must accompany any request Requirements addition to the notices and requests for
I. The Office’s Authority to Promulgate the written comments, the Office conducted
for continued examination filed on or
Changes in this Final Rule
after November 1, 2007, in an J. Changes to Internal Practice
public meetings including town hall
application in which a request for K. Suggestions Relating to Legislative meetings and presentations at various
continued examination has previously Changes locations in the United States to discuss
been filed, or in a continuation L. Effective Date of the Changes in this the proposed changes and obtain
application or continuation-in-part Final Rule feedback from the public. The Office
application of an application in which M. Miscellaneous received over five hundred written
a request for continued examination has IV. Rule Making Considerations comments from government agencies,
previously been filed, or in an A. Administrative Procedure Act universities, intellectual property
B. Regulatory Flexibility Act organizations, industry, law firms,
application whose benefit is claimed in
C. Executive Order 13132 (Federalism) individual patent practitioners, and the
a continuation application or D. Executive Order 12866 (Regulatory
continuation-in-part application in Planning and Review)
general public. The Office has spent
which a request for continued E. Executive Order 13175 (Tribal nearly one year carefully analyzing and
examination has previously been filed. Consultation) considering all of the written comments
F. Executive Order 13211 (Energy Effects) that were received. The comments and
The changes to 37 CFR 1.17, 1.26,
G. Executive Order 12988 (Civil Justice the Office’s responses to the comments
1.52, 1.53, 1.76, 1.78 (except 1.78(a) and
Reform) are provided in Section III, Response to
1.78(d)(1)), 1.104, 1.105, 1.110, 1.136, H. Executive Order 13045 (Protection of Comments. In response to the
1.142(a), and 1.145 are applicable to any Children) comments, the Office has made
nonprovisional application pending on I. Executive Order 12630 (Taking of Private appropriate modifications to the
or after November 1, 2007. Property) proposed changes to balance the
Compliance Date: For applications J. Congressional Review Act
K. Unfunded Mandates Reform Act of 1995
interests of the public, patent owners,
filed before November 1, 2007, applicants, practitioners, and other
L. National Environmental Policy Act
applicants must comply with the M. National Technology Transfer and interested parties with the need to
requirements in 37 CFR 1.78(f)(1) within Advancement Act reduce the large and growing backlog of
the time periods specified in 37 CFR N. Paperwork Reduction Act unexamined patent applications,
1.78(f)(1)(ii), or by February 1, 2008, improve the quality of issued patents,
whichever is later, and applicants must I. Background and make the patent examination
comply with the requirements in 37 In view of the need for a better process more effective.
CFR 1.78(f)(2) within the time periods focused and effective examination Under the proposed changes,
specified in 37 CFR 1.78(f)(2)(iii), or by process to reduce the large and growing applicants would have been permitted
February 1, 2008, whichever is later. backlog of unexamined applications to file one of the following without any
justification: A continuation invoking the examination support would have required either the
application, a continuation-in-part document requirement based upon cancellation of one or more independent
application, or a request for continued whether an application contains more claims or an examination support
examination. By contrast, this final rule than a given number of independent document. In addition, less than twenty-
permits applicants to file two and total claims. The Office took those five percent of the applications filed in
continuation applications or comments into consideration and fiscal year 2006 would have required
continuation-in-part applications, plus a adopted a similar approach. This final either the cancellation of one or more
single request for continued rule requires an applicant to submit an dependent claims or an examination
examination in an application family, examination support document before support document. However, by
without any justification. Applicant the issuance of a first Office action on prosecuting an initial application and
may file any additional continuing the merits of an application to assist in two continuation applications serially,
application or request for continued the patentability determination when about ninety-five percent of the
examination with a justification. Under the applicant presents more than five applications filed in fiscal year 2006
the proposed changes, about eleven independent claims or more than would not have required either the
percent of the applications and requests twenty-five total claims in an cancellation of any claims or an
for continued examination filed in fiscal application. This final rule also examination support document.
year 2006 would have required a encourages applicant to submit all of the A. Changes to Practice for Continued
justification, where under the changes claims that are patentably indistinct in Examination Filings
being adopted in this final rule less than one single application and requires
three percent of the applications and applicant to identify multiple The volume of continued examination
requests for continued examination filed applications that contain patentably filings (including both continuing
in fiscal year 2006 would have required indistinct claims (same as the proposed applications and requests for continued
a justification. rule). Therefore, for each invention, an examination) and duplicative
The proposed changes would have applicant is permitted to present up to applications that contain ‘‘conflicting’’
permitted applicants to file a divisional fifteen independent claims and seventy- or patentably indistinct claims, is
application of an application for the five total claims via an initial having a crippling effect on the Office’s
claims to a non-elected invention if the application and two continuation or ability to examine ‘‘new’’ (i.e., non-
application is subject to a requirement continuation-in-part applications continuing) applications. Continued
for restriction and the divisional examination filings, other than
without providing either an
application is filed during the pendency divisional applications, as a percentage
examination support document or
of that application. However, this final of overall filings, has increased from
justification, as long as those
rule permits applicant to file a about 11.4 percent in fiscal year 1980,
applications are either prosecuted
divisional application of an application to about 18.9 percent in fiscal year 1990,
serially or contain patentably distinct
if the application is subject to a to 21.9 percent in fiscal year 2000, to
claims. An examination support
requirement for restriction and the 29.4 percent in fiscal year 2006. The
document must include a
divisional application meets the cumulative effect of these continued
preexamination search statement, a
copendency requirement of 35 U.S.C. examination filings is too often to divert
listing of references deemed most
120. Thus, this final rule allows patent examining resources from the
closely related to the subject matter of examination of new applications
applicants to file divisional applications each of the claims, an identification of
in series whereas the proposed rule disclosing new technology and
all of the claim limitations that are innovations, to the examination of
would have required applicants to file
disclosed in the references, a detailed applications that are a repetition of prior
divisional applications in parallel. This
explanation particularly pointing out applications that have already been
final rule also permits applicant to file
how each of the independent claims is examined and have either issued as
two continuation applications of a
patentable over the cited references, and patents or become abandoned. In
divisional application, plus a request for
a showing of where each claim addition, when the continued
continued examination in the divisional
limitation finds support under 35 U.S.C. examination process fails to reach a
application family, without any
112, ¶ 1, in the application and any final resolution, and when multiple
justification. Under the proposed
prior-filed application. The examination applications containing claims to
changes, about thirteen percent of
divisional applications filed in fiscal support document will assist the Office patentably indistinct inventions are
year 2006 would need to have been filed in the examination process and the filed, the public is left with an
earlier, where the changes being determination of patentability of the uncertainty as to what the set of patents
adopted in this final rule would not invention by providing the most resulting from the initial application
have required any of the divisional relevant prior art and other useful will cover. Thus, these practices impose
applications filed in fiscal year 2006 to information. a burden on innovation both by
have been filed earlier. Under the proposed changes, about retarding the Office’s ability to examine
The proposed changes would have one percent of the applications filed in new applications and by undermining
required applicant to provide an fiscal year 2006 would have required the function of claims to notify the
examination support document before either the cancellation of one or more public as to what technology is or is not
the first Office action on the merits if independent claims or an examination available for use.
applicant designated more than ten support document. Furthermore, about Commentators have noted that an
representative claims including all of eighty percent of the applications filed applicant’s use of the unrestricted
the independent claims in the in fiscal year 2006 would have required continuing application and request for
application for initial examination. The either a designation of dependent claims continued examination practices may
Office received a substantial number of for initial examination or an preclude the Office from ever finally
comments from the public opposing this examination support document. Under rejecting an application or even from
‘‘representative claims’’ examination the changes being adopted in this final ever finally allowing an application. See
approach and suggesting that the Office rule, less than eight percent of the Mark A. Lemley and Kimberly A.
should simply adopt a threshold to applications filed in fiscal year 2006 Moore, Ending Abuse of Patent
Continuations, 84 B.U. L. Rev. 63, 64 continued examination filings as a Office has modified these provisions
(2004). The burden imposed by the strategy to delay the conclusion of relative to proposed changes. Under this
repetitive filing of applications (as examination. The Office, however, final rules, an applicant may instead file
continuing applications) on the Office considers such a strategy to be a misuse two continuation applications (or two
(as well as on the public) is not a recent of continued examination practice. continuation-in-part applications, or
predicament. See To Promote the Specifically, the Office considers such a one continuation application and one
Progress of Useful Arts, Report of the strategy to be inconsistent with an continuation-in-part application), plus a
President’s Commission on the Patent applicant’s and practitioner’s duty request for continued examination in
System, at 17–18 (1966) (recommending under 37 CFR 10.18(b)(2)(i) not to any one of the initial application or two
changes to prevent the repetitive filing submit an application or other filing to continuation or continuation-in-part
of dependent (i.e., continuing) cause unnecessary delay or needless applications, without any justification.
applications). Unrestricted continued increase in the cost of prosecution Any additional continuation
examination filings and multiple before the Office. This misuse of application, continuation-in-part
applications containing patentably continued examination practice also application, or request for continued
indistinct claims, however, are now prejudices the public by keeping examination, however, must be filed to
having such an impact on the Office’s applications in pending status while obtain consideration of an amendment,
ability to examine new applications that awaiting developments in similar or argument, or evidence, and be
it is appropriate for the Office to clarify parallel technology and then later supported by a showing as to why the
the applicant’s duty to advance amending their applications to cover amendment, argument, or evidence
applications to final action by placing these developments. The courts have sought to be entered could not have
some conditions on the filing of permitted the addition of claims, when been previously submitted. This final
multiple continuing applications, supported under 35 U.S.C. 112, ¶ 1, to rule would also ease the burden of
requests for continued examination, and encompass products or processes later examining multiple applications that
other multiple applications to the same discovered in the marketplace. See PIN/ have the same claimed filing or priority
invention. See 35 U.S.C. 2(b) (authorizes NIP, Inc. v. Platt Chemical Co., 304 F.3d date, substantial overlapping disclosure,
the Office to establish regulations, not 1235, 1247, 64 U.S.P.Q.2d 1344, 1352 a common inventor, and common
inconsistent with law, which shall (Fed. Cir. 2002). However, the practice assignee by requiring that all patentably
govern the conduct of proceedings in of maintaining continuing applications indistinct claims in such applications be
the Office, and shall facilitate and to delay the conclusion of examination submitted in a single application absent
expedite the processing of patent for the purpose of adding claims after good and sufficient reason.
applications). The changes in this final such discoveries is inconsistent with the As discussed previously, the
rule will permit the Office to apply the duty under 37 CFR 10.18(b)(2)(i) not to unrestricted continued examination
patent examining resources otherwise submit filings to cause unnecessary practice and the filing of multiple
consumed by these applications to the delay or needless increase in the cost of applications containing patentably
examination of new applications and prosecution before the Office. indistinct claims are impairing the
thereby reduce the backlog of The Office, in light of its backlog and Office’s ability to examine new
unexamined applications. anticipated continued increase in applications without real certainty that
application filings, is making every these practices effectively advance
The Office also notes that not every effort to become more efficient. prosecution, improve patent quality, or
application as filed particularly points Achieving greater efficiency requires the serve the typical applicant or the public.
out and distinctly claims what the cooperation of those who provide the These changes to the rules in title 37 of
applicant regards as his or her input into the examination process, the the CFR are intended to ensure that
invention. For example, this may occur applicants and their representatives. continued examination filings are used
where the applicant’s attorney or agent In the Continuing Applications efficiently to move applications
has not adequately reviewed or revised Proposed Rule, the Office proposed to forward. The Office expects that the
the application documents received change the rules of practice to require changes to the rules of practice in this
from the applicant. Applicants that: (1) Any second or subsequent final rule will: (1) Lead to more focused
frequently file literal translations of continued examination filing and efficient examination, improve the
foreign documents as applications, (continuation or continuation-in-part quality of issued patents, result in
resulting in problems with compliance application or request for continued patents that issue faster, and give the
with U.S. patent law, such as the examination) include a showing that the public earlier notice of what the patent
written description requirement, as well amendment, argument, or evidence claims cover; and (2) address the
as problems with formatting and could not have been submitted prior to growing practice of filing (by a common
presentation of the claims. In these the close of prosecution after a single applicant or assignee) multiple
situations, examination of what continuation or continuation-in-part applications containing patentably
applicants actually regard as their application or request for continued indistinct claims.
invention may not begin until after one examination; and (2) multiple 35 U.S.C. 111(a) and 120,
or more continued examination filings. applications that have the same claimed respectively, permit an applicant to file
Applicants should not rely on an filing or priority date, substantial a nonprovisional application and to
unlimited number of continued overlapping disclosure, a common claim the benefit of a prior-filed
examination filings to correct inventor, and a common assignee nonprovisional application. Similarly,
deficiencies in the claims and include either an explanation of how 35 U.S.C. 363 and 365(c), respectively,
disclosure that applicant or applicant’s the claims are patentably distinct, or a permit an applicant to file an
representative could have corrected terminal disclaimer and explanation of international application under Patent
earlier. In addition, while only a small why patentably indistinct claims have Cooperation Treaty (PCT) Article 11 and
minority of applications are a third or been filed in multiple applications. 35 U.S.C. 363 and, if the international
subsequent continuing application, it In response to the comments on the application designates the United States
appears that some applicants and proposed changes to the practices for of America, to claim the benefit of a
practitioners have used multiple continued examination filings, the prior-filed international application
designating the United States of U.S.P.Q.2d 1448, 1453 (Fed. Cir. 2002) examination rather than file an appeal
America or a prior-filed nonprovisional (Bogese II). Rather, the rules require that to avoid the delays that historically have
application. Similarly again, 35 U.S.C. applicants who file multiple continuing been associated with the appeal process.
111(a) and 365(c) permit an applicant to applications from the same initial The Office, however, has taken major
file a nonprovisional application (filed application show that the third and steps to eliminate such delays. First, the
under 35 U.S.C. 111(a)) and to claim the following applications, and any second Board of Patent Appeals and
benefit of a prior-filed international or subsequent request for continued Interferences (BPAI) has radically
application designating the United examination in an application family, be reduced the inventory of pending
States of America (under 35 U.S.C. filed to obtain consideration of an appeals and appeal pendency during the
365(c)). amendment, argument, or evidence that last five fiscal years. Second, the Office
35 U.S.C. 120 is generally considered could not have been previously has adopted an appeal conference
the statutory basis for continuing submitted. program to review the rejections in
application practice. See Symbol Techs., Likewise, the Office is putting applications in which an appeal brief
Inc. v. Lemelson Med., 277 F.3d 1361, conditions on request for continued has been filed. See Manual of Patent
1365, 161 U.S.P.Q.2d 1515, 1518 (Fed. examination practice. 35 U.S.C. 132(b) Examining Procedure (MPEP) § 1207.01
Cir. 2002) (35 U.S.C. 120 and 121 form provides for the request for continued (8th ed. 2001) (Rev. 5, August 2006).
the backbone of modern continuation examination practice set forth in Third, the Office has also adopted a pre-
and divisional application practice) § 1.114. Unlike continuation application appeal brief conference program to
(Symbol I). Nothing in 35 U.S.C. 120 or practice, the request for continued permit an applicant to request that a
its legislative history suggests that the examination practice was recently panel of examiners review the rejections
Office must or even should permit an added to title 35, United States Code, in in his or her application prior to the
applicant to file an unlimited number of section 4403 of the American Inventors filing of an appeal brief. See New Pre-
continuing applications without any Protection Act of 1999 (AIPA). See Appeal Brief Conference Program, 1296
justification. Public Law 106–113, 113 Stat. 1501, Off. Gaz. Pat. Office 67 (July 12, 2005),
The practice of filing ‘‘continuation 1501A–560 (1999). 35 U.S.C. 132(b) and Extension of the Pilot Pre-Appeal
applications’’ arose early in Office provides, inter alia, that the Office Brief Conference Program, 1303 Off.
practice mainly as a procedural device ‘‘shall prescribe regulations to provide Gaz. Pat. Office 21 (Feb. 7, 2006). These
to effectively permit the applicant to for the continued examination of changes provide for a relatively
amend an application after a rejection applications for patent at the request of expeditious review of rejections in an
and receive an examination of the the applicant.’’ Nothing in 35 U.S.C. application under appeal. Thus, for an
‘‘amended’’ (or new) application. See In 132(b) or its legislative history suggests applicant faced with a rejection that he
re Bogese, 22 U.S.P.Q.2d 1821, 1824 that the Office must or even should or she feels is improper, the appeal
(Comm’r Pats. 1991) (Bogese I). The permit an applicant to file an unlimited process offers a more effective
concept of a continuation application number of requests for continued resolution than seeking continued
per se was first recognized in Godfrey v. examination in an application. examination before the examiner.
Eames, 68 U.S. (1 Wall.) 317, 325–26 Therefore, this final rule allows This final rule also provides that an
(1864). See Bogese I, 22 U.S.P.Q.2d at applicants to file their first request for applicant may file a divisional
1824. 35 U.S.C. 120 is a codification of continued examination in an application directed to each non-elected
the continuation application practice application family without any invention that has not been examined if
recognized in Godfrey v. Eames. See id. justification, but requires applicants to the prior-filed application is subject to
(citing In re Hogan, 559 F.2d 595, 603, justify the need for any further requests a requirement for restriction. The
194 U.S.P.Q. 527, 535 (C.C.P.A. 1977)). for continued examination in light of divisional application need not be filed
An applicant should understand, the past prosecution. during the pendency of the application
however, that he or she does not have The Office appreciates that subject to a requirement for restriction,
an unfettered right to file multiple appropriate continued examination as long as the copendency requirement
continuing applications without making practice permits an applicant to obtain of 35 U.S.C. 120 is met. This final rule
a good faith attempt to claim the further examination and advance an also permits applicant to file two
applicant’s invention. 35 U.S.C. 2(b) application to final action. The continuation applications of a divisional
gives the Director the inherent authority unrestricted continued examination application plus a request for continued
to promulgate regulations to ensure that practice, however, does not provide examination in the divisional
applicants prosecute applications in adequate incentives to assure that the application family, without any
good faith. Moreover, by assuming that exchanges between an applicant and the justification. This final rule, however,
an unlimited number of continuations examiner during the examination does not permit a ‘‘divisional’’
are available, applicants have slipped process are efficient. The marginal value application to be filed if it is not the
into unfocused practices in prosecution vis-à-vis the patent examination process result of a requirement for restriction in
that impede the Office’s ability to as a whole of exchanges between an the prior-filed application (a so-called
conduct effective examination. Such applicant and the examiner during the ‘‘voluntary’’ divisional application).
practices likewise cause delays in examination process tends to decrease Such a ‘‘voluntary’’ divisional
prosecution and increase the cost of after each additional continued application would be a continuation
examination, both of which are contrary examination filing. The Office resources application, and subject to the
to an applicant’s duties under the rules absorbed by the examination of requirements for continuation
of conduct before the Office set forth in additional continued examination applications, under the changes in this
37 CFR Part 10. filings are diverted away from the final rule.
The changes in this final rule do not examination of new applications, thus
set a per se limit on the number of increasing the backlog of unexamined B. Changes to Practice for Examination
continuing applications. Nor are the applications. of Claims in Patent Applications
changes intended to address extreme The Office also appreciates that A number of patent applications
cases of prosecution laches or to codify applicants sometimes use continued contain a large number of claims, which
In re Bogese, 303 F.3d 1362, 1369, 64 examination practice to obtain further makes efficient and effective
examination of such applications at 61–69, 1302 Off. Gaz. Pat. Office at or if applicant wishes to present more
problematic. The Office previously 1329–35. than five independent claims or twenty-
requested comments in 1998 on a The Office received a substantial five total claims in any one application,
proposal to limit the number of number of comments from the public then applicant has the option of
independent and total claims that opposing the proposed ‘‘representative presenting as many independent and
would be examined in an application. claims’’ examination approach and total claims as desired by providing an
See Changes to Implement the Patent suggesting that the Office should simply examination support document. The
Business Goals, 63 FR 53497, 53506–08 adopt a strategy based upon whether an examination support document will
(Oct. 5, 1998), 1215 Off. Gaz. Pat. Office application contains more than a given assist the examiner in examining the
87, 95–97 (Oct. 27, 1998). Specifically, number of independent and total application and determining the
in 1998, the Office requested comments claims. As a result of the public patentability of a claimed invention by
on a proposal to change the rules of comments on the Claims Proposed Rule, providing the most relevant prior art
practice to: (1) Limit the number of total the Office is not adopting the and other useful information.
‘‘representative claims’’ examination Specifically, the examination support
claims that will be examined (at one
approach. document will assist the examiner in
time) in an application to forty; and (2) Instead, this final rule provides that if understanding the invention and
limit the number of independent claims the number of independent claims is interpreting the claims before
that will be examined (at one time) in greater than five or the number of total conducting a prior art search. The
an application to six. See Changes to claims is greater than twenty-five, the examination support document will also
Implement the Patent Business Goals, applicant must help focus examination assist the examiner in evaluating the
63 FR at 53506, 1215 Off. Gaz. Pat. by providing an examination support prior art cited by the applicant and in
Office at 95. Under the 1998 proposal, document covering all of the claims in determining whether a claim limitation
if the applicant presented more than the application (whether in independent has support in the original disclosure
forty total claims or six independent or dependent form) before the issuance and in any prior-filed application. An
claims for examination at one time, the of a first Office action on the merits of examination support document must be
Office would withdraw the excess an application. An applicant may filed before the issuance of a first Office
claims from consideration, and require present up to five independent claims action on the merits of an application.
the applicant to cancel those claims. See and twenty-five total claims in an initial This is so that the information
id. The Office, however, ultimately application and each continuation or concerning the invention will be
decided not to proceed with a proposed continuation-in-part application available when the Office begins the
change to § 1.75 to place an absolute without providing either an examination process, and thus avoids
limit on the number of total and examination support document or the piecemeal examination that would
independent claims that would be justification, as long as those result if the examination support
examined in an application. See applications are either prosecuted document were not provided until after
Changes to Implement the Patent serially or contain patentably distinct the first Office action on the merits in
Business Goals, 64 FR 53771, 53774–75 claims. Thus, an applicant may present the application.
(Oct. 4, 1999), 1228 Off. Gaz. Pat. Office up to fifteen independent claims and
seventy-five total claims to a single C. Changes to Practice for Patent
15, 17–18 (Nov. 2, 1999).
patentably distinct invention via an Applications Containing Patentably
Applications which contain a large Indistinct Claims
initial application and two continuation
number of claims, however, continue to
or continuation-in-part applications that The changes in this final rule also
absorb an inordinate amount of patent
are filed and prosecuted serially without require that applicants provide
examining resources, as they are
providing either an examination support additional information to the Office
extremely difficult to properly process when they file multiple applications
document or a justification.
and examine. As a result, contrary to the containing ‘‘conflicting’’ or patentably
Furthermore, an applicant may present
proposal under consideration in 1998, up to fifteen independent claims and indistinct claims. The rules of practice
the Claims Proposed Rule sought a seventy-five total claims via a divisional provided that ‘‘[w]here two or more
change to the practice for examination application and its two continuation applications filed by the same applicant
of claims that would not place a limit applications without providing either an contain conflicting claims, elimination
on the number of total or independent examination support document or a of such claims from all but one
claims that may be presented for justification, if the Office issues a application may be required in the
examination in an application. The restriction requirement in the prior-filed absence of good and sufficient reason
Office proposed in the Claims Proposed application. Thus, the change to the for their retention during pendency in
Rule to revise the practice for the practice for examination of claims more than one application.’’ See 37 CFR
examination of claims in an application adopted in this final rule avoids placing 1.78(b) (2006).
as follows: (1) The Office would give an a limit on the number of total or This final rule provides that an
initial examination only to the independent claims that may be applicant must identify other pending
representative claims, namely, all of the presented for examination in an applications or patents that are
independent claims and only the application, but does require an commonly owned, have a common
dependent claims that are expressly applicant who presents more than five inventor, and have a claimed filing or
designated for initial examination; and independent claims or more than priority date within two months of the
(2) if the number of representative twenty-five total claims in an claimed filing or priority date of the
claims is greater than ten, the Office application to help focus examination application. This requirement does not
would require the applicant to help by providing additional information to supplant an applicant’s duty to bring
focus examination by submitting an the Office in an examination support other applications that are ‘‘material to
examination support document covering document. patentability’’ of an application (e.g.,
all of the representative claims. See If an applicant thinks fifteen applications containing patentably
Changes to Practice for the Examination independent claims or seventy-five total indistinct claims) to the attention of the
of Claims in Patent Applications, 71 FR claims to an invention is not sufficient, examiner. See Dayco Prod., Inc. v. Total
Containment, Inc., 329 F.3d 1358, 1365– claims in issued patents that contain After Final Rejection in Certain
69, 66 U.S.P.Q.2d 1801, 1806–08 (Fed. patentably indistinct claims in Applications Filed Before June 8, 1995,
Cir. 2003); see also MPEP § 2001.06(b). determining whether a pending 70 FR 24005 (May 6, 2005), 1295 Off.
Thus, applicants are cautioned against application exceeds the five Gaz. Pat. Office 22 (Jun. 7, 2005)
intentionally filing related applications independent claim and twenty-five total (notice).
outside of this two-month window in an claim threshold. Nevertheless, those The Office is revising second action
attempt to avoid the requirement to patentably indistinct claims would still final practice as it pertains to second or
identify other applications that are be subject to a double patenting subsequent Office actions that include a
material to the patentability of the rejection. new double patenting rejection (either
application at issue. See Cargill, Inc. v. statutory or obviousness-type double
D. Retention of First Action Final patenting). Double patenting can arise
Canbra Foods, Ltd., 476 F.3d 1359,
Practice and Changes in Second Action when a party (or parties to a joint
1367–68, 81 U.S.P.Q.2d 1705, 1711
Final Practice research agreement under the
(Fed. Cir. 2007) (there is no such thing
as a good faith intent to deceive). The Office has a first action final Cooperative Research and Technology
This final rule provides that if there rejection practice under which the first Enhancement Act of 2004 (CREATE
are other pending applications or Office action in a continuing Act), Public Law 108–453, 118 Stat.
patents that are commonly owned and application, or in the prosecution of a 3596 (2004)) has filed multiple patent
have a common inventor, substantial request for continued examination, may applications containing patentably
overlapping disclosures, and the same be made final under certain indistinct claims. The applicant (or the
claimed filing or priority date, the Office circumstances. See MPEP § 706.07(b) owner of the application) is in a far
will presume that the applications and 706.07(h), paragraph VIII. The better position than the Office to
contain patentably indistinct claims. In Office proposed to eliminate this determine whether there are one or
such a situation, the applicant must practice in continuing applications more other applications or patents
either rebut this presumption by under 35 U.S.C. 120, 121, or 365(c) and containing patentably indistinct claims.
explaining how the applications contain in requests for continued examination For this reason, when an applicant files
patentably distinct claims, or submit the under 35 U.S.C. 132(b) as unnecessary multiple applications that are
appropriate terminal disclaimers and in view of the proposed changes to substantially the same, the applicant is
explain why two or more pending continuing applications and requests for responsible for assisting the Office in
applications containing ‘‘conflicting’’ or continued examination practice that resolving potential double patenting
patentably indistinct claims should be would permit an applicant to file only situations, rather than taking no action
maintained. one continuing application or request until faced with a double patenting
The Office proposed a provision that for continued examination without any rejection. Thus, if an Office action must
if an application contains at least one justification. See Changes to Practice for include a double patenting rejection, it
claim that is patentably indistinct from Continuing Applications, Requests for is because the applicant has not met his
at least one claim in one or more other Continued Examination Practice, and or her responsibility to resolve the
applications or patents, the Office Applications Containing Patentably double patenting situation. Therefore,
would (if certain conditions were met) Indistinct Claims, 71 FR at 51, 1302 Off. the inclusion of a new double patenting
treat the independent claims and the Gaz. Pat. Office at 1321. This final rule, rejection in a second or subsequent
dependent claims designated for initial however, provides that an applicant Office action will not preclude the
examination in the first application and may file a request for continued Office action from being made final.
in each of such other applications or examination in either the initial The Office is also revising second
patents as present in each of the application or either of the two action final practice as it pertains to
applications for purposes of continuing applications without any second or subsequent Office actions that
determining whether the applicant justification. Therefore, the Office is include a new ground of rejection
would be required to submit an retaining its first action final rejection necessitated by a showing that a claim
examination support document. See practice. Applicants, however, are element that does not use the phrase
Changes to Practice for the Examination reminded that it would not be proper for ‘‘means for’’ or ‘‘step for’’ is
of Claims in Patent Applications, 71 FR the Office to make a first Office action nevertheless a means- (or step-) plus-
at 64, 68, 1302 Off. Gaz. Pat. Office at final in a continuing application or after function claim element under 35 U.S.C.
1331, 1334. This final rule provides that a request for continued examination if 112, ¶ 6. The Office revised the
if multiple applications, including the application contains material which examination guidelines for means- (or
applications having a continuity was presented after final rejection or the step-) plus-function claim elements
relationship, contain patentably close of prosecution but was denied under 35 U.S.C. 112, ¶ 6, in June of
indistinct claims, the Office will treat entry because: (1) new issues were 2000. See Supplemental Examination
the multiple applications as a single raised that required further Guidelines for Determining the
application for purposes of determining consideration and/or search; or (2) the Applicability of 35 U.S.C. 112, ¶ 6, 65
whether each of the multiple issue of new matter was raised. See FR 38510 (June 21, 2000), 1236 Off. Gaz.
applications exceeds the five MPEP § 706.07(b) and 706.07(h). Thus, Pat. Office 98 (July 25, 2000) (2000
independent claim and twenty-five total applicants may guard against first action Examination Guidelines); see also
claim threshold. This provision is to final rejection in a continuing Interim Supplemental Examination
preclude an applicant from submitting application or after a request for Guidelines for Determining the
multiple applications with claims that continued examination by first seeking Applicability of 35 U.S.C. 112, ¶ 6, 64
are patentably indistinct, each with five entry of the amendment, argument, or FR 41392 (July 30, 1999). The 2000
or fewer independent claims or twenty- new evidence under § 1.116. Examination Guidelines for means- (or
five or fewer total claims, for the The Office is also not changing the step-) plus-function claim elements
purposes of avoiding the requirement to final action practice for the Office action under 35 U.S.C. 112, ¶ 6, have been
submit an examination support following a submission under § 1.129(a). incorporated into the MPEP. See MPEP
document in compliance with § 1.265. See Changes to the Transitional sections 2181–2184 (8th ed. 2001) (Rev.
The Office, however, will not count the Procedures for Limited Examination 5, August 2006). The 2000 Examination
Guidelines set forth a three-prong art based on the actual filing date of the Section 1.17 (patent application and
procedure for determining whether a continuation-in-part application. To reexamination processing fees): Section
claim element is a means- (or step-) avoid any unnecessary delay in the 1.17(f) is amended to include a
plus-function claim element under 35 prosecution of the application, reference to: (1) Petitions under
U.S.C. 112, ¶ 6. See Supplemental applicant should provide the § 1.78(d)(1)(vi) for a continuing
Examination Guidelines for Determining identification before the examiner application not provided for in
the Applicability of 35 U.S.C. 112, ¶ 6, begins to conduct a prior art search. If §§ 1.78(d)(1)(i) through (d)(1)(v); and (2)
65 FR at 38514, 1236 Off. Gaz. Pat. the failure to identify the claims for petitions under § 1.114(g) for a request
Office at 101. The 2000 Examination which the subject matter is disclosed in for continued examination not provided
Guidelines provide that if a claim the manner provided by 35 U.S.C. 112, for in § 1.114(f). See discussion of
element does not include the phrase ¶ 1, in the prior-filed application causes §§ 1.78 and 1.114.
‘‘means for’’ or ‘‘step for’’ as provided in the examiner to include a new prior art Section 1.26 (refunds): Section 1.26(a)
the first prong of the three-prong rejection in a second or subsequent is amended to add the phrase ‘‘[e]xcept
procedure and the applicant wishes to Office action, the inclusion of the new as provided in § 1.117 or § 1.138(d)’’ to
have the claim element treated under 35 prior art rejection will not preclude the the sentence ‘‘[a] change of purpose
U.S.C. 112, ¶ 6, in a proceeding before Office action from being made final. after the payment of a fee, such as when
the Office, the applicant has two Therefore, the Office is revising a party desires to withdraw a patent
options: (1) Amend the claim to include second action final practice to provide filing for which the fee was paid,
the phrase ‘‘means for’’ or ‘‘step for’’; or that a second or any subsequent Office including an application, an appeal, or
(2) show that even though the phrase action on the merits may be made final, a request for an oral hearing, will not
‘‘means for’’ or ‘‘step for’’ is not used, except when the Office action contains entitle a party to a refund of such fee.’’
the claim element is written as a a new ground of rejection that is not: (1) The ‘‘change of purpose’’ provision of
function to be performed and does not Necessitated by applicant’s amendment § 1.26(a) is directed to the provision in
recite sufficient structure, material, or of the claims, including amendment of 35 U.S.C. 42(d) authorizing a refund of
acts which would preclude application a claim to eliminate unpatentable ‘‘any fee paid by mistake or any amount
of 35 U.S.C. 112, ¶ 6. See Supplemental alternatives; (2) necessitated by paid in excess of that required.’’ 35
Examination Guidelines for Determining applicant’s providing a showing that a U.S.C. 42(d). Sections 1.117 and
the Applicability of 35 U.S.C. 112, ¶ 6, claim element that does not use the 1.138(d), however, are directed to the
65 FR at 38514, 1236 Off. Gaz. Pat. phrase ‘‘means for’’ or ‘‘step for’’ is provisions in 35 U.S.C. 41(a)(2) and
Office at 101. To avoid any unnecessary written as a function to be performed (d)(1)(D) as amended by the
delay in the prosecution of the and does not otherwise preclude Consolidated Appropriations Act, 2005
application, an applicant who wishes to application of 35 U.S.C. 112, ¶ 6; (3) (Consolidated Appropriations Act) that
have a claim element treated under 35 based on information submitted in an permit the Office to develop procedures
U.S.C. 112, ¶ 6, should either use the information disclosure statement filed to refund search fees or excess claims
phrase ‘‘means for’’ or ‘‘step for’’ in the during the period set forth in 37 CFR fees under certain limited conditions.
claim element or provide the necessary 1.97(c) with the fee set forth in 37 CFR See Public Law 108–447, 118 Stat. 2809
showing before the examination of the 1.17(p); (4) based upon double patenting (2004). Section 1.26(b) is amended to
application begins so that the examiner (statutory or obviousness-type double change ‘‘except as otherwise provided
patenting); or (5) necessitated by in this paragraph or in § 1.28(a)’’ to
can properly interpret the claims in the
applicant’s identification of the claim or ‘‘except as otherwise provided in this
application and make a patentability
claims in a continuation-in-part paragraph, or in § 1.28(a), § 1.117(b), or
determination. Furthermore, because
application for which the subject matter § 1.138(d)’’. This change is for
submitting a showing is tantamount to
is disclosed in the manner provided by consistency with § 1.117(b) and
an amendment of the claim to include
35 U.S.C. 112, ¶ 1, in the prior-filed § 1.138(d), which also specify time
the phrase ‘‘means for’’ or ‘‘step for,’’ a
application. The provision in MPEP periods within which certain refunds
showing will be treated as an
§ 904.02 that a search should cover the must be requested.
amendment of the claim for second Section 1.52 (language, paper, writing,
claimed subject matter and should also
action final purposes. Thus, the margins, compact disc specifications):
cover the disclosed features which
inclusion of a new rejection in a second might reasonably be expected to be Section 1.52(d)(2) is amended to refer to
or subsequent Office action necessitated claimed does not preclude an examiner § 1.78(b) concerning the requirements
by a showing submitted by applicant from making the second or any for claiming the benefit of a provisional
will not preclude the Office from subsequent Office action on the merits application in a nonprovisional
making the second or subsequent Office final if the Office action contains a new application. Section 1.52(d)(2) is also
action final. ground of rejection that was amended to provide that if a provisional
This final rule requires applicant to necessitated solely by applicant’s application is filed in a language other
identify any claims in a continuation-in- amendment of the claims to eliminate than English and the benefit of such
part application for which the subject an unpatentable alternative. An provisional application is claimed in a
matter is disclosed in the manner examiner cannot be expected to foresee nonprovisional application, an English
provided by 35 U.S.C. 112, ¶ 1, in the whether or how an applicant will language translation of the non-English
prior-filed application. See § 1.78(d)(3) amend a claim to overcome a rejection language provisional application will be
and the discussion of § 1.78(d)(3). Any except in very limited circumstances required in the provisional application.
claim in the continuation-in-part (e.g., where the examiner suggests how This change conforms § 1.52(d)(2) to the
application for which the subject matter applicant can overcome a rejection September 2005 revision to the
is not identified as being disclosed in under 35 U.S.C. 112, ¶ 2). provisions in § 1.78 for claiming the
the manner provided by 35 U.S.C. 112, benefit of a provisional application. See

¶ 1, in the prior-filed application will be II. Discussion of Specific Rules Provisions for Claiming the Benefit of a
treated as entitled only to the actual Title 37 of the Code of Federal Provisional Application With a Non-
filing date of the continuation-in-part Regulations, part 1, is amended as English Specification and Other
application, and will be subject to prior follows: Miscellaneous Matters, 70 FR 56119,
56121, 56128 (Sept. 26, 2005), 1299 Off. claim threshold. Section 1.75(b)(4) Office action on the merits of the
Gaz. Pat. Office 142, 143–44, 150 (Oct. provides that the total number of claims application because the information
25, 2005) (final rule). With respect to present in all of the copending provided by the applicant in the
claiming the benefit of a provisional commonly owned applications that examination support document will
application that was filed in a language contain patentably indistinct claims assist the examiner in understanding the
other than English, § 1.78(b)(5) now may not exceed the five independent invention of the application,
provides that: (1) If the prior-filed claim and twenty-five total claim determining the effective filing date of
provisional application was filed in a threshold. Section 1.75(b)(5) provides each claim, interpreting the claims
language other than English and both an that claims withdrawn from before a prior art search, understanding
English-language translation of the consideration will not, unless they are the state of the art and the most closely
prior-filed provisional application and a reinstated or rejoined, be taken into related prior art cited by the applicant,
statement that the translation is accurate account in determining whether an and determining the patentability of the
were not previously filed in the prior- application exceeds the five claims. Applicant is permitted to
filed provisional application, applicant independent claim and twenty-five total present more than five independent
will be notified and given a period of claim threshold. Section 1.75(c) is claims or more than twenty-five total
time within which to file the translation amended to provide that multiple claims in a continuing application, if
and the statement in the prior-filed dependent claims and claims depending the applicant files an examination
provisional application; (2) if the notice from a multiple dependent claim will be support document in compliance with
is mailed in a pending nonprovisional considered to be that number of claims § 1.265 before the first Office action on
application, a timely reply to such a to which direct reference is made in the the merits of the continuing application,
notice must include the filing in the multiple dependent claim for claims regardless of whether an examination
nonprovisional application of either a counting purposes. support document has been filed in the
confirmation that the translation and Section 1.75(b) (introductory text) is prior-filed application.
statement were filed in the provisional amended to set forth the existing Claims withdrawn from consideration
application, or an amendment or provisions concerning dependent claims under §§ 1.141 through 1.146 or § 1.499
supplemental application data sheet in § 1.75(c), namely, that ‘‘[o]ne or more as drawn to a non-elected invention or
withdrawing the benefit claim, or the claims may be presented in dependent inventions are not taken into account in
nonprovisional application will be form, referring back to and further determining whether an application
abandoned; and (3) the translation and limiting another claim or claims in the exceeds this five independent claim and
statement may be filed in the same application.’’ Section 1.75(b)
twenty-five total claim threshold. See
provisional application, even if the (introductory text) is also amended to
§ 1.75(b)(5) and discussion of
provisional application has become clarify that a dependent claim is
§ 1.75(b)(5).
abandoned. required to incorporate by reference all
Section 1.53 (application number, the limitations of the previous claim to Section 1.75(b)(2) concerns claims in
filing date, and completion of which it refers and to specify a further dependent form that are effectively
application): Section 1.53(b) and (c)(4) limitation of the subject matter of the independent claims. Section 1.75(b)(2)
are amended to refer to § 1.78, rather previous claim. See Pfizer Inc. v. provides that a claim that refers to
than specific paragraphs of § 1.78. Ranbaxy Labs. Ltd., 437 F.3d 1284, another claim but does not incorporate
Section 1.53(b)(1) is also amended to 1292, 79 U.S.P.Q.2d 1583, 1589–90 by reference all the limitations of the
provide that continuation or divisional (Fed. Cir. 2006) (a dependent claim is claim to which such claim refers will be
applications naming an inventor not required to include all the limitations of treated as an independent claim for fee
named in the prior application must be the claim from which it depends and calculation purposes under § 1.16 (or
filed under § 1.53(b) (this provision was the failure to incorporate by reference § 1.492) and for purposes of § 1.75(b).
formerly in § 1.53(b)(2)), and to all the limitations is a violation of 35 The Office must treat such claims as
reference § 1.78(a)(2) for the definition U.S.C. 112, ¶ 4, and renders the independent claims because 35 U.S.C.
of a divisional application and dependent claim invalid). 112, ¶ 4, provides (inter alia) that a
§ 1.78(a)(3) for the definition of a Section 1.75(b)(1) provides that an dependent claim ‘‘shall be construed to
continuation application. Section applicant must file an examination incorporate by reference all the
1.53(b)(2) is amended to reference support document in compliance with limitations of the claim to which it
§ 1.78(a)(4) for the definition of a § 1.265 that covers each claim (whether refers.’’ See 35 U.S.C. 112, ¶ 4. For
continuation-in-part application. in independent or dependent form) examples of such claims, see: In re
Section 1.75 (claims): Section 1.75(b) before the issuance of a first Office Thorpe, 777 F.2d 695, 696, 227 U.S.P.Q.
is amended to provide for the revised action on the merits of the application 964, 965 (Fed. Cir. 1985) (‘‘product by
practice for the examination of claims in if the application contains or is process’’ claim 44); In re Kuehl, 475
an application. Section 1.75(b) amended to contain more than five F.2d 658, 659, 177 U.S.P.Q. 250, 251
(introductory text) provides for the independent claims or more than (C.C.P.A. 1973) (claim 6); and Ex parte
requirements of a dependent claim. twenty-five total claims. Section Rao, 1995 WL 1747720, *1 (BPAI 1998)
Section 1.75(b)(1) provides for the five 1.75(b)(1) also provides that the (claim 8). Section 1.75(b)(2) also
independent claim and twenty-five total application may not contain or be provides that a claim that refers to a
claim threshold for invoking the amended to contain more than five claim of a different statutory class of
examination support document independent claims or more than invention will be treated as an
requirement. Section 1.75(b)(2) provides twenty-five total claims if an independent claim for fee calculation
for claims in dependent form that are examination support document in purposes under § 1.16 (or § 1.492) and
effectively independent claims. Section compliance with § 1.265 has not been for purposes of § 1.75(b). For examples
1.75(b)(3) provides for situations in filed before the issuance of a first Office of such claims, see: Thorpe, 777 F.2d at
which an examination support action on the merits of an application. 696, 227 U.S.P.Q. at 965 (‘‘product by
document has not been provided in an The examination support document in process’’ claim 44); Ex parte Porter, 25
application that exceeds the five compliance with § 1.265 is required to U.S.P.Q.2d 1144, 1145 (BPAI 1992)
independent claim and twenty-five total be filed before the issuance of the first (claim 6); and Ex parte Blattner, 2
U.S.P.Q.2d 2047, 2047–48 (BPAI 1987) compliance with § 1.265 that covers application contains three independent
(claim 14). each claim (whether in independent or claims and twenty total claims, the
Section 1.75(b)(3) provides that the dependent form); or (2) amend the Office will treat each application as
applicant will be notified if the application such that it contains no having six independent claims and forty
application contains or is amended to more than five independent claims and total claims in determining whether
contain more than five independent no more than twenty-five total claims. each application exceeds the five
claims or more than twenty-five total If an examination support document independent claim and twenty-five total
claims but the applicant has not in compliance with § 1.265 as required claim threshold set forth in § 1.75(b). In
complied with the requirements set under § 1.75(b) was not filed before the this example, an examination support
forth in § 1.75(b)(1) or 1.75(b)(4) (e.g., an issuance of a first Office action on the document would be required in each
examination support document in merits of an application, an amendment application before the issuance of a first
compliance with § 1.265 has been that results in the application Office action on the merits of the
omitted). Section 1.75(b)(3) also containing more than five independent application. To avoid the provisions of
provides that if the non-compliance claims or more than twenty-five total § 1.75(b)(4), applicant may present all of
appears to have been inadvertent, the claims will be treated as non- the patentably indistinct claims in
notice will set a two-month time period responsive. Specifically, if the non- application ‘‘B’’ by canceling the
that is not extendable under § 1.136(a) compliance with § 1.75(b) appears to patentably indistinct claim from
within which, to avoid abandonment of have been inadvertent, the Office would application ‘‘A’’. As discussed
the application, the applicant must give the applicant a two-month time previously, § 1.75(b)(4) is to preclude an
comply with the requirements set forth period that is not extendable under applicant from submitting multiple
in § 1.75(b). Again, claims withdrawn § 1.136(a) within which to provide an applications to the same subject matter
from consideration under §§ 1.141 amendment that does not result in the (with claims that are patentably
through 1.146 or § 1.499 as drawn to a application containing more than five indistinct), each with five or fewer
non-elected invention or inventions are independent claims or more than independent claims or twenty-five or
not taken into account in determining twenty-five total claims. See § 1.135(c) fewer total claims, for the purpose of
whether an application exceeds this five (‘‘[w]hen reply by the applicant is a avoiding the requirement to submit an
independent claim and twenty-five total bona fide attempt to advance the examination support document in
claim threshold. See § 1.75(b)(5) and application to final action, and is compliance with § 1.265.
discussion of § 1.75(b)(5). substantially a complete reply to the
If a notice under § 1.75(b)(3) is mailed non-final Office action, but Under § 1.75(b)(4), the Office will
before the first Office action on the consideration of some matter or count the claims in the copending
merits of an application and it appears compliance with some requirement has nonprovisional applications containing
that the omission of an examination been inadvertently omitted, applicant patentably indistinct claims (including
support document was inadvertent, the may be given a new time period for applications having a continuity
notice will set a two-month time period reply under § 1.134 to supply the relationship) but not in issued patents
within which the applicant must: (1) omission.’’). containing patentably indistinct claims,
File an examination support document Section 1.75(b)(4) provides for the in determining whether each such
in compliance with § 1.265 that covers situation in which: (1) A nonprovisional application exceeds the five
each claim (whether in independent or application contains at least one claim independent claim or twenty-five total
dependent form); or (2) amend the that is patentably indistinct from at least claim threshold for invoking the
application such that it contains no one claim in one or more other pending examination support document
more than five independent claims and nonprovisional applications; and (2) the requirement. An applicant may present
no more than twenty-five total claims. nonprovisional application and the one up to five independent claims and
Section 1.75(b)(3) provides that this or more other pending nonprovisional twenty-five total claims in an initial
two-month time period is not applications either are owned by the application and each continuing
extendable under § 1.136(a) and that the same person or are subject to an application, provided that continuing
failure to reply to such a notice will obligation of assignment to the same applications that contain patentably
result in abandonment of the person. In this situation, § 1.75(b)(4) indistinct claims are not prosecuted in
application. Due to the increase in provides that the Office will treat the parallel with the initial application or
patent pendency that would result from claims in the first nonprovisional each other. Thus, an applicant may
the routine granting of extensions in the application and in each of such other present up to fifteen independent claims
situation in which an application pending nonprovisional applications as and seventy-five total claims to a single
contains or is amended to contain more being present in each of the pending invention via an initial application and
than five independent claims or more nonprovisional applications for two continuing applications that are
than twenty-five total claims but the purposes of § 1.75(b). That is, if the filed and prosecuted serially without
applicant has not complied with the conditions specified in § 1.75(b)(4) are providing either an examination support
requirements set forth in § 1.75(b)(1) or present, the Office will treat each such document or a justification. In addition,
1.75(b)(4) (e.g., an examination support nonprovisional application as having an applicant may prosecute a divisional
document in compliance with § 1.265 the total number of claims present in all application (an application containing
has been omitted), the Office is limiting of such applications (and not just the claims that are patentably distinct from
extensions of this two-month time claim that is patentably indistinct) for the claims to the invention prosecuted
period in § 1.75(b)(3) to those for which purposes of determining whether an in the initial application) in parallel
there is sufficient cause (§ 1.136(b)). examination support document is with the initial application or its
Once the Office issues a notice under required by § 1.75(b). For example: If continuation or continuation-in-part
§ 1.75(b)(3), the applicant may not application ‘‘A’’ contains only one claim applications without the claims in the
simply submit a suggested alternative that is patentably indistinct from the divisional application being taken into
requirement for restriction under claims in application ‘‘B’’, application account in determining whether the
§ 1.142(c), but instead must: (1) File an ‘‘A’’ and application ‘‘B’’ are owned by initial application or its continuation or
examination support document in the same company, and each continuation-in-part applications
exceed the five independent claim or absence of good and sufficient reason invention (as required by § 1.142(c)), the
twenty-five total claim threshold for for there being two or more such Office will simply treat the non-elected
invoking the examination support nonprovisional applications containing claims as withdrawn from consideration
document requirement. patentably indistinct claims. and proceed to act on the application
Section 1.75(b)(4) also provides that Section 1.75(b)(5) provides that (assuming the application is otherwise
the total number of claims present in all claims withdrawn from consideration in condition for action). The Office
of such copending nonprovisional under §§ 1.141 through 1.146 or § 1.499 action will set out the requirement for
applications containing patentably as drawn to a non-elected invention or restriction under § 1.141(a), e.g., in the
indistinct claims may not exceed five inventions will not, unless they are manner that an Office action on the
independent claims or twenty-five total reinstated or rejoined, be taken into merits would contain a written record of
claims unless an examination support account in determining whether an a requirement for restriction previously
document in compliance with § 1.265 is application exceeds the five made by telephone. See MPEP section
filed before the issuance of a first Office independent claim and twenty-five total 810. Applicants are reminded, however,
action on the merits of the application claim threshold set forth in that the Office may refund excess claims
containing patentably indistinct claims. §§ 1.75(b)(1), (b)(3), and (b)(4). Thus, fees only for claims that are canceled
The provisions of § 1.75(b)(4) do not claims withdrawn from consideration as prior to the issuance of a first Office
depend upon the relative filing dates of the result of an Office-initiated action on the merits of the application.
the nonprovisional application and the requirement under § 1.142, 1.146, or See 35 U.S.C. 41(a)(2) (‘‘[t]he Director
one or more other nonprovisional 1.499 (regardless of whether the election may, by regulation, provide for a refund
applications. The provisions of is with or without traverse), or as the of any part of the fee specified in [35
§ 1.75(b)(4) apply regardless of whether result of the acceptance of a suggested U.S.C. 41(a)(2)] for any claim that is
the filing dates of the applications are restriction requirement under § 1.142(c), canceled before an examination on the
the same, are within two months of each are not taken into account in merits, as prescribed by the Director,
other (cf. § 1.78(f)(1) and (f)(2)), or are determining whether an application has been made of the application under
not within two months of each other. In exceeds the five independent claim and [35 U.S.C.] 131’’).
other words, the provision of twenty-five total claim threshold. In If the applicant files a suggested
§ 1.75(b)(4) does not depend on the addition, claims withdrawn from requirement for restriction in an
filing dates of the respective consideration in an application (e.g., the application containing more than five
applications. In addition, the provisions initial application) as the result of either independent claims or more than
of § 1.75(b)(4) are applicable regardless an Office-initiated requirement under twenty-five total claims, the applicant
of any continuity relationship between § 1.142, 1.146, or 1.499, or the will also be notified if the suggested
the applications (e.g., the provision acceptance of a suggested restriction restriction requirement is not accepted.
applies if a parent application is still requirement under § 1.142(c), are not The refusal to accept a suggested
pending at the time the child taken into account in determining requirement for restriction may result in
application is under examination). For whether a copending application (e.g., a the examiner making a different
applications having a continuity continuation application of the initial restriction requirement or making no
relationship, the prior application must application) contains a claim that is restriction requirement.
be pending at the time the continuing patentably indistinct from a claim in If the examiner makes a restriction
application is filed. See 35 U.S.C. 120 such application for purposes of requirement (which includes an election
(requires that a continuing application § 1.75(b)(4). of species requirement) different from
be filed before the patenting or Section 1.142(c) as adopted in this the suggested restriction requirement,
abandonment of or termination of final rule provides that the applicant the applicant will be notified of the
proceedings on the prior application). may submit a suggested requirement for restriction requirement. The applicant
The Office, however, will treat the restriction if two or more independent will be given a two-month time period
application as no longer pending for and distinct inventions are claimed in that is not extendable under § 1.136(a)
purposes of § 1.75(b)(4) if: (1) A notice the application. Section 1.142(c) further within which the applicant must make
of allowance is issued, unless the provides that any suggested requirement an election consistent with the Office-
application is withdrawn from issue for restriction must be filed before the issued restriction requirement in order
(§ 1.313); (2) the Office recognizes the earlier of the first Office action on the to avoid abandonment of the
application is abandoned; (3) a notice of merits or any Office action that contains application. Once the Office issues a
appeal to the U.S. Court of Appeals for a requirement to comply with the requirement for restriction, the
the Federal Circuit under 35 U.S.C. 141 requirement of unity of invention under applicant may not simply submit a
is filed, unless the appeal is terminated; PCT Rule 13 or a requirement for suggested alternative requirement for
or (4) a civil action under 35 U.S.C. 145 restriction (including an election of restriction under § 1.142(c). Instead, the
or 146 is commenced, unless the civil species) under 35 U.S.C. 121 in the applicant must make an election (with
action is terminated. application. Section 1.142(c) provides or without traverse) responsive to the
Section 1.75(b)(4) as adopted in this that any suggested requirement for Office-issued requirement for
final rule differs from proposed restriction must also be accompanied by restriction. If an application subject to
§ 1.75(b)(4) in that it does not provide an election without traverse of an an Office-issued requirement for
that the Office may require elimination invention to which there are no more restriction contains more than five
of the patentably indistinct claims from than five independent claims and no independent claims or more than
all but one of the applications. Such a more than twenty-five total claims, and twenty-five total claims, the reply must
provision would be a substantial identify the claims to the elected also either: (1) Amend the application to
duplicate of § 1.78(f)(3) as adopted in invention. If the applicant submits a contain no more than five independent
this final rule, which provides that if the suggested restriction requirement, the claims and no more than twenty-five
conditions set forth in § 1.75(b)(4) exist, suggested restriction requirement is total claims to the elected invention
the Office may require elimination of accepted, and there are five or fewer and/or species; or (2) include an
the patentably indistinct claims from all independent claims and twenty-five or examination support document in
but one of the applications in the fewer total claims to the elected compliance with § 1.265 that covers
each claim (whether in independent or election of species in an application that it is patentably indistinct from the
dependent form) pending in the contains a claim that is generic to all of claims of the non-elected species).
application. the claimed species (hereafter ‘‘generic When an application contains a
If the examiner does not make a claim’’) (see MPEP section 809), or a generic claim and the examiner makes
restriction requirement, the applicant requirement for restriction in an a provisional restriction requirement,
will simply be given a notice under application that contains a linking claim requiring an election of species for
§ 1.75(b)(3). That notice will set a two- (e.g., a subcombination claim linking initial search and examination
month time period that is not plural combinations); or (3) the purposes, the applicant must elect a
extendable under § 1.136(a) within applicant plans to request rejoinder of single species. (The requirement is
which, to avoid abandonment of the the claims to the non-elected invention provisional because the restriction will
application, the applicant must: (1) (see MPEP § 821.04 et seq.). Thus, be withdrawn upon allowance of the
Amend the application to contain no applicants are advised to file an generic claim.) The examiner will
more than five independent claims and examination support document in the determine the patentability of the
no more than twenty-five total claims; application before the first Office action elected species and generic claim. Upon
or (2) file an examination support on the merits if they anticipate the the allowance of the generic claim, the
document in compliance with § 1.265 occurrence of any of the aforementioned provisional restriction requirement will
that covers each claim (whether in three situations. Furthermore, be withdrawn, as explained above. The
independent or dependent form) applicants cannot rely upon the claims of the non-elected species then
pending in the application. See requirement for restriction to file a will be rejoined. The Office will count
§ 1.75(b)(3). divisional application because the the rejoined claims together with the
Section 1.75(b)(5) also provides that Office will withdraw the requirement other pending claims to determine
claims reinstated (e.g., as a result of a for restriction, including an election of whether the application exceeds the five
request for reconsideration of the species, if the non-elected claims are independent claim and twenty-five total
requirement) or rejoined (e.g., upon reinstated or rejoined. claim threshold set forth § 1.75(b)(1).
allowance of a generic claim) in the See § 1.75(b)(5). If the application
Applicant is not permitted to file a
application are taken into account in contains more than five independent
divisional application of a prior-filed
determining whether an application claims and twenty-five total claims
application that is no longer subject to
exceeds the five independent claim and (counting the rejoined claims) and the
a restriction requirement. Under
twenty-five total claim threshold. As applicant did not file an examination
§ 1.78(a)(2) and 1.78(d)(1)(ii), the prior-
discussed previously, unless an support document in compliance with
filed application to which a divisional
examination support document in § 1.265 before the issuance of a first
application claims the benefit must be
compliance with § 1.265 was filed Office action on the merits in the
before the issuance of a first Office subject to a requirement to comply with
application, then the applicant must
action on the merits of an application, the requirement of unity of invention
amend the application to contain no
the application must remain at or under under PCT Rule 13 or a requirement for
more than five independent claims and
the five independent claim and twenty- restriction under 35 U.S.C. 121. Sections
no more than twenty-five total claims.
five total claim threshold. Therefore, if 1.78(a)(2) and 1.78(d)(1)(ii) also require
See § 1.75(b)(1). Therefore, applicants
an examination support document was a divisional application to contain only
cannot rely upon a provisional
not filed before the issuance of a first claims directed to a non-elected requirement for restriction to avoid
Office action on the merits of the invention that has not been examined. submitting an examination support
application, and the reinstatement or For an application that contains a document before the issuance of the first
rejoinder of non-elected claims results generic claim in which a requirement Office action on the merits in the
in the application containing more than for an election of species has been application.
five independent claims or more than made, applicants should conclude Furthermore, upon the allowance of a
twenty-five total claims, the Office will prosecution (in the initial application claim that is generic to all of the
give the applicant a two-month time and its continuation or continuation-in- claimed species (either in the initial
period within which to amend the part applications), including exhaustion application or any continuing
application to contain five or fewer of any available appeals, as to the application), the application is no
independent claims and twenty-five or generic claim before ever filing a longer subject to a requirement to
fewer total claims. See § 1.75(b)(3). This divisional application to a non-elected comply with the requirement of unity of
two-month time period is not species. If applicant no longer wants to invention under PCT Rule 13 or a
extendable under § 1.136(a). The failure pursue the generic claim, applicant may requirement for restriction under 35
to file such an amendment will result in file a divisional application directed to U.S.C. 121. In such a situation, if
abandonment of the application. a non-elected species. If an applicant applicant had filed a ‘‘divisional’’
Since claims reinstated or rejoined in files a divisional application directed to application to the non-elected species
the application are taken into account in a non-elected species, applicant should: following the provisional restriction in
determining whether an application (1) Cancel the claims to the non-elected the prior-filed application, that
exceeds the five independent claim and species and the generic claim in the ‘‘divisional’’ application would no
twenty-five total claim threshold, prior-filed application before rejoinder longer be proper under §§ 1.78(a)(2) and
applicants cannot rely upon a or reinstatement occurs; (2) not present 1.78(d)(1)(ii). This is because the
requirement for restriction to avoid the non-elected claims and the generic ‘‘divisional’’ application would not
submitting an examination support claim in any continuation or meet the conditions set forth in
document before the issuance of a first continuation-in-part application of the §§ 1.78(a)(2) and 1.78(d)(1)(ii). If
Office action on the merits of an initial application; and (3) not present applicant wishes to maintain the
application. This is especially true the generic claim in the divisional application, then applicant must delete
where: (1) The applicant traverses the application or any other continuation or correct the benefit claim to indicate
requirement for restriction; (2) the application of the divisional application that the application is a continuation
requirement for restriction may be (because the generic claim has been application, provided the requirements
conditional, such as a requirement for examined in the initial application and set forth in § 1.78(d)(1)(i) can be
satisfied. In such case, the Office will Process Act of 1995 (Pub. L. 104–41, 109 The Office, however, may combine such
treat the application as one of the two Stat. 351 (1995)). See Guidance on a notice with a requirement for
continuation applications of the prior- Treatment of Product and Process restriction, in which case the applicant
filed application permitted under Claims in light of In re Ochiai, In re must make an election responsive to the
§ 1.78(d)(1)(i). But, if the prior-filed Brouwer, and 35 U.S.C. 103(b), 1184 Off. restriction requirement and, if there are
application already has its benefit Gaz. Pat. Office 86 (Mar. 26, 1996). more than five independent claims or
claimed in two other nonprovisional Applicants may retain claims to a non- more than twenty-five total claims
applications, applicant must delete the elected invention in an application for drawn to the elected invention, the
benefit claim in the application. See possible rejoinder in the event of the applicant must also: (1) File an
§ 1.78(d)(1)(i). Therefore, applicant is allowance of a claim to the elected examination support document in
cautioned not file a divisional invention. However, as discussed compliance with § 1.265; or (2) amend
application drawn to a non-elected previously, the Office will count the application such that it contains five
species if a generic claim is pending in rejoined claims towards the five or fewer independent claims and
the initial application or any continuing independent claim and twenty-five total twenty-five or fewer total claims drawn
application of the initial application and claim threshold in § 1.75(b)(1). See to the elected invention. Thus, if such
could be found allowable. § 1.75(b)(5). If applicant cancels all of a notice is combined with a requirement
When an application subject to an the claims directed to a non-elected for restriction, the applicant does not
election of species is allowed with no invention before rejoinder occurs and have the option of replying to such
claim that is generic to all of the files a divisional application, the notice with a suggested restriction
claimed species being found to have restriction requirement will not be requirement under § 1.142(c).
been allowable, the applicant will be withdrawn and the non-elected process With respect to the application of the
notified that the Office considers the claims that are now canceled will not be changes to § 1.75 in this final rule to a
requirement that the application be rejoined. This will preserve applicant’s reissue application, an examination
restricted to a single species to be final. rights under 35 U.S.C. 121 and support document under § 1.265 will
At that point, the applicant may cancel § 1.78(d)(1)(ii). See MPEP § 821.04(b). not be required pursuant to § 1.75(b) in
the claims to the non-elected species Section 1.75(c) is amended to provide a reissue application if the reissue
and the generic claim in the prior-filed for multiple dependent claims only. application does not seek to change the
application and file a divisional Dependent claims are now provided for claims in the patent being reissued. A
application in accordance with in § 1.75(b). Section 1.75(c) further change in the claims in the patent being
§ 1.78(d)(1)(ii) to the non-elected provides that multiple dependent reissued is sought either by an
species. However, if the applicant later claims and claims that depend from a amendment to or addition of a claim or
files a continuing application of the multiple dependent claim will be claims, or by an amendment to the
initial application or the divisional considered to be that number of claims specification which changes a claim or
application presenting one or more to which direct reference is made in the claims.
generic claims in such later application, multiple dependent claim for purposes Section 1.76 (application data sheet):
the Office will consider the requirement of § 1.75(b) (as well as § 1.16 or 1.492). Section 1.76(b)(5) is amended to refer to
that the initial application be restricted The changes to § 1.75 are applicable §§ 1.78(b)(3) and (d)(3) for consistency
to a single species to no longer be final. to any application (including any with the changes to § 1.78. Section
Should that occur, the ‘‘divisional’’ reissue application) filed under 35 1.76(b)(5) is also amended to clarify that
application directed to the non-elected U.S.C. 111(a) on or after November 1, the relationship of the applications is
species would not be proper under 2007, and to any nonprovisional not required for a benefit claim under 35
§§ 1.78(a)(2) and 1.78(d)(1)(ii) for the application entering the national stage U.S.C. 119(e) and to delete ‘‘the status
reasons explained above. Thus, after compliance with 35 U.S.C. 371 on (including patent number if available)’’.
applicants should conclude or after November 1, 2007, as well as to Such information is not necessary for
prosecution, including exhaustion of any application (including any reissue claiming the benefit of a prior-filed
any available appeals, as to the generic application) in which a first Office application under 35 U.S.C. 119(e), 120,
claim before ever filing a divisional action on the merits (§ 1.104) was not 121, or 365(c).
application to a non-elected species. In mailed before November 1, 2007. The Section 1.78 (claiming benefit of
other words, applicants cannot rely Office will provide an applicant who earlier filing date and cross-references
upon a requirement that an application filed a nonprovisional application under to other applications): Section 1.78 is
containing a generic claim will be 35 U.S.C. 111(a) before November 1, reorganized as follows: (1) § 1.78(a)
restricted to a single species to permit 2007, or a nonprovisional application defines ‘‘continuing application’’,
filing one or more divisional that entered the national stage after ‘‘continuation application’’, ‘‘divisional
applications until the applicant has compliance with 35 U.S.C. 371 before application’’, and ‘‘continuation-in-part
concluded prosecution with respect to November 1, 2007, and who would be application’’; (2) § 1.78(b) contains
any generic claims. affected by the changes in the final rule, provisions relating to claims under 35
Under the Office’s rejoinder practice, with an opportunity to submit: (1) An U.S.C. 119(e) for the benefit of a prior-
an applicant may request rejoinder of examination support document under filed provisional application; (3)
claims to a non-elected invention that § 1.265; (2) a new set of claims such that § 1.78(c) contains provisions relating to
depend from or otherwise require all the the application contains five or fewer delayed claims under 35 U.S.C. 119(e)
limitations of an allowable claim. See independent claims and twenty-five or for the benefit of a prior-filed
MPEP § 821.04 et seq. This ‘‘rejoinder’’ fewer total claims; or (3) a suggested provisional application; (4) § 1.78(d)
practice was developed in light of the restriction requirement under § 1.142(c). contains provisions relating to claims
Federal Circuit’s decisions in In re Specifically, the Office will issue a under 35 U.S.C. 120, 121, or 365(c) for
Ochiai, 71 F.3d 1565, 37 U.S.P.Q.2d notice setting a two-month time period the benefit of a prior-filed
1127 (Fed. Cir. 1995), and In re Brouwer, that is extendable under § 1.136(a) or (b) nonprovisional or international
77 F.3d 422, 37 U.S.P.Q.2d 1663 (Fed. within which the applicant must application; (5) § 1.78(e) contains
Cir. 1996), and the enactment of 35 exercise one of these options in order to provisions relating to delayed claims
U.S.C. 103(b) in The Biotechnology avoid abandonment of the application. under 35 U.S.C. 120, 121, or 365(c) for
the benefit of a prior-filed MPEP § 201.06 defines a divisional benefit of the filing date of the
nonprovisional or international application as an application for an provisional application. See New
application; (6) § 1.78(f) contains independent and distinct invention, Railhead Mfg., L.L.C. v. Vermeer Mfg.
provisions relating to applications which discloses and claims only subject Co., 298 F.3d 1290, 1294, 63 U.S.P.Q.2d
naming at least one inventor in common matter that was disclosed in the prior- 1843, 1846 (Fed. Cir. 2002) (for a
and containing patentably indistinct filed nonprovisional application. nonprovisional application to actually
claims; (7) § 1.78(g) contains provisions Section 1.78(a)(2), however, limits the receive the benefit of the filing date of
relating to applications or patents under definition of ‘‘divisional application’’ to the provisional application, ‘‘the
reexamination naming different an application that claims only an specification of the provisional
inventors and containing patentably invention or inventions that were [application] must ‘contain a written
indistinct claims; (8) § 1.78(h) contains subject to a requirement to comply with description of the invention and the
provisions pertaining to the treatment of the requirement of unity of invention manner and process of making and
parties to a joint research agreement under PCT Rule 13 or a requirement for using it, in such full, clear, concise, and
under the CREATE Act; and § 1.78(i) restriction under 35 U.S.C. 121 in the exact terms,’ 35 U.S.C. 112 ¶ 1, to enable
provides that the time periods set forth prior-filed application and not elected an ordinarily skilled artisan to practice
in § 1.78 are not extendable. for examination and not examined in the invention claimed in the
Section 1.78(a)(1) defines a any prior-filed application. See 35 nonprovisional application’’). Section
‘‘continuing application’’ as a U.S.C. 121 (‘‘[i]f two or more 1.78(b), however, does not also state (as
nonprovisional application or independent and distinct inventions are did former § 1.78(a)(4)) that the
international application designating claimed in one application, the Director provisional application must disclose
the United States of America that claims may require the application to be the invention claimed in at least one
the benefit under 35 U.S.C. 120, 121, or restricted to one of the inventions [and claim of the later-filed application in the
365(c) of a prior-filed nonprovisional i]f the other invention is made the manner provided by 35 U.S.C. 112, ¶ 1,
application or international application subject of a divisional application because it is not necessary for the rules
designating the United States of which complies with the requirements of practice to restate provisions of a
America. Section 1.78(a)(1) provides of [35 U.S.C.] 120 * * *.’’). The Office statute.
that an application that does not claim will revise the definition of divisional Section 1.78(b)(1) provides that the
the benefit under 35 U.S.C. 120, 121, or application in MPEP § 201.06 in the nonprovisional application or
365(c) of a prior-filed application, is not next revision of the MPEP. An international application designating
a continuing application even if the application that claims the benefit of a the United States of America must be
application claims the benefit under 35 prior-filed divisional application as filed not later than twelve months after
U.S.C. 119(e) of a provisional defined in § 1.78(a)(2), and claims the the date on which the provisional
application, claims priority under 35 same patentable invention as the prior- application was filed, and that this
U.S.C. 119(a)–(d) or 365(b) to a foreign filed divisional application, would not twelve-month period is subject to 35
application, or claims priority under 35 be a divisional application as defined by U.S.C. 21(b) and § 1.7(a). 35 U.S.C. 21(b)
U.S.C. 365(a) or (b) to an international § 1.78(a)(2). Instead, such an application and § 1.7(a) provide that when the day,
application designating at least one would be a continuation application. or the last day, for taking any action
country other than the United States of Section 1.78(a)(3) defines a (e.g., filing a nonprovisional application
America. A continuing application must ‘‘continuation application’’ as a within twelve months of the date on
be a continuation application, a continuing application as defined in which the provisional application was
divisional application, or a § 1.78(a)(1) that discloses and claims filed) or paying any fee in the Office
continuation-in-part application. See only an invention or inventions that falls on Saturday, Sunday, or a Federal
MPEP § 201.11 (‘‘To specify the were disclosed in the prior-filed holiday within the District of Columbia,
relationship between the applications, application. See MPEP § 201.07 (defines the action may be taken, or fee paid, on
applicant must specify whether the a continuation application as an the next succeeding secular or business
application is a continuation, divisional, application that discloses (or discloses day. Section 1.78(b) otherwise contains
or continuation-in-part of the prior and claims) only subject matter that was the provisions of former § 1.78(a)(4) and
application. Note that the terms are disclosed in the prior-filed (a)(5).
exclusive. An application cannot be, for nonprovisional application). Sections 1.78(b)(2) through (b)(5)
example, both a continuation and a Section 1.78(a)(4) defines a contain the provisions of former
divisional or a continuation and a ‘‘continuation-in-part application’’ as a 1.78(a)(4) and (a)(5). Section 1.78(c)
continuation-in-part of the same continuing application as defined in contains provisions relating to delayed
application.’’). § 1.78(a)(1) that discloses subject matter claims under 35 U.S.C. 119(e) for benefit
Section 1.78(a)(2) defines a that was not disclosed in the prior-filed of prior-filed provisional applications.
‘‘divisional application’’ as a continuing application. See MPEP § 201.08 (a Section 1.78(c) contains the provisions
application that discloses and claims continuation-in-part repeats some of former § 1.78(a)(6).
only an invention or inventions that substantial portion or all of the earlier Section 1.78(d) contains provisions
were disclosed and claimed in a prior- nonprovisional application and adds relating to claims under 35 U.S.C. 120,
filed application, but were subject to a matter not disclosed in the prior-filed 121, or 365(c) for the benefit of a prior-
requirement to comply with the nonprovisional application). filed nonprovisional or international
requirement of unity of invention under Section 1.78(b) addresses claims application.
PCT Rule 13 or a requirement for under 35 U.S.C. 119(e) for the benefit of Section 1.78(d)(1) provides conditions
restriction under 35 U.S.C. 121 in the a prior-filed provisional application. under which an application may claim
prior-filed application, and were not Under 35 U.S.C. 119(e)(1), a provisional the benefit under 35 U.S.C. 120, 121, or
elected for examination and were not application must disclose the invention 365(c) and § 1.78 of a prior-filed
examined in any prior-filed application. claimed in at least one claim of the nonprovisional application or
This definition is more precise than the later-filed application in the manner international application designating
definition of ‘‘divisional application’’ provided by 35 U.S.C. 112, ¶ 1, for the the United States of America. Section
currently found in MPEP § 201.06. later-filed application to receive the 1.78(d)(1) also provides that the Office
will refuse to enter, or will delete if choosing to file applications (whether Abbott Labs. v. Novopharm Ltd., 104
present, any specific reference to a continuing or non-continuing) in F.3d 1305, 1309, 41 U.S.P.Q.2d 1535,
prior-filed application that is not parallel are reminded that § 1.75(b)(4) 1537 (Fed. Cir. 1997) (rejecting
permitted by § 1.78(d)(1). If the claim for provides that, if certain conditions are patentee’s argument that it should not
the benefit of a prior-filed met, the Office will treat each such be bound by the filing date of the prior-
nonprovisional application or application as having the total number filed application because the later-filed
international application designating of claims present in all of such application never received any actual
the United States of America is not applications for purposes of benefit from the prior-filed application).
permitted by § 1.78(d)(1), the Office will determining whether an examination Thus, the Office will not require that
refuse benefit. Section 1.78(d) also support document is required by such ‘‘additional’’ continuation or
provides that the entry of or failure to § 1.75(b). See also § 1.78(f) concerning continuation-in-part applications
delete a specific reference to a prior- additional provisions that are applicable contain a showing that all of the claims
filed application that is not permitted by if there are multiple applications that are directed solely to subject matter
§ 1.78(d)(1) does not constitute a waiver have the same claimed filing or priority added in the first continuation-in-part
of the provisions of § 1.78(d)(1). The date, substantial overlapping disclosure, application. Rather, § 1.78(d)(1)(i)
grant of a petition under § 1.78(d)(1)(vi) a common inventor, and common permits the ‘‘additional’’ continuation
or waiver of a requirement of assignee. or continuation-in-part application to
§ 1.78(d)(1) would be only by an explicit If an application is identified as a claim the benefit of the first
decision by an official who has been continuation-in-part application, continuation-in-part application, but
delegated the authority to decide such a however, § 1.78(d)(3) provides that the does not permit the ‘‘additional’’
petition or waiver. It would not occur by applicant must identify the claim or continuation or continuation-in-part
implication due to the entry of or failure claims in the continuation-in-part application to also claim the benefit of
to delete a specific reference to a prior- application for which the subject matter the prior-filed initial application (the
filed application that is not permitted by is disclosed in the manner provided by prior-filed application relative to the
§ 1.78(d)(1). 35 U.S.C. 112, ¶ 1, in the prior-filed first continuation-in-part application).
These provisions of § 1.78(d)(1) were application. See discussion of For example, consider an applicant who
included in the proposed changes to § 1.78(d)(3). Any claims in the files: (1) An initial application ‘‘A’’; (2)
§ 1.78(d)(3). See Changes to Practice for continuation-in-part application that are a first continuation-in-part application
Continuing Applications, Requests for not identified under § 1.78(d)(3) as ‘‘B’’ that claims the benefit of
Continued Examination Practice, and supported by the prior-filed application application ‘‘A’’; (3) a second
Applications Containing Patentably will be subject to prior art based on the continuation (or continuation-in-part)
Indistinct Claims, 71 FR at 54, 60, 1302 actual filing date of the continuation-in- application ‘‘C’’ that claims the benefit
Off. Gaz. Pat. Office at 1323, 1328. part application. of applications ‘‘B’’ and ‘‘A’’; and (4) an
Section 1.78(d)(1)(i) provides for For a continuation-in-part application
additional continuation (or
continuation applications or that contains one or more claims for
continuation-in-part) application ‘‘D’’
continuation-in-part applications that which the subject matter is not
that claims the benefit of applications
do not claim the benefit of a divisional disclosed in the manner provided by 35
‘‘C’’ and ‘‘B’’. Under § 1.78(d)(1)(i),
application (either directly or U.S.C. 112, ¶ 1, in the prior-filed
application ‘‘D’’ may claim the benefit
indirectly). Section 1.78(d)(1)(i) permits application, § 1.78(d)(1)(i) will permit
of application ‘‘C’’ and continuation-in-
such a continuation application or an applicant to continue prosecution of
part application ‘‘B’’, but may not claim
continuation-in-part application of a the claims that are directed solely to
any benefit of application ‘‘A’’ (except
prior-filed nonprovisional application subject matter added in such
or international application designating continuation-in-part application via two as permitted under § 1.78(d)(1)(vi)).
the United States of America if: (1) The continuation applications (or a Applicants are permitted to file two
application is a continuation continuation application and a continuation or continuation-in-part
application as defined in § 1.78(a)(3) or continuation-in-part application, or two applications (§ 1.78(d)(1)) and one
a continuation-in-part application as continuation-in-part applications). request for continued examination
defined in § 1.78(a)(4) that claims the However, the ‘‘additional’’ continuation (§ 1.114) without any justification. The
benefit under 35 U.S.C. 120, 121, or or continuation-in-part applications provisions of § 1.78(d)(1) are
365(c) of no more than two prior-filed cannot claim the benefit of the prior- independent of the provisions of
applications; and (2) any application filed application relative to the first § 1.114. Therefore, the filing of a request
whose benefit is claimed under 35 continuation-in-part application. The for continued examination does not
U.S.C. 120, 121, or 365(c) in such subject matter of at least one claim of a preclude an applicant from filing two
nonprovisional application has its later-filed application must be disclosed continuation or continuation-in-part
benefit claimed in no more than one in the prior-filed application in the applications. In addition, an applicant
other nonprovisional application. This manner provided by 35 U.S.C. 112, ¶ 1, may not agree to forgo a continuation
does not include any nonprovisional for the later-filed application to actually application (or continuation-in-part
application that satisfies the conditions receive the benefit of the filing date of application) to obtain a second or third
set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or the prior-filed application under 35 request for continued examination, nor
(d)(1)(vi). U.S.C. 120. See Studiengesellschaft can an applicant agree to forgo a request
Section 1.78(d)(1)(i) permits an Kohle m.b.H. v. Shell Oil Co., 112 F.3d for continued examination in exchange
applicant to continue prosecution of an 1561, 1564–65, 42 U.S.P.Q.2d 1674, for a third continuation or continuation-
application via two continuation 1677–78 (Fed. Cir. 1997). In addition, in-part application. For example, an
applications (in parallel or serially), a the term of any resulting patent will be applicant cannot file a second request
continuation application and a measured under 35 U.S.C. 154(a)(2) for continued examination without any
continuation-in-part application (in from the filing date of the prior-filed justification instead of filing one of the
parallel or serially), or two application, even if the later-filed two permitted continuation
continuation-in-part applications (in application never receives any benefit applications; and an applicant cannot
parallel or serially). Applicants from the prior-filed application. See file three continuation applications
instead of filing a request for continued § 1.114 or a continued prosecution the United States of America under the
examination. Of course, applicant may application under § 1.53(d)). Thus, the following conditions. First, the
seek by petition a third or subsequent applicant must file a continuation divisional application must be a
continuation or continuation-in-part application that meets the conditions set divisional application as defined in
application or a second or subsequent forth in 35 U.S.C. 111(a) and § 1.53(b) to § 1.78(a)(2) that claims the benefit under
request for continued examination. be accorded a filing date. The 35 U.S.C. 120, 121, or 365(c) of a prior-
The Office, however, is implementing continuation application must also be filed application that was subject to a
an optional streamlined continuation complete under § 1.51(b) or completed requirement to comply with the
application procedure under which an under § 1.53(f). The Office will not requirement of unity of invention under
applicant may request to have a docket an application for examination PCT Rule 13 or a requirement for
continuation application filed on or until the application is complete restriction under 35 U.S.C. 121. Second,
after November 1, 2007, placed on an (§§ 1.51(b) and 1.53(f)) and in condition the divisional application must contain
examiner’s amended (Regular for publication (§ 1.211). See § 1.53(h). only claims directed to an invention or
Amended) docket. The examiner will Thus, any delay in submitting the filing inventions that were identified in the
normally pick up for action a fee and oath or declaration (or copy of requirement to comply with the
continuation application that has been the oath or declaration from the prior- requirement of unity of invention or
placed on the examiner’s amended filed application under § 1.63(d)) will requirement for restriction but were not
(Regular Amended) docket faster (e.g., delay the docketing of a continuation elected for examination and were not
within a few months from the date the application even if the applicant has examined in the prior-filed application
application is docketed) than an requested that the continuation or in any other nonprovisional
application placed on the examiner’s application be given streamlined application. The ‘‘not elected for
new continuing application (New docketing. examination and were not examined in
Special) docket. The following This optional streamlined any other nonprovisional application’’
conditions must be met for the continuation application procedure requirement does not apply to any
continuation application to be placed on concerns only the placement of the continuation application that claims the
an examiner’s amended (Regular continuation application on an benefit under 35 U.S.C. 120, 121, or
Amended) docket rather than on the examiner’s amended (Regular 365(c) of the divisional application and
new continuing application (New Amended) docket. The continuation satisfies the conditions set forth in
Special) docket: (1) The application application is otherwise treated as a § 1.78(d)(1)(iii) or (d)(1)(vi).
must disclose and claim only an new application for patent. For Section 1.78(d)(1)(ii)(A) permits an
invention or inventions that were example, (1) the application filing fees applicant to obtain examination of
disclosed and claimed in the prior-filed including the basic filing fee, search and claims that were withdrawn from
application; (2) the applicant must agree examination fees, and any required consideration in the prior-filed
that any election in response to a excess claims fees (and not the request application due to a requirement to
requirement to comply with the for continued examination fee set forth comply with the requirement of unity of
requirement of unity of invention under in § 1.17(e)) are required; (2) the invention under PCT Rule 13 or a
PCT Rule 13 or a requirement for continuation application will be requirement for restriction under 35
restriction under 35 U.S.C. 121, assigned a new application number; and U.S.C. 121. Thus, § 1.78(d)(1)(ii)(A)
including an election of species (3) the continuation application is permits a divisional application filed as
requirement, in the prior-filed subject to the patent term provisions of a result of a requirement to comply with
application carries over to the 35 U.S.C. 154(b) and § 1.702 et seq. as the requirement of unity of invention
continuation application; (3) the prior- a new continuation application (and not under PCT Rule 13 or requirement for
filed application must be under a final a request for continued examination in restriction under 35 U.S.C. 121 in the
Office action (§ 1.113) or under appeal the prior-filed application). prior-filed application. Section
at the time of filing the continuation Section 1.78(d)(1)(ii) provides for 1.78(d)(1)(ii)(A), however, does not
application; (4) the prior-filed divisional applications of an application permit a divisional application not filed
application must be expressly for the claims to a non-elected invention as a result of such a requirement in the
abandoned upon filing of the that has not been examined if the prior-filed application. Thus,
continuation application, with a letter of application was subject to a requirement § 1.78(d)(1)(ii)(A) permits so-called
express abandonment under § 1.138 to comply with the requirement of unity ‘‘involuntary’’ divisional applications
being concurrently filed in the prior- of invention under PCT Rule 13 or a but does not permit so-called
filed application; and (5) applicant must requirement for restriction under 35 ‘‘voluntary’’ divisional applications.
request that the continuation U.S.C. 121. The divisional application Section 1.78(d)(1)(ii)(B) does not
application be placed on an examiner’s need not be filed during the pendency permit the filing of a set of parallel
amended (Regular Amended) docket. of the application subject to a divisional applications containing
This procedure is not applicable to requirement for restriction, as long as claims to the same invention. Applicant,
design applications because the the copendency requirement of 35 however, may serially prosecute up to
continued prosecution application U.S.C. 120 is met. This final rule also two continuation applications that
procedures of § 1.53(d) currently permits applicant to file two contain claims to the same invention as
provide design applicants with an continuation applications of a divisional is claimed in a prior-filed divisional
optional streamlined continuation application plus a request for continued application if the continuation
application procedure. examination in the divisional application satisfies the conditions of
The optional streamlined application family, without any § 1.78(d)(1)(iii).
continuation application procedure, justification. See §§ 1.78(d)(1)(iii) and As discussed previously, applicants
however, does require that the applicant 1.114(f). cannot rely upon a requirement for
provide a continuation application filed Specifically, § 1.78(d)(1)(ii) permits a restriction including an election of
under 35 U.S.C. 111(a) and § 1.53(b) divisional application of a prior-filed species to file a divisional application in
(and not a request for continued nonprovisional application or situations where: (1) The applicant
examination under 35 U.S.C. 132(b) and international application designating traverses the requirement for restriction;
(2) the requirement for restriction may in the event of the allowance of a claim Section 1.78(d)(1)(iii) does not permit
be conditional, such as a requirement to the elected invention. If applicant a continuation-in-part of a divisional
for election of species in an application cancels all of the claims directed to a application. Section 1.78(d)(1)(iii) is
that contains a claim that is generic to non-elected invention before rejoinder designed to permit an applicant to
all of the claimed species (see MPEP occurs and files a divisional application, complete prosecution with respect to an
section 809); and (3) the claims to the the restriction requirement will not be invention or inventions that were
non-elected invention may be rejoined withdrawn and the non-elected claims disclosed and claimed in a divisional
at the request of the applicant (see that are now canceled will not be application, and not to permit an
MPEP § 821.04 et seq.). See the rejoined. This will preserve applicant’s applicant to seek patent protection for a
discussion of § 1.75(b)(5). This is rights under 35 U.S.C. 121 and new invention that merely bears some
because when the requirement for § 1.78(d)(1)(ii). See MPEP § 821.04(b). relationship to an invention or
restriction is withdrawn in the prior- Section 1.78(d)(1)(iii) provides for inventions that were disclosed and
filed application, any divisional continuation applications that claim the claimed in a divisional application.
application that has been filed as the benefit of a divisional application Section 1.78(d)(1)(i) provides a
result of the restriction requirement of (either directly or indirectly). Section mechanism for applicants to seek patent
the prior-filed application will not be 1.78(d)(1)(iii) permits such a protection for a new invention that is an
proper under §§ 1.78(a)(2) and continuation application of a prior-filed improvement of an invention or
1.78(d)(1)(ii). Applicant is not permitted nonprovisional application or inventions that were disclosed and
to file a divisional application of a prior- international application designating claimed in an initial or continuing
filed application that is no longer the United States of America if: (1) The (including a divisional) application.
subject to a restriction requirement. The provisions of §§ 1.78(d)(1)(i)
application is a continuation
Under §§ 1.78(a)(2) and 1.78(d)(1)(ii), through (d)(1)(iii) are illustrated with
application as defined in § 1.78(a)(3)
the prior-filed application to which a the following example: (1) There is an
that claims the benefit under 35 U.S.C.
divisional application claims the benefit initial application ‘‘A’’ that is subject to
120, 121, or 365(c) of a divisional
must be subject to a requirement to a restriction requirement under 35
application that satisfies the conditions
comply with the requirement of unity of U.S.C. 121 and § 1.141 et seq.; (2) a
set forth in § 1.78(d)(1)(ii); (2) the
invention under PCT Rule 13 or a continuation application ‘‘B’’ of
application discloses and claims only an
requirement for restriction under 35 application ‘‘A’’; (3) a further
invention or inventions that were continuation application ‘‘C’’ which
U.S.C. 121. Sections 1.78(a)(2) and
disclosed and claimed in the divisional claims the benefit of continuation
1.78(d)(1)(ii) also require a divisional
application; (3) the application claims application ‘‘B’’ and initial application
application to contain only claims
the benefit of only the divisional ‘‘A’’; (4) a divisional application ‘‘D’’
directed to a non-elected invention that
application, any application to which (based upon the restriction requirement
has not been examined.
For an application that contains a such divisional application claims under 35 U.S.C. 121 and § 1.141 et seq.
generic claim in which a requirement benefit under 35 U.S.C. 120, 121, or in application ‘‘A’’), which claims the
for an election of species has been 365(c) in compliance with the benefit of continuation application ‘‘C’’,
made, applicants should conclude conditions set forth in § 1.78(d)(1)(ii), continuation application ‘‘B’’, and
prosecution of the generic claim in the and no more than one intervening prior- initial application ‘‘A’’; (5) a
initial application and its continuation filed nonprovisional application (i.e., continuation application ‘‘E’’ of
or continuation-in-part applications, only one continuation application of the divisional application ‘‘D’’, which
including exhaustion of any available divisional application filed between the claims the benefit of divisional
appeals, before even filing a divisional divisional application and the second application ‘‘D’’, continuation
application to a non-elected species. If continuation application of the application ‘‘C’’, continuation
applicant no longer wants to pursue the divisional application); and (4) no more application ‘‘B’’, and initial application
generic claim, applicant may file a than one other nonprovisional ‘‘A’’; and (6) a further continuation
divisional application directed to a non- application claims the benefit of the application ‘‘F’’ of continuation
elected species. If applicant files a divisional application. This does not application ‘‘E’’, which claims the
divisional application directed to a non- include any other divisional application benefit of continuation application ‘‘E’’,
elected species, applicant must: (1) that satisfies the conditions set forth in divisional application ‘‘D’’, continuation
Cancel the claims to the non-elected § 1.78(d)(1)(ii) or any nonprovisional application ‘‘C’’, continuation
species and the generic claim in the application that claims the benefit of application ‘‘B’’, and initial application
prior-filed application before a rejoinder such divisional application and satisfies ‘‘A’’.
or reinstatement occurs; (2) not present the conditions set forth in Under § 1.78(d)(1)(i), application ‘‘C’’
the non-elected claims and the generic § 1.78(d)(1)(iii) or (d)(1)(vi). Section is either a continuation application
claim in any continuation or 1.78(d)(1)(iii) permits an applicant to under § 1.78(a)(3) or a continuation-in-
continuation-in-part application of the continue prosecution of a divisional part application under § 1.78(a)(4) that
initial application; and (3) not present application via two continuation claims the benefit of no more than two
the generic claim in the divisional applications (in parallel or serially). The prior-filed applications ‘‘B’’ and ‘‘A’’. In
application or any continuation Office, however, will treat each addition, applications ‘‘B’’ and ‘‘A’’
application of the divisional application prosecuted in parallel as whose benefit is claimed in application
application. having the total number of claims ‘‘C’’ have their benefit claimed in no
Under the Office’s rejoinder practice, present in all of such applications for more than one other application (not
an applicant may request rejoinder of purposes of determining whether an including divisional application ‘‘D’’ or
claims to a non-elected invention that examination support document is continuation applications ‘‘E’’ and ‘‘F’’
depend from or otherwise require all the required by § 1.75(b) provided that the of the divisional application ‘‘D’’). That
limitations of an allowable claim. See continuation application contains at is, the benefit of application ‘‘A’’ is
MPEP § 821.04 et seq. Applicants may least one claim that is patentably claimed in only one other application
retain claims to a non-elected invention indistinct from at least one claim in the ‘‘B’’ (not including divisional
in an application for possible rejoinder divisional application. application ‘‘D’’ or continuation
applications ‘‘E’’ and ‘‘F’’ of the divisional application ‘‘D’’ has its set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
divisional application ‘‘D’’), and the benefit claimed in no more than one (d)(1)(vi).
benefit of application ‘‘B’’ is claimed in other nonprovisional application Section 1.78(d)(1)(v) pertains to the
only one other application ‘‘C’’ (not (application ‘‘E’’), and with respect to situation in which an applicant files a
including divisional application ‘‘D’’ or application ‘‘E’’, divisional application continuation (or continuation-in-part)
continuation applications ‘‘E’’ and ‘‘F’’ ‘‘D’’ has its benefit claimed in no more application to correct informalities
of the divisional application ‘‘D’’). than one other nonprovisional rather than completing an application
Under § 1.78(d)(1)(ii), nonprovisional application (application ‘‘F’’). for examination under § 1.53 (i.e., the
application ‘‘D’’ is a divisional Section 1.78(d)(1)(iv) pertains to the prior-filed application became
application under § 1.78(a)(2) since it situation in which an applicant files a abandoned due to the failure to timely
claims the benefit of prior-filed bypass continuation (or continuation-in- reply to an Office notice issued under
application ‘‘A’’ that was subject to a part) application rather than paying the § 1.53(f)). The prior-filed nonprovisional
requirement to comply with the basic national fee (entering the national application, however, must be entitled
requirement of unity of invention under stage) in an international application in to a filing date and have paid therein the
PCT Rule 13 or a requirement for which a Demand for international basic filing fee within the pendency of
restriction under 35 U.S.C. 121. preliminary examination (PCT Article the application. See § 1.78(d)(2). Section
Divisional application ‘‘D’’ may contain 31) has not been filed, and the 1.78(d)(1)(v) provides that in this
only claims directed to an invention international application does not claim situation the applicant may file ‘‘one
identified in the requirement to comply the benefit of any other nonprovisional more’’ continuation application (or
with the requirement of unity of application or international application continuation-in-part application)
invention or requirement for restriction designating the United States of without there being a requirement for a
but were not elected for examination in America. Section 1.78(d)(1)(iv) provides petition and showing under
prior-filed application ‘‘A’’ or in any that in this situation the applicant may § 1.78(d)(1)(vi). Specifically,
other nonprovisional application file ‘‘one more’’ continuation § 1.78(d)(1)(v) provides that a
(applications ‘‘B and ‘‘C’’), except for a application (or continuation-in-part continuation application or
nonprovisional application application) without there being a continuation-in-part application is
(applications ‘‘E’’ and ‘‘F’’) that claims requirement for a petition and showing permitted if the following conditions are
the benefit of divisional application ‘‘D’’ under § 1.78(d)(1)(vi). A ‘‘bypass’’ met: (1) The application claims benefit
and satisfies the conditions of continuation (or continuation-in-part)
under 35 U.S.C. 120 or 365(c) of a prior-
§ 1.78(d)(1)(iii). That is, divisional filed nonprovisional application filed
application is an application for patent
application ‘‘D’’ may contain only under 35 U.S.C. 111(a), and the prior-
filed under 35 U.S.C. 111(a) that claims
claims directed to an invention or filed nonprovisional application became
the benefit of the filing date of an earlier
inventions that were identified in such abandoned due to the failure to timely
international application designating
requirement to comply with the reply to an Office notice issued under
the United States of America that did
requirement of unity of invention or § 1.53(f) and does not claim the benefit
not enter the national stage under 35
requirement for restriction but were not of any other nonprovisional application
U.S.C. 371. See H.R. Rep. No. 107–685,
elected for examination in any other or international application designating
at 222 (2002).
application except for its continuation the United States of America; (2) the
applications ‘‘E’’ and ‘‘F’’. Finally, the Specifically, § 1.78(d)(1)(iv) provides application is a continuation
divisional application ‘‘D’’ claims the that a continuation application or application as defined in § 1.78(a)(3) or
benefit of the prior-filed applications continuation-in-part application is a continuation-in-part application as
(applications ‘‘A’’, ‘‘B’’, and ‘‘C’’). permitted if the following conditions are defined in § 1.78(a)(4) that claims the
Under § 1.78(d)(1)(iii), nonprovisional met: (1) The application claims benefit benefit under 35 U.S.C. 120, 121, or
application ‘‘F’’ is a continuation under 35 U.S.C. 120 or 365(c) of a prior- 365(c) of no more than three prior-filed
application under § 1.78(a)(3) that filed international application applications; and (3) any application
claims the benefit of divisional designating the United States of whose benefit is claimed under 35
application ‘‘D’’. Application ‘‘D’’ is a America, and a Demand has not been U.S.C. 120, 121, or 365(c) in such
divisional application that satisfies the filed and the basic national fee nonprovisional application has its
conditions set forth in § 1.78(d)(1)(ii). (§ 1.492(a)) has not been paid in the benefit claimed in no more than two
The nonprovisional application ‘‘F’’ prior-filed international application and other nonprovisional applications. This
may disclose and claim only an the prior-filed international application does not include any nonprovisional
invention that was disclosed and does not claim the benefit of any other application that satisfies the conditions
claimed in divisional application ‘‘D’’. nonprovisional application or set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
The nonprovisional application ‘‘F’’ international application designating (d)(1)(vi).
claims the benefit of only divisional the United States of America; (2) the Section 1.78(d)(1)(vi) provides that a
application ‘‘D’’, the applications to application is a continuation continuing nonprovisional application
which divisional application ‘‘D’’ claims application as defined in § 1.78(a)(3) or that is filed to obtain consideration of an
benefit in compliance with the a continuation-in-part application as amendment, argument, or evidence that
conditions of § 1.78(d)(1)(ii) defined in § 1.78(a)(4) that claims the could not have been submitted during
(applications ‘‘A’’, ‘‘B’’, and ‘‘C’’), and benefit under 35 U.S.C. 120, 121, or the prosecution of the prior-filed
no more than one intervening prior-filed 365(c) of no more than three prior-filed application, and does not satisfy the
nonprovisional application (application applications; and (3) any application conditions set forth in § 1.78(d)(1)(i),
‘‘E’’). Divisional application ‘‘D’’ whose whose benefit is claimed under 35 (ii), (iii), (iv) or (v), may claim the
benefit is claimed in nonprovisional U.S.C. 120, 121, or 365(c) in such benefit under 35 U.S.C. 120, 121, or
application ‘‘E’’ and in nonprovisional nonprovisional application has its 365(c) of such prior-filed application.
application ‘‘F’’ has its benefit claimed benefit claimed in no more than two Under § 1.78(d)(1)(vi), a petition must
in no more than one other other nonprovisional applications. This be filed in such nonprovisional
nonprovisional application. That is, does not include any nonprovisional application that is accompanied by the
with respect to application ‘‘F’’, application that satisfies the conditions fee set forth in § 1.17(f) and a showing
that the amendment, argument, or international application)’’ to clarify in 35 U.S.C. 112, ¶ 1, is met and whether
evidence sought to be entered could not the rules of practice what is meant by a substantial portion of all of the earlier
have been submitted during the the requirement that an applicant nonprovisional application is repeated
prosecution of the prior-filed identify the relationship of the in the second application in a
application. This will permit an applications. See MPEP § 201.11. continuation-in-part situation.
applicant to continue prosecution of an Section 1.78(d)(3) also provides that if Accordingly, an alleged continuation-in-
application via a continuing application an application is identified as a part application should be permitted to
to obtain consideration of an continuation-in-part application, the claim the benefit of the filing date of an
amendment, argument, or evidence that applicant must identify the claim or earlier nonprovisional application if the
could not have been submitted during claims in the continuation-in-part alleged continuation-in-part application
the prosecution of the prior-filed application for which the subject matter complies with the * * * formal
application. Section 1.78(d)(1)(vi) sets is disclosed in the manner provided by requirements of 35 U.S.C. 120.’’).
forth the time period within which such 35 U.S.C. 112, ¶ 1, in the prior-filed Section 1.78(d)(4) and (d)(5) contain
a petition must be provided: (1) If the application. Any claim in the the provisions of former § 1.78(a)(2).
later-filed continuing application is an continuation-in-part application for Section 1.78(d)(6) provides that cross-
application filed under 35 U.S.C. 111(a), which the subject matter is not references to applications for which a
within four months from the actual identified as being disclosed in the benefit is not claimed must be located
filing date of the later-filed application; manner provided by 35 U.S.C. 112, ¶ 1, in a paragraph separate from the
and (2) if the continuing application is in the prior-filed application will be paragraph containing the references to
a nonprovisional application which treated as entitled only to the actual applications for which a benefit is
entered the national stage from an filing date of the continuation-in-part claimed. Including cross-references to
international application after application, and will be subject to prior applications for which a benefit is not
compliance with 35 U.S.C. 371, within art based on the actual filing date of the claimed in the same paragraph as the
four months from the date on which the continuation-in-part application. As paragraph containing the references to
national stage commenced under 35 discussed previously, to avoid any applications for which a benefit is
U.S.C. 371(b) or (f) in the international unnecessary delay in the prosecution of claimed may lead to the Office
application. the application, applicant should inadvertently scheduling the
With respect to the application of the provide the identification before the application for publication under 35
changes to § 1.78 in this final rule to a examiner begins to conduct a prior art U.S.C. 122(b) and § 1.211 et seq. on the
reissue application, benefit claims search. If the failure to identify the basis of the cross-referenced
under 35 U.S.C. 120, 121, or 365(c) in claims for which the subject matter is applications having the earliest filing
the application for patent that is being disclosed in the manner provided by 35 date.
reissued will not be taken into account U.S.C. 112, ¶ 1, in the prior-filed Section 1.78(e) contains provisions
in determining whether a continuing application causes the examiner to relating to delayed claims under 35
reissue application claiming the benefit include a new prior art rejection in a U.S.C. 120, 121, or 365(c) for benefit of
under 35 U.S.C. 120, 121, or 365(c) of second or subsequent Office action, the prior-filed nonprovisional or
the reissue application satisfies one or inclusion of the new prior art rejection international applications. Section
more of the conditions set forth in will not preclude the Office action from 1.78(e) contains the provisions of former
§§ 1.78(d)(1)(i) through 1.78(d)(1)(vi). being made final. § 1.78(a)(3).
However, an applicant may not use the This final rule eliminates from Section 1.78(f) contains provisions
reissue process to add to the original § 1.78(d) the provision that the prior- relating to applications and patents
patent benefit claims under 35 U.S.C. filed application disclose the invention naming at least one inventor in
120, 121, or 365(c) that do not satisfy claimed in at least one claim of the common.
one or more of the conditions set forth later-filed application in the manner Section 1.78(f)(1)(i) provides that the
in §§ 1.78(d)(1)(i) through 1.78(d)(1)(vi), provided by 35 U.S.C. 112, ¶ 1. For a applicant in a nonprovisional
if the application for the original patent later-filed application to receive the application that has not been allowed
was filed on or after November 1, 2007. benefit of the filing date of a prior-filed (§ 1.311) must identify by application
Section 1.78(d)(2) provides that each application, 35 U.S.C. 120 requires that number (i.e., series code and serial
prior-filed application must name as an the prior-filed application must disclose number) and patent number (if
inventor at least one inventor named in the invention claimed in at least one applicable) each other pending or
the later-filed application. In addition, claim of the later-filed application in the patented nonprovisional application, in
each prior-filed application must either manner provided by 35 U.S.C. 112, ¶ 1. a separate paper, for which the
be: (1) An international application The Office, however, does not make a following conditions are met: (1) The
entitled to a filing date in accordance determination as to whether a prior- application has a filing date that is the
with PCT Article 11 and designating the filed application discloses the invention same as or within two months of the
United States of America; or (2) a claimed in a claim of the later-filed filing date of the other pending or
nonprovisional application under 35 application in the manner provided by patented application, taking into
U.S.C. 111(a) that is entitled to a filing 35 U.S.C. 112, ¶ 1, unless that account any filing date for which a
date as set forth in § 1.53(b) or § 1.53(d) determination is necessary to determine benefit is sought under title 35, United
for which the basic filing fee set forth in the patentability of such claim. See States Code; (2) the application names at
§ 1.16 has been paid within the MPEP § 201.08 (‘‘Unless the filing date least one inventor in common with the
pendency of the application (provisions of the earlier nonprovisional application other pending or patented application;
from former § 1.78(a)(1)). is actually needed * * *, there is no and (3) the application is owned by the
Section 1.78(d)(3) is amended to need for the Office to make a same person, or subject to an obligation
include the parenthetical ‘‘(i.e., whether determination as to whether the of assignment to the same person, as the
the later-filed application is a requirement of 35 U.S.C. 120, that the other pending or patented application.
continuation, divisional, or earlier nonprovisional application This identification requirement would
continuation-in-part of the prior-filed discloses the invention of the second also apply to each identified application
nonprovisional application or application in the manner provided by because the identifying application has
a filing date that is the same as or within be identified within the later of: (1) Four such multiple applications, the Office
two months of the filing date of the months from the actual filing date of a may require elimination of the
identified application and vice versa. nonprovisional application filed under patentably indistinct claims from all but
The phrase ‘‘taking into account any 35 U.S.C. 111(a); (2) four months from one of the applications. See § 1.78(f)(3).
filing date for which a benefit is sought the date on which the national stage As discussed previously, for
under title 35, United States Code’’ in commenced under 35 U.S.C. 371(b) or applications having a continuity
§ 1.78(f)(1)(i)(A) means any filing date (f) in a nonprovisional application relationship, the prior application must
for which a benefit (or priority) is entering the national stage from an be pending at the time the continuing
sought or claimed under 35 U.S.C. 111, international application under 35 application is filed. See 35 U.S.C. 120
119, 120, 121, 363, or 365. Cf. 35 U.S.C. U.S.C. 371; or (3) two months from the (requires that a continuing application
122(b)(1)(A) (requires publication of mailing date of the initial filing receipt be filed before the patenting or
patent applications ‘‘promptly after the in the other nonprovisional application abandonment of or termination of
expiration of a period of 18 months from that is required to be identified under proceedings on the prior application).
the earliest filing date for which a § 1.78(f)(1)(i). An applicant is not required to provide
benefit is sought under this title’’ Section 1.78(f)(2)(i) provides that a an explanation under § 1.78(f)(2)(ii)(B)
(emphasis added), meaning eighteen rebuttable presumption shall exist that a for a continuation application or
months from the earliest filing date for nonprovisional application contains at continuation-in-part application of a
which a benefit or priority is sought or least one claim that is not patentably prior-filed application that has been
claimed under 35 U.S.C. 111, 119, 120, distinct from at least one of the claims allowed, provided that the prior-filed
121, 363, or 365). Thus, if an application in the one or more other pending or application is not withdrawn from
claims the benefit of or priority to other patented nonprovisional applications if: issue. Furthermore, where the other
applications, ‘‘the filing date of [the (1) The application has a filing date that nonprovisional application containing
application], taking into account any is the same as the filing date of another patentably indistinct claims is allowed,
filing date for which a benefit is sought pending application or patent, taking the Office will not count the claims of
under title 35, United States Code,’’ is into account any filing date for which a the allowed application in determining
the actual filing date of the application benefit is sought; (2) the application whether the total number of claims
as well as the filing date of each names at least one inventor in common present in all of the copending
application to which the application with the other pending application or nonprovisional applications containing
claims a benefit or priority. For patent; (3) the application is owned by patentably indistinct claims exceeds the
example, if an application has a filing the same person, or subject to an five independent claim and twenty-five
date of December 1, 2006, and claims obligation of assignment to the same total claim threshold under § 1.75(b)(4).
the benefit of a nonprovisional person, as the other pending application See the discussion of § 1.75(b)(4). A
application that was filed on June 1, or patent; and (4) the application terminal disclaimer in accordance with
2004, and claims the priority of a contains substantially overlapping § 1.321(c) will, however, be required in
foreign application that was filed on disclosure as the other pending each nonprovisional application
June 1, 2003, for purposes of application or patent. Section containing patentably indistinct claims
§§ 1.78(f)(1) and (f)(2) the filing date of 1.78(f)(2)(i) further provides that to overcome any obviousness-type
the application ‘‘taking into account any substantial overlapping disclosure exists double patenting rejection.
filing date for which a benefit is sought if the other pending or patented Under § 1.78(f)(2)(iii), the actions
under title 35, United States Code,’’ is nonprovisional application has written specified in § 1.78(f)(2)(ii) (if required)
December 1, 2006, June 1, 2004, and description support under 35 U.S.C. must be taken within the later of: (1)
June 1, 2003. 112, ¶ 1, for at least one claim in the Four months from the actual filing date
The phrase ‘‘owned by the same nonprovisional application. of a nonprovisional application filed
person, or subject to an obligation of If these conditions exist, the applicant under 35 U.S.C. 111(a); (2) four months
assignment to the same person’’ in must under § 1.78(f)(2)(ii) in the from the date on which the national
§ 1.78(f)(1)(i)(C) (and in § 1.78(f)(2)(i)(C) nonprovisional application, unless the stage commenced under 35 U.S.C.
and 1.78(f)(3)) has the same meaning as nonprovisional application has been 371(b) or (f) in a nonprovisional
it does in 35 U.S.C. 103(c). See MPEP allowed (§ 1.311), within the time application entering the national stage
§ 706.02(l)(2) for a discussion of the period specified in § 1.78(f)(2)(iii) from an international application under
definition of this phrase as it is used in either: (1) Rebut this presumption by 35 U.S.C. 371; (3) the date on which a
35 U.S.C. 103(c). explaining how the application contains claim that is not patentably distinct
The phrase ‘‘has not been allowed’’ in only claims that are patentably distinct from a claim in one or more other
§ 1.78(f)(1)(i) (and in § 1.78(f)(2)(ii) and from the claims in each of such other pending or patented applications is
(iii)) means a notice of allowance under pending applications or patents; or (2) presented; or (4) two months from the
§ 1.311 has not been mailed in the submit a terminal disclaimer in mailing date of the initial filing receipt
application, or a notice of allowance accordance with § 1.321(c). In addition, in the one or more other pending or
under § 1.311 has been mailed in the § 1.78(f)(2)(ii)(B) provides that where patented applications.
application but the application has been one or more other pending The requirement under § 1.78(f)(2)(ii)
withdrawn from issue. Thus, the nonprovisional applications containing for taking one of the actions specified in
identification of such one or more other patentably indistinct claims have been § 1.78(f)(2)(ii) does not apply to the
pending or patented nonprovisional identified, the applicant must explain applicant in the application in which a
applications under § 1.78(f)(1)(i) is not why there are two or more pending notice of allowance has been mailed,
required in an application in which a nonprovisional applications naming at unless the application is withdrawn
notice of allowance has been mailed, least one inventor in common and from issue (§ 1.313). For example, if an
unless the application is withdrawn owned by the same person, or subject to applicant filed a continuation
from issue. an obligation of assignment to the same application after a notice of allowance
Section 1.78(f)(1)(ii) also provides that person, which contain patentably has been mailed in the prior-filed
one or more other nonprovisional indistinct claims. Unless applicant application, the applicant must either
applications under § 1.78(f)(1)(i) must presents good and sufficient reasons for rebut the presumption under
§ 1.78(f)(2)(i) or submit a terminal The following are two examples 70 FR 1818, 1818 (Jan. 11, 2005), 1291
disclaimer in accordance with § 1.321(c) where an applicant may have a good Off. Gaz. Pat. Office 58, 58–59 (Feb. 8,
within the time period set forth in and sufficient reason under § 1.78(f)(3) 2005) (final rule). Section 1.78(h) also
§ 1.78(f)(2)(iii) in the continuation for there being two or more pending provides that if the application is
application. Under § 1.78(f)(2)(ii), the nonprovisional applications that amended to disclose the names of
applicant, however, is not required to contain patentably indistinct claims: (1) parties to a joint research agreement, the
rebut the presumption or submit a An applicant filed a continuation applicant must identify the one or more
terminal disclaimer in the allowed application after the mailing of a notice other nonprovisional applications as
prior-filed application. Nevertheless, a of allowance in the prior-filed required by § 1.78(f)(1) with the
terminal disclaimer in accordance with application, but the allowance of the amendment unless the applications
§ 1.321(c) will be required in each prior-filed application was subsequently have been identified within the four-
nonprovisional application containing withdrawn by the Office; or (2) an month period specified in § 1.78(f)(1).
patentably indistinct claims to interference was declared in an Section 1.78(i) provides that the time
overcome any obviousness-type double application that contains both claims periods set forth in § 1.78 are not
patenting rejection. corresponding to the count and claims extendable.
As discussed previously, when an not corresponding to the count, the The changes to § 1.78 (except
applicant files multiple applications BPAI suggests that the claims not §§ 1.78(a) and 1.78(d)(1)) are applicable
that are substantially the same, the corresponding to the count be canceled to any nonprovisional application
applicant is responsible for assisting the from the application in interference and pending on or after November 1, 2007.
Office in resolving potential double pursued in a separate application, and The changes to §§ 1.78(a) and 1.78(d)(1)
patenting situations, rather than taking the applicant filed a continuation are applicable to any application filed
application to present the claims not on or after November 1, 2007, or any
no action until faced with a double
corresponding to the count. These application entering the national stage
patenting rejection. Thus, if an Office
examples are merely illustrative and not after compliance with 35 U.S.C. 371 on
action must include a double patenting
exhaustive. or after November 1, 2007. Except as
rejection (either statutory or
Section 1.78(g) addresses applications otherwise indicated in this final rule,
obviousness-type double patenting), it is
or patents under reexamination that any application filed under 35 U.S.C.
because the applicant has not met his or
name different inventors and contain 111(a) on or after November 1, 2007, or
her responsibility to resolve the double
patentably indistinct claims. Section any application entering the national
patenting situation. Therefore, the
1.78(g) contains the provisions of former stage after compliance with 35 U.S.C.
inclusion of a new double patenting
§ 1.78(c), except that ‘‘conflicting 371 on or after November 1, 2007,
rejection in a second or subsequent seeking to claim the benefit under 35
claims’’ is changed to ‘‘patentably
Office action will not preclude the U.S.C. 120, 121, or 365(c) and § 1.78 of
indistinct claims’’ for clarity and for
Office action from being made final. a prior-filed nonprovisional application
consistency with the language of
Section 1.78(f)(3) applies when there § 1.78(f). or international application must either:
are two or more commonly owned Section 1.78(h) covers the situation in (1) Meet the requirements specified in
(owned by the same person, or are which parties to a joint research one of §§ 1.78(d)(1)(i) through (d)(1)(v);
subject to an obligation of assignment to agreement are treated (in essence) as a or (2) include a grantable petition under
the same person) nonprovisional common owner for purposes of 35 § 1.78(d)(1)(vi).
applications containing patentably U.S.C. 103 by virtue of the CREATE Act. With respect to applications that
indistinct claims. Under § 1.78(f)(3), Section 1.78(h) provides that if an claim the benefit under 35 U.S.C. 120,
unless applicant presents good and application discloses or is amended to 121, or 365(c) only of nonprovisional
sufficient reasons for such multiple disclose the names of parties to a joint applications or international
applications, the Office may require research agreement under 35 U.S.C. applications filed before August 21,
elimination of the patentably indistinct 103(c)(2)(C), the parties to the joint 2007: An application is not required to
claims from all but one of the research agreement are considered to be meet the requirements set forth in
applications. Section 1.78(f)(3) contains the same person for purposes of § 1.78. § 1.78(d)(1) if: (1) The application
provisions similar to former § 1.78(b). The CREATE Act amended 35 U.S.C. claims the benefit under 35 U.S.C. 120,
The Office expects to apply this 103(c) to provide that subject matter 121, or 365(c) only of prior-filed
provision primarily in situations developed under a joint research nonprovisional applications filed before
covered by § 1.78(f)(2)(ii), under which agreement shall be treated as owned by August 21, 2007 or prior-filed
applicants must explain why it is the same person or subject to an applications entering the national stage
necessary that there are two or more obligation of assignment to the same after compliance with 35 U.S.C. 371
pending nonprovisional applications person for purposes of determining before August 21, 2007; and (2) there is
naming at least one inventor in common obviousness if three conditions are met: no other application filed on or after the
and owned by the same person, or (1) The claimed invention was made by publication date of this final rule in the
subject to an obligation of assignment to or on behalf of parties to a joint research Federal Register that also claims the
the same person, which contain agreement that was in effect on or before benefit under 35 U.S.C. 120, 121, or
patentably indistinct claims. The Office, the date the claimed invention was 365(c) of such prior-filed
however, may require that an applicant made; (2) the claimed invention was nonprovisional applications or
provide good and sufficient reason made as a result of activities undertaken international applications. This
whenever there are two or more pending within the scope of the joint research provision will provide applicants with
nonprovisional applications with such agreement; and (3) the application for ‘‘one more’’ continuation application or
common ownership or assignment patent for the claimed invention continuation-in-part application of a
obligation and patentably indistinct discloses or is amended to disclose the second or subsequent continuing
claims, regardless of the relative filing names of the parties to the joint research application (continuation application or
dates of the applications. Section agreement. See Changes to Implement continuation-in-part application) that
1.78(f)(3) does not apply to the claims the Cooperative Research and was filed prior to the publication date
in a patent. Technology Enhancement Act of 2004, of this final rule in the Federal Register
without a petition under § 1.78(d)(1)(vi). or the equivalent. See Fressola v. ‘‘when necessary for purposes of an
Thus, an applicant may file a single Manbeck, 36 U.S.P.Q.2d 1211, 1212 Office proceeding’’ to the end of the
continuation application or (D.D.C. 1995). In addition, in the event sentence for clarity.
continuation-in-part application on or that there is a requirement for restriction Section 1.114 (request for continued
after November 1, 2007, without including election of species, or both, examination): Under § 1.114, an
meeting the requirements specified in the provision in § 1.104(a)(1) for a applicant is permitted to file a single
§ 1.78(d)(1)(i) through (d)(1)(v), or ‘‘thorough study [and] investigation of request for continued examination
including a petition under the available prior art relating to the without a petition and showing in a
§ 1.78(d)(1)(vi), even if the prior-filed subject matter of the claimed invention’’ single application family. See
application was a second or subsequent will continue to apply only with respect § 1.114(f)(1). An application family
continuation or continuation-in-part to the invention and species elected for includes the initial application and its
application. It should be noted that the examination on the merits. This continuation or continuation-in-part
purpose of this provision is to ensure provision of § 1.104 does not apply with applications. An applicant is also
that an applicant may file ‘‘one more’’ respect to an invention or species that permitted to file a single request for
continuation application or has been withdrawn from consideration continued examination without a
continuation-in-part application of an as a result of a requirement for petition and showing in a divisional
application that was filed prior to the restriction, including an election of application family. See §§ 1.114(f)(2)
publication date of this final rule in the species. and (f)(3). A divisional application
Federal Register without a petition and Section 1.104(b) is also amended to family includes the divisional
showing, and not to provide an ‘‘extra’’ delete the sentence ‘‘[h]owever, matters application and its continuation
continuation application or of form need not be raised by the applications. An applicant may file a
continuation-in-part application for examiner until a claim is found second or subsequent request for
applications filed prior to the allowable.’’ The Office would prefer that continued examination if the applicant
publication date of this final rule in the all matters of form be resolved at the files a petition and a showing that the
Federal Register. If an application filed earliest time during the patent amendment, argument, or evidence
before the publication date of this final examination process. Nevertheless, an sought to be entered could not have
rule in the Federal Register is not a Office action would not be considered been submitted earlier. See § 1.114(g).
continuing application or is only the improper simply because the Office Section 1.114(a) is amended to make
first continuing application, this action did not raise every applicable clear that an applicant may not file an
provision will not entitle an applicant to issue of form present in the application. unrestricted number of requests for
file a third or subsequent continuation Section 1.105 (requirements for continued examination, that a request
or continuation-in-part application information): Section 1.105(a)(1) is for continued examination must include
without a petition under § 1.78(d)(1)(vi) amended to provide that an applicant a petition under § 1.114(g) unless the
showing that the amendment, argument, may be required to set forth where (by conditions set forth in § 1.114(f)(1),
or evidence sought to be entered could page and line or paragraph number) in (f)(2), or (f)(3) are satisfied, and that a
not have been submitted during the the specification of the application, or request for continued examination must
prosecution of the prior-filed any application the benefit of whose be identified as a request for continued
application. filing date is sought under title 35, examination. Section 1.114(a) otherwise
Section 1.104 (nature of examination): United States Code, there is written contains the provisions of former
The Office proposed a number of description support for the invention as § 1.114(a).
changes to § 1.104 to implement the defined in the claims (whether in Section 1.114(d) is revised to
‘‘representative claims’’ examination independent or dependent form), and of eliminate the sentence ‘‘[i]f an applicant
approach. See Changes to Practice for the manner and process of making and timely files a submission and fee set
the Examination of Claims in Patent using it, in such full, clear, concise, and forth in § 1.17(e), the Office will
Applications, 71 FR at 64, 68, 1302 Off. exact terms as to enable any person withdraw the finality of any Office
Gaz. Pat. Office at 1131, 1332. The skilled in the art to which it pertains, or action and the submission will be
Office is not proceeding with the with which it is most nearly connected, entered and considered.’’ This change is
changes to § 1.104 to implement the to make and use the invention, under 35 to avoid misleading applicants into
‘‘representative claims’’ examination U.S.C. 112, ¶ 1. Therefore, in situations believing that the Office will pro forma
approach, but is revising § 1.104 for in which it is not readily apparent withdraw the finality of any Office
consistency with current examination where the specification of the action and the submission will be pro
practices. application, or an application for which forma entered and considered upon
Section 1.104(a)(1) is amended to add a benefit is claimed, provides written timely filing of a submission and fee set
the phrase ‘‘and other requirements’’ to description support and enablement forth in § 1.17(e). Under revised § 1.114,
the phrase ‘‘the examination shall be under 35 U.S.C. 112, ¶ 1, for a claim or a second or subsequent request for
complete with respect both to a limitation of a claim, the examiner continued examination must also
compliance of the application or patent may require the applicant to provide include a petition accompanied by the
under reexamination with the such information. The Office considers fee set forth in § 1.17(f) except under the
applicable statutes and rules’’ to address this authority to be inherent under the conditions set forth in § 1.114(f).
situations in which the requirement is patent statute and existing rules Section 1.114(f) provides the
based upon Office practice as set forth (including § 1.105), but is revising conditions under which an applicant
in the MPEP or in the case law. For § 1.105 to make the authority explicit. may file a request for continued
example, the phrase ‘‘other Section 1.110 (inventorship and date examination under § 1.114 without a
requirements’’ would address the of invention of the subject matter of petition under § 1.114(g).
situation in which a claim did not individual claims): Section 1.110 is Section 1.114(f)(1) permits an
comply with the requirement in MPEP amended to refer to § 1.78, rather than applicant to file a single request for
§ 608.01(m) that each claim be the object a specific paragraph (paragraph (c)) of continued examination in any one (but
of a single sentence starting with ‘‘I (or § 1.78. The first sentence of § 1.110 is only one) of an initial application or its
we) claim,’’ ‘‘The invention claimed is,’’ also amended to relocate the phrase continuation applications or
continuation-in-part applications. application without a petition under (application ‘‘A’’) whose benefit is
Section 1.114(f)(1) provides that an § 1.114(g) if a request for continued claimed in application ‘‘B’’; and (3) any
applicant may file a request for examination has not previously been application (application ‘‘C’’) that
continued examination under § 1.114 filed in any of: (1) The continuation claims the benefit of application ‘‘B’’,
without a petition under § 1.114(g) if a application; (2) the divisional not including divisional application
request for continued examination has application; and (3) any other ‘‘D’’ and its continuation applications
not been previously been filed in any of: application that claims the benefit ‘‘E’’ and ‘‘F’’. Finally, a request for
(1) The application; (2) any application under 35 U.S.C. 120, 121, or 365(c) of continued examination may be filed in
whose benefit is claimed in the that divisional application, not application ‘‘C’’, if a request for
application under 35 U.S.C. 120, 121, or including any nonprovisional continued examination has not
365(c); and (3) any application that application that satisfies the conditions previously been filed in any of: (1)
claims the benefit under 35 U.S.C. 120, set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or Application ‘‘C’’; (2) any application
121, or 365(c) of the application, not (d)(1)(vi). (applications ‘‘A’’ and ‘‘B’’) whose
including any nonprovisional The provisions of § 1.114(f) are benefit is claimed in application ‘‘C’’;
application that satisfies the conditions illustrated with the following example and (3) any application (none) that
set forth in § 1.78(d)(1)(ii), 1.78(d)(1)(iii) (the example used to illustrate the claims the benefit of application ‘‘C’’,
or 1.78(d)(1)(vi). For example, if provisions of §§ 1.78(d)(1)(i) through not including divisional application
applicant filed one request for (d)(1)(iii)): (1) There is an initial ‘‘D’’ and its continuation applications
continued examination in an initial application ‘‘A’’ that is subject to a ‘‘E’’ and ‘‘F’’.
application, applicant is precluded from restriction requirement under 35 U.S.C. Section 1.114(f)(2) permits the filing
filing a second request for continued 121 and § 1.141 et seq.; (2) a of a single request for continued
examination in the initial application continuation application ‘‘B’’ of examination without a petition under
and in any continuation applications or application ‘‘A’’; (3) a further § 1.114(g) in application ‘‘D’’, if a
continuation-in-part applications that continuation application ‘‘C’’ which request for continued examination has
claim the benefit of the initial claims the benefit of continuation not previously been filed in application
application (not including any application ‘‘B’’ and initial application ‘‘E’’ or application ‘‘F’’. Specifically, a
nonprovisional application that satisfies ‘‘A’’; (4) a divisional application ‘‘D’’ request for continued examination may
the conditions set forth in (based upon the restriction requirement be filed in application ‘‘D’’, if a request
§ 1.78(d)(1)(ii), 1.78(d)(1)(iii) or under 35 U.S.C. 121 and § 1.141 et seq. for continued examination has not
1.78(d)(1)(vi)), without a petition under in application ‘‘A’’), which claims the previously been filed in any of: (1)
§ 1.114(g). benefit of continuation application ‘‘C’’, Divisional application ‘‘D’’; and (2) any
Section 1.114(f)(2) permits an continuation application ‘‘B’’, and application (applications ‘‘E’’ and ‘‘F’’)
applicant to file a single request for initial application ‘‘A’’; (5) a that claims the benefit of divisional
continued examination under § 1.114 in continuation application ‘‘E’’ of application ‘‘D’’.
a divisional application meeting the divisional application ‘‘D’’, which Section 1.114(f)(3) permits the filing
conditions set forth in § 1.78(d)(1)(ii) claims the benefit of divisional of a single request for continued
provided that no request for continued application ‘‘D’’, continuation examination without a petition under
examination has been filed in any application ‘‘C’’, continuation § 1.114(g) in any one of applications ‘‘E’’
continuation application of the application ‘‘B’’, and initial application or ‘‘F’’, if a request for continued
divisional application. Section ‘‘A’’; and (6) a further continuation examination has not previously been
1.114(f)(2) provides that an applicant application ‘‘F’’ of continuation filed in application ‘‘D’’. Specifically, a
may file a request for continued application ‘‘E’’, which claims the request for continued examination may
examination under § 1.114 in a benefit of continuation application ‘‘E’’, be filed in continuation application ‘‘E’’,
divisional application without a petition divisional application ‘‘D’’, continuation if a request for continued examination
under § 1.114(g) if a request for application ‘‘C’’, continuation has not previously been filed in any of:
continued examination has not application ‘‘B’’, and initial application (1) Continuation application ‘‘E’’; (2)
previously been filed in any of: (1) The ‘‘A’’. divisional application ‘‘D’’; and (3) any
divisional application; and (2) any Section 1.114(f)(1) permits the filing other application (application ‘‘F’’) that
application that claims the benefit of a single request for continued claims the benefit of divisional
under 35 U.S.C. 120, 121, or 365(c) of examination without a petition under application ‘‘D’’. In addition, a request
that divisional application, not § 1.114(g) in any one of applications for continued examination may be filed
including any nonprovisional ‘‘A’’, ‘‘B’’, or ‘‘C’’. Specifically, a request in continuation application ‘‘F’’, if a
application that satisfies the conditions for continued examination may be filed request for continued examination has
set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or in application ‘‘A’’, if a request for not previously been filed in any of: (1)
(d)(1)(vi). continued examination has not continuation application ‘‘F’’; (2)
Section 1.114(f)(3) permits an previously been filed in any of: (1) divisional application ‘‘D’’; and (3) any
applicant to file a single request for application ‘‘A’’; (2) any application other application (application ‘‘E’’) that
continued examination in a (none) whose benefit is claimed in claims the benefit of divisional
continuation application of a divisional application ‘‘A’’; and (3) any application application ‘‘D’’.
application meeting the conditions set (applications ‘‘B’’ and ‘‘C’’) that claims Section 1.114(g) provides that a
forth in § 1.78(d)(1)(ii) provided that no the benefit of application ‘‘A’’, not request for continued examination must
request for continued examination has including divisional application ‘‘D’’ include a petition accompanied by the
been filed in the divisional application and its continuation applications ‘‘E’’ fee set forth in § 1.17(f) and a showing
or any other continuation application of and ‘‘F’’. In addition, a request for that the amendment, argument, or
the divisional application. Section continued examination may be filed in evidence sought to be entered could not
1.114(f)(3) provides that an applicant application ‘‘B’’, if a request for have been submitted before the close of
may file a request for continued continued examination has not prosecution in the application. A
examination under § 1.114 in a previously been filed in any of: (1) petition under § 1.114(g) and the fee set
continuation application of a divisional Application ‘‘B’’; (2) any application forth in § 1.17(f) are not required if the
conditions set forth in § 1.114(f) are Office action but prior to an appeal. been filed, or in an application whose
satisfied. Since a petition under However, applicants are permitted to benefit is claimed in any other
§ 1.114(g) requires a showing that there file a request for continued examination nonprovisional application in which a
is an amendment, argument, or evidence under § 1.114 after the mailing of a request for continued examination has
that could not have been submitted notice of allowance or an action that previously been filed, must include a
prior to the close of prosecution in the otherwise closes prosecution in the petition under § 1.114(g). That is, an
application, a petition under § 1.114(g) application (e.g., an Office action under applicant may file a request for
for a request for continued examination Ex parte Quayle, 1935 Dec. Comm’r Pat. continued examination (and not ‘‘one
including only an information 11 (1935)). See § 1.114(b). Furthermore, more’’ request for continued
disclosure statement as the submission § 1.114(d) already provides for the examination) on or after November 1,
required by § 1.114(c) (i.e., not situation in which a request for 2007, without a petition under
including an amendment, argument, or continued examination is filed in an § 1.114(g) only if the conditions set forth
evidence) would not be granted. application on appeal. in § 1.114(f)(1), (f)(2), or (f)(3) are met.
Thus, an applicant may file a single As discussed previously, applicants Section 1.117 (refund due to
request for continued examination are permitted to file two continuation or cancellation of claim): The Consolidated
without a petition under § 1.114(g) in continuation-in-part applications and a Appropriations Act provides that 35
any one (but only one) of an initial single request for continued U.S.C. 41(a), (b), and (d) shall be
application or its continuation examination without any justification. administered in a manner that revises
applications or continuation-in-part The provisions of § 1.78(d)(1) are patent application fees (35 U.S.C. 41(a))
applications. An applicant may also file independent of the provisions of and patent maintenance fees (35 U.S.C.
a single request for continued § 1.114. Thus, filing a request for 41(b)), and provides for a separate filing
examination without a petition under continued examination does not fee (35 U.S.C. 41(a)), search fee (35
§ 1.114(g) in any one (but only one) of preclude an applicant from filing a first U.S.C. 41(d)(1)), and examination fee
a divisional application (meeting the or second continuation application (or (35 U.S.C. 41(a)(3)) during fiscal years
conditions set forth in § 1.78(d)(1)(ii)) or continuation-in-part application). In 2005 and 2006. See Public Law 108–
its continuation applications. Any addition, an applicant may not agree to 447, 118 Stat. 2809 (2004). The
second or subsequent request for forgo a first or second continuation Consolidated Appropriations Act also
continued examination in an application (or continuation-in-part provides that the Office may, by
application or application family must application) to obtain a second or third regulation, provide for a refund of any
include a petition, accompanied by the request for continued examination, nor part of the excess claim fee specified in
fee set forth in § 1.17(f), and a showing can applicant forgo a request for 35 U.S.C. 41(a)(2) for any claim that is
that the amendment, argument, or continued examination to obtain a third canceled before an examination on the
evidence sought to be entered could not continuation or continuation-in-part merits has been made of the application
have been submitted prior to the close application. For example, an applicant under 35 U.S.C. 131. See 35 U.S.C.
of prosecution in the application. cannot file two requests for continued 41(a)(2) (as administered during fiscal
Section 1.114(h) provides that the examination without a petition and years 2005 and 2006 pursuant to the
filing of an improper request for showing in an application instead of Consolidated Appropriations Act). The
continued examination, including a filing one of the two permitted Revised Continuing Appropriations
request for continued examination with continuation applications. Resolution, 2007 (Pub. L. 110–5, 121
a petition under § 1.114(g) that is not The Office is implementing an Stat. 8 (2007)), keeps the patent fee and
grantable, will not stay any period for optional streamlined continuation fee structure provisions of the
reply or other proceedings. This is application procedure under which an Consolidated Appropriations Act, 2005,
consistent with the current practice for applicant may have a continuation in effect during fiscal year 2007 (until
requests for continued examination. See application placed on an examiner’s September 30, 2007).
MPEP § 706.07(h), subsection V (the amended (Regular Amended) docket Section 1.117 is added to implement
mere request for continued examination (see discussion of § 1.78(d)(1)(i)). Thus, this provision of the Consolidated
and fee will not operate to toll the an applicant may effectively obtain the Appropriations Act. Section 1.117(a)
running of any time period set in the docketing benefit (i.e., being placed on provides that if an amendment
previous Office action for reply to avoid an examiner’s amended (Regular canceling a claim is filed before an
abandonment of the application). Amended) docket) of a second and third examination on the merits has been
The Office proposed § 1.114(f) to request for continued examination made of the application, the applicant
include: ‘‘[a]ny other proffer of a request without a petition under § 1.114(g) by may request a refund of any fee under
for continued examination in an requesting that the two continuation § 1.16(h), (i), or (j) or under § 1.492(d),
application not on appeal will be treated applications permitted under (e), or (f) paid on or after December 8,
as a submission under § 1.116. Any § 1.78(d)(1)(i) be treated under the 2004, for such claim. Thus, if an
other proffer of a request for continued optional streamlined continuation applicant decides to cancel the claims
examination in an application on appeal application procedure. in excess of five independent claims
will be treated only as a request to The changes to § 1.114 apply to any and in excess of twenty-five total claims
withdraw the appeal.’’ See Changes to application in which a request for rather than provide an examination
Practice for Continuing Applications, continued examination is filed on or support document in compliance with
Requests for Continued Examination after November 1, 2007. Thus, a request § 1.265, the applicant may request a
Practice, and Applications Containing for continued examination filed on or refund of any fee for such claim that is
Patentably Indistinct Claims, 71 FR at after November 1, 2007, in an paid on or after December 8, 2004.
61, 1302 Off. Gaz. Pat. Office 1329. This application in which a request for Section 1.117(a) as adopted, however,
final rule does not adopt that proposed continued examination has previously does not require that the amendment
change because it is unnecessary. been filed, in a continuation or have been filed in reply to a notice
Section 1.116 applies only to continuation-in-part application of an under § 1.75(b)(3). Section 1.117(a)
amendments, affidavits, and other application in which a request for requires only that the amendment have
evidence filed after the mailing of a final continued examination has previously been filed before an examination on the
merits has been made of the application. within two months from the date on claims or more than twenty-five total
The Consolidated Appropriations Act which the claim was canceled, the claims. See § 1.135(c).
authorizes a refund only for a claim that Office may retain the excess claims fee Section 1.142 (requirement for
has been canceled before an paid in the application. This two-month restriction): Section 1.142(a) is amended
examination on the merits has been period is not extendable. If an to state that an examiner ‘‘may’’ (rather
made of the application under 35 U.S.C. amendment canceling a claim is not than ‘‘will’’) require restriction if two or
131. The Office thus lacks authority to filed before an examination on the more independent and distinct
grant a refund either on the basis of: (1) merits, the Office will not refund any inventions are claimed in a single
The withdrawal from consideration of a part of the excess claims fee paid in the application. The change is for
claim directed to a non-elected application except as provided in § 1.26. consistency with current Office practice
invention or species; or (2) the The provisions of § 1.117(b) as under which a requirement that an
cancellation of a claim after an proposed are duplicative of the application containing claims to two or
examination on the merits has been provisions of § 1.138(d) and have not more independent and distinct
made of the application under 35 U.S.C. been adopted as unnecessary. inventions be restricted to a single
131. Section 1.117(a) also provides that The patent fee provisions of the invention is discretionary (see 35 U.S.C.
if an amendment adding one or more Consolidated Appropriations Act expire 121 and MPEP § 803.01). An application
claims is also filed before the (in the absence of additional legislation) containing claims to two or more
application has been taken up for on September 30, 2007 (at the end of independent and distinct inventions
examination on the merits, the Office fiscal year 2007). Therefore, in the typically is not restricted to a single
may apply any refund under § 1.117 to absence of subsequent legislation, the invention if the search and examination
any excess claims fees due as a result of refund provision in § 1.117 will likewise of all of the claims in the application
such an amendment. The date indicated expire on September 30, 2007 (at the can be made without serious burden
on any certificate of mailing or end of fiscal year 2007), regardless of (see MPEP section 803).
transmission under § 1.8 will not be Section 1.142(c) is added to permit
the date on which the excess claims fee
taken into account in determining applicants to suggest requirements for
was paid.
whether an amendment canceling a restriction. Specifically, § 1.142(c)
Section 1.136 (extensions of time): provides that if two or more
claim was filed before an examination
Section 1.136(a)(1) is amended to add independent and distinct inventions are
on the merits has been made of the
‘‘[t]he reply is to a notice requiring claimed in a single application, the
application.
•‘‘[A]n examination on the merits has compliance with § 1.75(b) or § 1.265’’ to applicant may file a suggested
been made of the application’’ for the enumerated list of replies to which requirement for restriction under
purposes of § 1.117(a) once a first Office the extension of time provision of § 1.142(c). Any suggested requirement
action on the merits, notice of § 1.136(a) is not applicable. A notice for restriction must be filed before the
allowability or allowance, or action under § 1.75(b)(3) is a ‘‘notice requiring earlier of the first Office action on the
under Ex parte Quayle is shown in the compliance with § 1.75(b).’’ A ‘‘notice merits or an Office action that contains
Patent Application Locating and requiring compliance with § 1.75(b)’’ a requirement to comply with the
Monitoring (PALM) system as having would include a notice mailed before requirement of unity of invention under
been counted. For purposes of the issuance of a first Office action on PCT Rule 13 or a requirement for
§ 1.117(a), ‘‘before’’ means at least one the merits setting a two-month time restriction under 35 U.S.C. 121 in the
day before. If an amendment canceling period within which the applicant must: application. It must also be
a claim is filed and an Office action is (1) File an examination support accompanied by an election without
counted on the same day, the document in compliance with § 1.265; traverse of an invention to which there
amendment canceling a claim was not or (2) amend the application such that are no more than five independent
filed before an examination on the it contains no more than five claims and no more than twenty-five
merits has been made of the application. independent claims and no more than total claims, and must identify the
The Patent Application Information twenty-five total claims. A ‘‘notice claims to the elected invention. Claims
Retrieval (PAIR) system is a system that requiring compliance with § 1.75(b)’’ to the non-elected invention, if not
provides public access to PALM for would also include a notice issued after canceled, will be withdrawn from
patents and applications that have been a first Office action on the merits in an further consideration by the examiner. If
published. The PAIR system does not application in which the applicant is the examiner accepts the suggested
provide public access to information given a time period within which the restriction, then the claims to the non-
concerning applications that are applicant must amend the application elected invention, if not canceled by the
maintained in confidence under 35 such that it contains no more than five applicant, will be withdrawn from
U.S.C. 122(a). Applicants, however, may independent claims and no more than further consideration by the examiner.
use the private side of PAIR to access twenty-five total claims. For example, if See the discussion of §§ 1.75(b)(5) and
confidential information about their a reply to a non-final Office action on 1.78(d)(1)(ii).
pending application. To access the the merits seeks to amend an Section 1.75(b)(3)(iii) as proposed
private side of PAIR, a customer number application such that it contains more would have permitted applicants to
must be associated with the than five independent claims and more reply to a notice from the Office that an
correspondence address for the than twenty-five total claims, the reply application contains more than ten
application, and the user of the system would be held non-responsive and (if representative claims (under certain
must have a digital certificate. For the non-compliance with § 1.75(b) conditions) by submitting a suggested
further information, contact the appears to have been inadvertent) the requirement for restriction accompanied
Customer Support Center of the Office would give the applicant a two- by an election without traverse of an
Electronic Business Center at (571) 272– month time period that was not invention to which there are no more
4100 or toll free at (866) 217–9197. extendable under § 1.136(a) within than five independent claims and no
Section 1.117(b) (§ 1.117(c) as which to provide an amendment that more than twenty-five total claims. See
proposed) provides that if a request for does not result in the application Changes to Practice for the Examination
refund under this section is not filed containing more than five independent of Claims in Patent Applications, 71 FR
at 64, 67–68, 1302 Off. Gaz. Pat. Office § 1.145 applies only after a first Office www.uspto.gov/web/patents/
1331, 1334. However, because the action on the merits. accelerated/. The Office will provide
‘‘representative claims’’ examination Section 1.265 (examination support similar guidelines for examination
approach is not adopted in this final document): Section 1.265 is added to set support document under § 1.265 and
rule, this proposed provision of forth what an ‘‘examination support will post such guidelines on the Office’s
§ 1.75(b)(3)(iii) is unnecessary. In this document’’ entails. An examination Internet Web site.
final rule, applicants may file a support document is required under Section 1.265(a)(1) provides that an
suggested requirement for restriction § 1.75(b)(1) when an applicant presents examination support document must
accompanied by an election without more than five independent claims or include a statement that a
traverse (§ 1.142(c)) of an invention to more than twenty-five total claims in an preexamination search in compliance
which there are no more than five application. See § 1.75(b)(1) and the with § 1.265(b) was conducted. The
independent claims and no more than discussion of § 1.75(b)(1). Section examination support document must
twenty-five total claims without first 1.265(a) sets forth the requirements for identify (in the manner set forth in
awaiting a notice from the Office under an examination support document. MPEP § 719.05) the field of search by
§ 1.75(b)(3). Section 1.265(b) provides for the class and subclass and the date of the
Section 1.142(c) further provides that requirements of the preexamination search, where applicable. For database
if the applicant’s suggested requirement search required under § 1.265(a)(1). searches, the examination support
for restriction is accepted, the restriction Section 1.265(c) provides for the document must identify the search logic
requirement will be set forth in a requirements of the listing of references or chemical structure or sequence used
subsequent Office action. Any claim to required under § 1.265(a)(2). Section as a query, the name of the file or files
the non-elected invention or inventions, 1.265(d) provides for certain situations searched and the database service, and
if not canceled, is by the election in which a supplemental examination the date of the search.
withdrawn from further consideration. support document is required when Section 1.265(a)(2) provides that an
applicant files an information disclosure examination support document must
If the suggested requirement for
statement citing additional references. include a listing in compliance with
restriction is refused, the applicant will
Section 1.265(e) provides for situations § 1.265(c) of the reference or references
be notified in an Office action. That
in which the examination support deemed most closely related to the
Office action may include, a notice subject matter of each of the claims
document is insufficient. Section
under § 1.75(b)(3) requiring applicant to (whether in independent or dependent
1.265(f) provides an exemption to
file an examination support document form). The references that would be
applications filed by a small entity as
or amend the application to contain no most closely related to the subject
defined by the Regulatory Flexibility
more than five independent claims or matter of each of the claims include: (1)
Act (5 U.S.C. 601 et seq.). The
no more than twenty-five total claims. If A reference that discloses the most
exemption is for the requirement in
an applicant’s suggested restriction number of limitations in an
§ 1.265(a)(3) that an examination
requirement is refused, the examiner support document must include an independent claim; (2) a reference that
may make a different restriction identification of all of the claim discloses a limitation of an independent
requirement or make no restriction limitations (whether in independent or claim that is not shown in any other
requirement. 35 U.S.C. 121 authorizes, dependent form) that are disclosed by reference in the listing of references
but does not compel, the Director to the cited references. required under § 1.265(a)(2); and (3) a
require that an application containing Section 1.265 contains fewer reference that discloses a limitation of a
two or more independent and distinct requirements than an accelerated dependent claim that is not shown in
inventions be restricted to one of the examination support document under any other reference in the listing of
inventions. A decision not to restrict an the revised procedures for certain references required under § 1.265(a)(2).
application to a single invention is not petitions to make special (see Changes References that are only relevant to the
an action or requirement within the to Practice for Petitions in Patent general subject matter of the claims
meaning of § 1.181(a). Thus, any review Applications To Make Special and for would not be most closely related to the
of an examiner’s requirement for Accelerated Examination, 71 FR 36232 subject matter of each of the claims if
restriction that differs from a suggested (June 26, 2006), 1308 Off. Gaz. Pat. there are other references that are
restriction requirement will only Office 106 (July 18, 2006) (notice)). For deemed to be more closely related to the
concern the appropriateness of the example, § 1.265 does not require that subject matter of the claims.
examiner’s restriction requirement and the examination support document It is envisioned that the reference or
will not address the appropriateness of identify any cited references that may be references presented as being most
the applicant’s suggested restriction disqualified as prior art under 35 U.S.C. closely related to the subject matter of
requirement or compare the examiner’s 103(c) as amended by the Cooperative the claims will generally be references
restriction requirement and the Research and Technology Act (although that result from the preexamination
suggested restriction requirement. applicants are encouraged to identify search provided for in § 1.265(a)(1). The
Section 1.145 (subsequent any cited references that may be so preexamination search provided for in
presentation of claims for different disqualified). Thus, the Office’s § 1.265(a)(1) should result in the
invention): Section 1.145 is amended to guidelines concerning the accelerated reference or references that are most
state that an applicant ‘‘may’’ (rather examination support document may be closely related to the subject matter of
than ‘‘will’’) be required to restrict the helpful to applicants who are preparing the claims. However, an applicant may
claims to the invention previously an examination support document not exclude a reference from an
claimed if, after an Office action on an under § 1.265. The guidelines under the examination support document simply
application, the applicant presents revised accelerated examination because the reference was not the result
claims directed to an invention distinct procedure, search templates, and of the preexamination search provided
from and independent of the invention samples of a preexamination search for in § 1.265(a)(1). The reference, for
previously claimed (see discussion of document and an examination support instance, may have been brought to
§ 1.142(a)). Section 1.145 is amended to document can be found on the Office’s applicant’s attention via a foreign or
add ‘‘on the merits’’ to clarify that Internet Web site at http:// PCT search report. References that have
been brought to the applicant’s attention and the explanation required by action if the examiner determines that
regardless of the source of those § 1.265(a)(4) may be set out in a single such an interview would advance
references must be considered in spreadsheet with two columns, or may prosecution. See Provisions for Claiming
identifying the reference or references be set out in two spreadsheets. A the Benefit of a Provisional Application
most closely related to the subject general statement that all of the claim With a Non-English Specification and
matter of each of the claims. limitations are not described in a single Other Miscellaneous Matters, 70 FR at
Section 1.265(a)(3) provides that an reference does not satisfy the 56121, 56128, 1299 Off. Gaz. Pat. Office
examination support document must, requirements of § 1.265(a)(4). Section at 144, 150. Applicant may request an
for each reference in the listing of 1.265(a)(4) requires that the examination interview before the first Office action.
references required under § 1.265(a)(2), support document set out with Such a request is ordinarily granted in
identify all of the limitations of each of particularity, by reference to one or a continuing application or if the
the claims (whether in independent or more specific claim limitations, why the examiner determines that the interview
dependent form) that are disclosed by claimed subject matter is not described would advance prosecution. See
the reference. Applicant may satisfy this in the references, taken as a whole. The § 1.133(a)(2) and MPEP § 713.02.
requirement either by mapping the applicant must explain why a person of Section 1.265(b) provides that the
limitations of each of the claims to the ordinary skill in the art would not have preexamination search must involve
references or by mapping the references combined the features disclosed in one U.S. patents and patent application
to the limitations of the claims. reference with features disclosed in publications, foreign patent documents,
Applicants may map the limitations of another reference to arrive at the and non-patent literature, unless the
each of the claims to the references by, claimed subject matter. The applicant applicant can justify with reasonable
for each claim, identifying where the must also explain why the claim certainty that no references more
cited references disclose features, limitations referenced render the pertinent than those already identified
showings, or teachings that are relevant claimed subject matter novel and non- are likely to be found in the eliminated
to each limitation of such claim. obvious over the cited prior art. source. That justification must be
Applicants may map the references to Section 1.265(a)(5) provides that an included in the statement required by
the limitations of the claims by, for each examination support document must § 1.265(a)(1). Section 1.265(b) also
cited reference, identifying where the include a showing of where each provides that the preexamination search
reference discloses features, showings, limitation of the claims (whether in must encompass all of the limitations of
or teachings that are relevant to the independent or dependent form) finds the independent claims. It must also
limitations of each of the claims. support under 35 U.S.C. 112, ¶ 1, in the encompass all of the limitations of the
Section 1.265(a)(3) requires the written description of the specification. dependent claims separately from the
applicant to identify at least one If the application claims the benefit of claim or claims from which they
appearance in the reference (a one or more applications under title 35, depend. The claims must be given the
representative portion) of a specific United States Code, the showing must broadest reasonable interpretation. A
feature, showing, or teaching for which also include where each limitation of search report from a foreign patent
the reference is being cited. If the the claims finds support under 35 office will not automatically satisfy the
feature, showing, or teaching appears in U.S.C. 112, ¶ 1, in each such application requirement in § 1.265(a)(1) for a
more than one portion of the reference, in which such support exists. For preexamination search unless it
applicant would not need to specifically means- (or step-) plus-function claim includes the information required by
point out more than one occurrence. elements under 35 U.S.C. 112, ¶ 6, this § 1.265.
Applicant, however, should do so where requires: (1) That the claim limitation be Section 1.265(c) provides for the
the additional appearance may not be identified as means- (or step-) plus- content requirements of the listing of
apparent to the examiner and may have function claim element under 35 U.S.C. references required under § 1.265(a)(2)
some additional significance over its 112, ¶ 6; and (2) that the structure, as part of an examination support
first identified appearance. If an material, or acts in the specification that document. Section 1.265(c) provides the
applicant recognizes that a document is correspond to each means- (or step-) same content requirements as those that
relevant for more than one feature, plus-function claim element under 35 are currently provided in §§ 1.98(a) and
showing, or teaching, the applicant U.S.C. 112, ¶ 6, be identified. See (b). Specifically, § 1.265(c) provides that
would need to specifically identify each Changes to Practice for Petitions in the listing of references required under
additional feature, showing, or teaching Patent Applications To Make Special § 1.265(a)(2) as part of an examination
and the portion where the feature, and for Accelerated Examination, 71 FR support document must include a list
showing, or teaching appears in the at 36325, 1308 Off. Gaz. Pat. Office at identifying each of the cited references
document. A mere statement indicating 107. (§§ 1.265(c)(1) and (c)(2)), a copy of each
that the entire reference, or substantially If the examiner, after considering the reference except for references that are
the entire reference, is relevant would application and any examination U.S. patents or U.S. patent application
not comply with § 1.265(a)(3). support document, still has questions publications (§ 1.265(c)(3)), and each
Section 1.265(a)(4) provides that an concerning the invention or how the English language translation if required
examination support document must claims define over the prior art or are by § 1.265(c)(4). Applicant may use the
include a detailed explanation patentable, the examiner may request an USPTO form, ‘‘Examination Support
particularly pointing out how each of interview before the first Office action. Document Listing of References,’’ to
the independent claims is patentable If the applicant declines such a request submit the listing of references. The
over the references cited in the listing of for an interview or if the interview does form will be available on the Office’s
references required under § 1.265(a)(2). not result in the examiner obtaining the Internet Web site at http://
The explanation required by necessary information, the examiner www.uspto.gov/web/forms/
§ 1.265(a)(4) may be set forth together may issue a requirement for information index.html#patent.
with the identification required by under § 1.105 to obtain such Section 1.265(c)(1) provides that the
§ 1.265(a)(3) or may be provided information. Section 1.133(a)(2) was list of cited references must group U.S.
separately. For example, the amended in November of 2005 to permit patents and U.S. patent application
identification required by § 1.265(a)(3) an interview before the first Office publications (including international
applications designating the United examination support document or With respect to the business or other
States) in a section separate from other preexamination search is deemed to be concerns defined in § 1.265(f)(1), the
references. Section 1.265(c)(1) also insufficient; or (2) the claims have been Regulatory Flexibility Act provides that
provides that each page of the list of the amended such that the examination ‘‘the term ‘small business’ has the same
cited references must include: (1) The support document no longer covers each meaning as the term ‘small business
application number, if known, of the claim. The notice will give the applicant concern’ under section 3 of the Small
application in which the examination a two-month time period within which Business Act, unless an agency, after
support document is being filed; (2) a the applicant must either file a corrected consultation with the Office of
column that provides a space next to or supplemental examination support Advocacy of the Small Business
each cited reference for the examiner’s document or amend the application Administration and after opportunity
initials; and (3) a heading that clearly such that it contains no more than five for public comment, establishes one or
indicates that the list is part of an independent claims and no more than more definitions of such term which are
examination support document listing twenty-five total claims in order to appropriate to the activities of the
of references. avoid abandonment. Section 1.265(e) agency and publishes such definition(s)
Section 1.265(c)(2) provides that the further provides that this two-month in the Federal Register.’’ See 5 U.S.C.
list of cited references must identify period is not extendable under 601(3). The Office has established the
each cited reference as follows: (1) Each § 1.136(a). standard set forth in 13 CFR 121.802 for
U.S. patent must be identified by first Section 1.265(f) provides an paying reduced patent fees as the
named patentee, patent number, and exemption from the requirement in definition of ‘‘small business’’ for
issue date; (2) each U.S. patent Regulatory Flexibility Act purposes
§ 1.265(a)(3) that an examination
application publication must be with respect to patent-related
support document must, for each
identified by applicant, patent regulations. Therefore, a ‘‘small
reference cited in the listing of
application publication number, and business’’ for Regulatory Flexibility Act
references required under § 1.265(a)(2),
publication date; (3) each U.S. purposes with respect to patent-related
include an identification of all of the
application must be identified by the regulations is a business or other
limitations of each of the claims
applicant, application number, and concern: (1) Whose number of
(whether in independent or dependent
filing date; (4) each foreign patent or employees, including affiliates, does not
form) that are disclosed by the reference
published foreign patent application exceed 500 persons; and (2) which has
that applies to applications by a small
must be identified by the country or not assigned, granted, conveyed, or
patent office which issued the patent or entity as defined by the Regulatory
licensed (and is under no obligation to
published the application, an Flexibility Act (5 U.S.C. 601 et seq.).
do so) any rights in the invention to any
appropriate document number, and the The Regulatory Flexibility Act defines a
person who made it and could not be
publication date indicated on the patent ‘‘small entity’’ as a ‘‘small business’’ as
classified as an independent inventor,
or published application; and (5) each defined in 5 U.S.C. 601(3), a ‘‘small
or to any concern which would not
publication must be identified by organization’’ as defined in 5 U.S.C.
qualify as a non-profit organization or a
publisher (e.g., name of journal), author 601(4), and a ‘‘small governmental small business concern under this
(if any), title, relevant pages of the jurisdiction’’ as defined 5 U.S.C. 601(5). definition.
publication, publication date, and place See 5 U.S.C. 601(6). Section 1.265(f) With respect to the not-for-profit
of publication. specifically provides that an enterprises defined in § 1.265(f)(2), the
Section 1.265(c)(4) provides that if a examination support document, or a Regulatory Flexibility Act provides that
non-English language document is being corrected or supplemental examination ‘‘the term ‘small organization’ means
cited, any existing English language support document, is not required to any not-for-profit enterprise which is
translation of the non-English language comply with the requirements set forth independently owned and operated and
document must be submitted if the in § 1.265(a)(3) if the examination is not dominant in its field, unless an
translation is within the possession, support document is accompanied by a agency establishes, after opportunity for
custody, or control of, or is readily certification that any rights in the public comment, one or more
available to any individual identified in application have not been assigned, definitions of such term which are
§ 1.56(c). granted, conveyed, or licensed, and appropriate to the activities of the
Section 1.265(d) provides for a there is no obligation under contract or agency and publishes such definition(s)
supplemental examination support law to assign, grant, convey, or license in the Federal Register.’’ See 5 U.S.C.
document. If an information disclosure any rights in the application, other than 601(4). The Office has not established
statement is filed in an application in a security interest that has not been any definition of ‘‘small organization’’
which an examination support defaulted upon, to any entity other than for Regulatory Flexibility Act purposes
document is required and has been a business or other concern as defined with respect to patent-related
filed, the applicant must also file a in § 1.265(f)(1), a not-for-profit regulations. Therefore, a ‘‘small
supplemental examination support enterprise as defined in § 1.265(f)(2), or organization’’ for Regulatory Flexibility
document addressing the references a government as defined in § 1.265(f)(3). Act purposes with respect to patent-
cited in the information disclosure A business or other concern which related regulations is a not-for-profit
statement in the manner required under meets the definition set forth in enterprise which is independently
§§ 1.265(a)(3) and (a)(4), unless the § 1.265(f)(1), a not-for-profit enterprise owned and operated and is not
information disclosure statement cites that meets the definition set forth in dominant in its field.
only references that are less closely § 1.265(f)(2), or a government that meets With respect to the governments
related to the subject matter of one or the definition set forth in § 1.265(f)(3) defined in § 1.265(f)(3), the Regulatory
more claims than the references cited in may make the certification provided for Flexibility Act provides that ‘‘the term
the examination support document in § 1.265(f) regardless of whether the ‘small governmental jurisdiction’ means
listing of references required under business or other concern, not-for-profit governments of cities, counties, towns,
§ 1.265(a)(2). enterprise, or government is located in townships, villages, school districts, or
Section 1.265(e) provides that the or operates primarily in the United special districts, with a population of
applicant will be notified if: (1) The States. less than fifty thousand, unless an
agency establishes, after opportunity for processing or examination of an abandonment of the application. The
public comment, one or more application because the Office must abandonment of an application results
definitions of such term which are issue a notice and await the applicant’s in the period of adjustment set forth in
appropriate to the activities of the reply before examination of the § 1.703 (if any) being reduced under
agency and which are based on such application may begin. Therefore, § 1.704(c)(3).
factors as location in rural or sparsely § 1.704(c) provides for a reduction of III. Response to Comments
populated areas or limited revenues due any patent term adjustment when there
to the population of such jurisdiction, is a failure to comply with § 1.75(b). As discussed previously, the Office
and publishes such definition(s) in the Specifically, any patent term adjustment published notices in January of 2006
Federal Register.’’ See 5 U.S.C. 601(5). will be reduced by the number of days proposing: (1) Changes to practice for
The Office has not established any in the period between the following continuing applications, requests for
definition of ‘‘small governmental beginning and ending dates. The continued examination, and
jurisdiction’’ for Regulatory Flexibility beginning date of the period is the day applications containing patentably
Act purposes with respect to patent- after the date that is the later of: (1) The indistinct claims; and (2) changes to the
related regulations. Therefore, a ‘‘small filing date of the amendment resulting practice for the examination of claims in
governmental jurisdiction’’ for in the noncompliance with § 1.75(b); (2) patent applications. See Changes to
Regulatory Flexibility Act purposes four months from the filing date of the Practice for Continuing Applications,
with respect to patent-related application in an application under 35 Requests for Continued Examination
regulations is a government of a city, U.S.C. 111(a); or (3) four months from Practice, and Applications Containing
county, town, township, village, school the date on which the national stage Patentably Indistinct Claims, 71 FR at
district, or special district, with a commenced under 35 U.S.C. 371(b) or 48–61, 1302 Off. Gaz. Pat. Office 1318–
population of less than fifty thousand. (f) in an application which entered the 29, and Changes to Practice for the
An entity that meets the definition of national stage from an international Examination of Claims in Patent
a small entity set forth in § 1.27 for application after compliance with 35 Applications, 71 FR 61–69, 1302 Off.
paying reduced patent fees may or may U.S.C. 371. The ending date of the Gaz. Pat. Office 1329–35. The Office
not meet one of the definitions under period is the filing date of: (1) An received over five hundred written
§§ 1.265(f)(1) through (f)(3) to make a examination support document in comments (from government agencies,
certification under § 1.265(f). The Office compliance with § 1.265; (2) an election universities, intellectual property
will not give advisory opinions as to organizations, industry, law firms,
responsive to an Office-issued
whether or not a specific individual or individual patent practitioners, and the
requirement for restriction including an
entity meets the definitions under general public) in response to this
election of species that places the
§§ 1.265(f)(1) through (f)(3) to make a notice. The comments and the Office’s
application in compliance with § 1.75(b)
certification under § 1.265(f). Questions responses to the comments follow:
(e.g., the election of an invention that is
related to standards for small business drawn to five or fewer independent A. Changes to Continuing Application
concerns, not-for-profit enterprises, or claims and twenty-five or fewer total Practice
governments may be directed to: Small claims that would obviate the need for
Business Administration, Size Comment 1: A number of comments
an examination support document stated that the changes in the definitions
Standards Staff, 409 Third Street, SW., under § 1.265); (3) an amendment
Washington, DC 20416. of continuation, divisional, and
resulting in compliance with § 1.75(b) continuation-in-part applications set
Section 1.495 (entering the national
(e.g., amending the application to forth in § 1.78(a) are likely to confuse
stage in the United States of America):
contain five or fewer independent the public and examiners and that the
Section 1.495(g) provides that if the
documents and fees contain conflicting claims and twenty-five or fewer total Office has not identified any value that
indications as to whether the claims); (4) a suggested requirement for would result from these changes.
submission is an application under 35 restriction under § 1.142(c) Several comments suggested that further
U.S.C. 111 or a submission to enter the accompanied by an election without guidance was needed to resolve
national stage under 35 U.S.C. 371, the traverse of an invention to which there ambiguities as to whether an application
documents and fees will be treated as a are no more than five independent is a divisional or continuation
submission to enter the national stage claims and no more than twenty-five application. One comment argued that
under 35 U.S.C. 371. It is Office total claims. the requirement to identify the
experience that, in most cases, The examiner’s acceptance of a relationship of the applications could
documents and fees that contain such suggested requirement for restriction create hardship when it is unclear
conflicting indications were intended as accompanied by an election without whether the changes to the specification
submissions under 35 U.S.C. 371. traverse of an invention to which there or claims make the application a
Section 1.704 (reduction of period of are no more than five independent continuation, divisional, or
adjustment of patent term): Section claims and no more than twenty-five continuation-in-part application.
1.704(c) is amended to provide the total claims would be sufficient to Response: The definitional changes
patent term adjustment consequences of obviate the need for an examination are necessary in order to clearly define
a failure to comply with § 1.75(b) (e.g., support document under § 1.265. If the the conditions for claiming benefit of
a failure to file an examination support suggested requirement for restriction is prior-filed applications under
document in compliance with § 1.265 not accepted, the applicant will be § 1.78(d)(1). This final rule further
when necessary under § 1.75(b)). Such a notified and given a time period within clarifies the definition of a divisional
failure will be considered a which the applicant must either file an application set forth in § 1.78(a)(2).
circumstance that constitutes a failure of examination support document or Under this final rule, an applicant may
an applicant to engage in reasonable amend the application such that it file a divisional application directed to
efforts to conclude processing or contains no more than five independent a non-elected invention if the prior-filed
examination of an application under 35 claims and no more than twenty-five application is subject to a requirement
U.S.C. 154(b)(2)(C). The failure to total claims. Failure to timely reply to for restriction. The divisional
comply with § 1.75(b) will delay such a notice would result in the application need not be filed during the
pendency of the application subject to a or abandonment of that application. A claims pursued in a continuation of any
requirement for restriction, as long as number of comments suggested that the serial divisional application must be of
the copendency requirement of 35 rule changes limiting divisional the same scope as, or of a narrower
U.S.C. 120 is met. Thus, applicant may applications to claim benefit to only a scope than, the claims presented in that
file a divisional application claiming the single prior-filed application would serial divisional application. One
benefit of the initial application that result in an overall increase in comment also suggested that prior to
was subject to the requirement for application filings and pendency, implementing the rule changes, the
restriction and any intermediate contrary to their intended purpose. The Office should conduct a study to assess
continuing applications. comments contended the changes being the scope of potential divisional filing
Furthermore, the definitions of adopted in this final rule effectively problems by studying the divisional
continuation, divisional, and force applicants to claim all patentably filing habits of large and small entity
continuation-in-part application set distinct inventions in the prior-filed applicants.
forth in § 1.78(a) are substantially the application or file related applications Response: The Office notes the
same as the previous definitions set in parallel in order to preserve potential concerns expressed in the public
forth in the MPEP, except that a patent rights in those inventions. The comment regarding the proposed
divisional application is now defined comments suggested that since a requirement in § 1.78(d)(1)(ii) that a
more narrowly. See the discussion of divisional application must be filed divisional application be filed during
§ 1.78(a). The former practice permitted during the pendency of the prior-filed the pendency of the initial application.
an applicant to file a continuing application, many more divisional In response to those concerns and
application and identify the application applications would be filed than would
suggestions, § 1.78(d)(ii) as adopted in
as a ‘‘divisional’’ application even when this final rule does not require that a
be filed under the current system, as
the prior-filed application was not divisional application be filed during
applicants will not have sufficient time
subject to a requirement for restriction. the pendency of the initial application.
and information to determine whether
Such a continuing application was This final rule permits applicants to file
the invention is worth pursuing. The
called a ‘‘voluntary’’ divisional a divisional application for the claims to
comments stated that, consequently, the
application. Under this final rule, a a non-elected invention if the initial
Office will be forced to examine more
‘‘voluntary’’ divisional application application is subject to a requirement
inventions than it would under current
would instead fall under the definition for restriction, the claims to the non-
practice, wasting both applicants’ and
of a continuation application. Therefore, elected invention are cancelled in the
a continuing application would be a the Office’s resources. A number of initial application, and the divisional
continuation application and not a comments also suggested that the application meets the copendency
divisional (‘‘voluntary’’ divisional) inability to prosecute divisional requirement of 35 U.S.C. 120. That is, an
application if the prior-filed application applications sequentially, thus allowing applicant may file a divisional
was not subject to a requirement for applicants to spread filing and application during the pendency of the
restriction. If the prior-filed application prosecution costs over time and to file application that was subject to a
was subject to a requirement for only those divisional applications that restriction requirement or the pendency
restriction, a continuing application are commercially valuable in view of of any continuing application of such
claiming only a non-elected invention subsequent market development, will application. This final rule also permits
or inventions would be a divisional have a particularly negative impact on applicant to file two continuation
application. It is noted that although the the biotechnology and pharmaceutical applications of a divisional application,
definition of continuation application industries and on small entities. The plus a request for continued
set forth in § 1.78(a)(2) uses the phrase comments suggested that patent rights examination in the divisional
‘‘invention or inventions’’ rather than will be lost due to a lack of funding and application family, without any
‘‘subject matter’’ (as used in the that the increased costs will be justification.
definition of continuation application particularly onerous in certain Comment 3: A number of comments
set forth in MPEP § 201.07), no technologies, e.g., biotechnology and suggested that the rule changes would
substantive difference between these chemical arts, where the Office encourage applicants to file more
terms is intended. The requirement to routinely issues complex restriction petitions challenging restriction
identify the relationship (i.e., requirements, sometimes alleging requirements, thus further burdening
continuation, divisional, or hundreds or thousands of independent the Office.
continuation-in-part) between the prior- and distinct inventions. Several Response: The criteria for making a
filed application and the continuing comments also suggested that the rules restriction requirement remain the
application is not a new requirement should be modified to account for the same. Applicant may still seek review of
under this final rule. This requirement economic impossibility, in many cases, any restriction requirements, if
has been provided in the former of pursuing numerous divisional appropriate. The Office, however, does
§ 1.78(a)(2)(i). Accordingly, the applications simultaneously. One not anticipate any substantial increase
definitions of continuation, divisional, comment also suggested that the need to in the number of petitions seeking
and continuation-in-part application set file multiple stand alone applications or review of restriction requirements. As
forth in § 1.78(a) are not likely to divisional applications at an early stage discussed previously, § 1.78(d)(1)(ii) as
confuse the public or examiners for any in prosecution to cover all embodiments adopted in this final rule does not
extended period. of the invention will cause small require that a divisional application be
Comment 2: A number of comments companies to cut back funding on filed during the pendency of a single
observed the proposed requirement that research in favor of patent prosecution, prior-filed application. This final rule
a divisional application may claim the thus hindering innovation. One permits applicant to file a divisional
benefit of only a single application comment also suggested that the rules application of an application if the
would require that all divisional be revised, consistent with European application is subject to a requirement
applications filed as a result of a Patent Office divisional practice, to for restriction, claims to the non-elected
restriction requirement in a prior-filed permit the serial filing of divisional invention are cancelled in the prior-
application be filed before the patenting applications with the limitation that filed application, and the divisional
application meets the copendency application does not preclude an sought to be entered could not have
requirement of 35 U.S.C. 120. That is, applicant from filing a divisional been previously submitted. Applicant
applicant may file a divisional application under the proposed rule as likewise may file a third or subsequent
application during the pendency of the well as under this final rule. The continuation application with a petition
application that was subject to a condition that ‘‘no request for continued and showing pursuant to
requirement for restriction or the examination under § 1.114 has been § 1.78(d)(1)(vi).
pendency of any continuing application filed in the prior-filed application’’ as Furthermore, applicant may suggest a
of such application. Applicant will have proposed applied only to the filing of requirement for restriction under
sufficient time to determine whether to continuation and continuation-in-part § 1.142(c) if the applicant believes that
file a divisional application directed to applications under proposed two or more independent and distinct
a non-elected invention. § 1.78(d)(1)(i). Compare proposed inventions are claimed in the
Comment 4: Several comments stated §§ 1.78(d)(1)(i) and 1.78(d)(1)(ii). application. See § 1.142(c) and the
that the rule changes do not adequately Furthermore, § 1.78(d)(1) as adopted in discussion of § 1.142(c). In such case,
address the situation where a restriction this final rule contains no conditions § 1.78(d)(1)(ii) provides that an
requirement is made by the examiner in with respect to continuation applicant may file a divisional
a continuing application. The comments applications, divisional applications, or application directed to a non-elected
expressed concern that the rule changes continuation-in-part applications invention that has not been examined if
appear to require applicant to forego all concerning whether a request for the prior-filed application is subject to
but one invention. One comment stated continued examination was filed in the a requirement for restriction. The
that the applicant’s prior application, if initial application or a prior-filed divisional application is not required to
published, may constitute prior art if continuing application. Therefore, the be filed during the pendency of the
benefit to the prior application is not filing of a request for continued application subject to a requirement for
permitted. Another comment suggested examination does not preclude an restriction, as long as the copendency
that concerns over prolonging patent applicant from filing two continuation requirement of 35 U.S.C. 120 is met.
term, abuse or bad faith are not raised or continuation-in-part applications, Section § 1.78(d)(1)(iii) also permits an
where a divisional application is filed as and any divisional application directed applicant to file, without a petition and
a result of a restriction requirement to a non-elected invention that has not showing, two continuation applications
made in the continuing application, and been examined if the prior-filed of a divisional application plus a
that such filings may actually improve application was subject to a requirement request for continued examination in
quality, as the searches performed in the for restriction. the divisional application family.
initial and first continuing application Comment 6: A number of comments Therefore, applicants have sufficient
often provide significant information requested that the Office not limit opportunity to obtain patent protection
and guidance to the examiner in the ‘‘voluntary’’ divisional applications. In on other aspects of the invention.
second continuing application. addition, several comments noted the 35 U.S.C. 121 provides that ‘‘[i]f two
Response: As discussed previously, importance of ‘‘voluntary’’ divisional or more independent and distinct
the Office has modified the proposed applications in protecting important inventions are claimed in one
§ 1.78(d)(1)(ii) in this final rule such inventions the significance of which application, the Director may require
that it does not require a divisional could not reasonably be anticipated the application to be restricted to one of
application to be filed during the when the application was filed. Another the inventions.’’ (Emphasis added.)
pendency of a single prior-filed comment indicated the importance of Thus, 35 U.S.C. 121 authorizes, but does
application. Instead, this final rule ‘‘voluntary’’ divisional applications for not compel, the Director to require that
permits an applicant to file a divisional obtaining quick patents to protect an application containing two or more
application for the claims to a non- applicants’ products from competitors independent and distinct inventions be
elected invention that was not examined while preserving the opportunity to restricted to one of the inventions. The
if the application was subject to a obtain patent protection on other Office typically decides whether to
requirement for restriction, the claims to aspects of the invention. Several issue a restriction requirement when an
the non-elected invention are cancelled comments stated that the standard application contains two or more
in the prior-filed application, and the under § 1.78(d)(1) makes little sense independent and distinct inventions
divisional application meets the when the objective of filing the based upon, inter alia, the burden on
copending requirement of 35 U.S.C. 120. continuing application is to obtain the Office to search and examine more
Therefore, applicant may file a patents on distinct inventions. One of than one invention. See MPEP § 803.
divisional application of a continuing the comments expressed concern that Comment 7: Several comments
application for the claims to a non- each patent is, both by law and suggested that the restriction on a so-
elected invention that has not been regulation, to be directed to a single called ‘‘voluntary’’ divisional
examined if the continuing application invention and that patent applications application would be a major
was subject to a requirement for directed to multiple inventions are divergence from other countries and
restriction. Such a divisional subject to restriction under 35 U.S.C. would not be favorable from the
application may claim the benefit of the 121. viewpoint of promoting global
continuing application that was subject Response: This final rule permits harmonization of patent practices. One
to a requirement for restriction and the applicants to file a so-called comment noted that the Japan Patent
initial application whose benefit is ‘‘voluntary’’ divisional application as a Office (JPO) and the European Patent
claimed in the continuing application. continuation application in compliance Office (EPO) have liberal ‘‘voluntary’’
Comment 5: One comment requested with § 1.78(d)(1)(i) when the prior-filed divisional application rules and have
clarification as to whether a divisional application was not subject to a not reported any evidence of abuse.
application can be filed if a request for requirement for restriction. Under Response: Under this final rule,
continued examination was filed in the § 1.78(d)(1)(i), applicant may file two applicant still has the opportunity to file
initial application. such continuation applications without a so-called ‘‘voluntary’’ divisional
Response: The filing of a request for a petition and showing of why the application except that such an
continued examination in the initial amendment, argument, or evidence application is defined in this final rule
as a continuation application. That is, as application that only includes claims restriction requirement will not be
discussed previously, applicant may file that were non-elected in the prior-filed withdrawn. Also, as discussed
a ‘‘voluntary’’ divisional application as application to prevent new claims from previously, applicants cannot rely upon
a continuation application in being filed in the divisional application, a requirement for restriction to avoid the
compliance with § 1.78(d)(1)(i) when thus further increasing the numbers of requirement for an examination support
the prior-filed application was not claims that examiners have to examine. document where: (1) The applicant
subject to a requirement for restriction. Response: Such a requirement is traverses the requirement for restriction;
Specifically, under § 1.78(d)(1)(i), unnecessary because applicant may (2) the requirement for restriction may
applicant may file two continuing amend the non-elected claims that have be conditional, such as a requirement
applications of an initial application been filed in the divisional application for election of species in an application
without a petition and showing and during the course of prosecution of the that contains a claim that is generic to
then may file a third or subsequent divisional applications as the prior art is all of the claimed species (see MPEP
continuation with a petition and developed and/or to correct formal § 809), or a requirement for restriction in
showing under § 1.78(d)(1)(vi). matters. Section § 1.78(d)(1)(ii) as an application that contains a linking
Accordingly, this final rule is not a adopted in this final rule permits an claim (e.g., a subcombination claim
major divergence from the ‘‘voluntary’’ applicant to file a divisional application linking plural combinations); or (3) the
divisional practice available in other directed to a non-elected invention that applicant plans to request rejoinder of
countries. has not been examined that was subject the claims to the non-elected invention
Moreover, under the PCT and the to a requirement for restriction in the (see MPEP § 821.04 et seq.). Under
Paris Convention, the determination of prior-filed application. Therefore, §§ 1.78(a)(2) and 1.78(d)(1)(ii), the prior-
the conditions and effect of internal applicant may present claims in the filed application to which a divisional
(domestic) priority claims is a matter for divisional application that are different application claims the benefit must be
the authority concerned. See, e.g., PCT than the claims in the prior-filed subject to a requirement to comply with
Article 8(2)(b) and Article 4(G)(2) of the application if the claims in the the requirement of unity of invention
Paris Convention. Efforts in recent years divisional application are directed to under PCT Rule 13 or a requirement for
to harmonize substantive patent law the subject matter of the non-elected restriction under 35 U.S.C. 121 and the
have not focused on achieving invention. invention claimed in the divisional
harmonization on domestic priority. Comment 10: One comment expressed application must not have been elected
(See http://www.wipo.int/patent/law/ concern that the Office may pressure for examination and must not have been
en/harmonization.htm for further examiners to limit the issuance of examined in any prior-filed application.
information). restrictions in order to reduce the Thus, a divisional application will be
Comment 8: Several comments number of applications to be examined, improper when the claims to the non-
suggested that eliminating ‘‘voluntary’’ thus artificially making it look like the
elected invention have not been
divisional applications violates Article pendency rate has gone down. The
cancelled and the requirement for
4G(2) of the Paris Convention. comment requested that the Office
Response: Section 1.78(d) as adopted restriction is withdrawn in the prior-
implement a policy mandating
in this final rule does not eliminate filed application (or when the invention
examiners to issue restrictions when
what has traditionally been referred to claimed in the divisional application
requested by the applicant, except in
as a ‘‘voluntary’’ divisional application. has been examined in the prior-filed
cases where it is clear that such
The second sentence of Article 4G(2) of application). Furthermore, since the
restrictions are not proper.
the Paris Convention provides that each Response: Restriction practice is set claims of the prior-filed application and
country ‘‘shall have the right to forth in Chapter 800 of the MPEP. As the divisional application would be
determine the conditions under which discussed previously, the applicant may drawn to the same invention, both
such division shall be authorized.’’ As suggest a requirement for restriction applications may be subject to a double
discussed previously, a ‘‘voluntary’’ under § 1.142(c) if the applicant believes patenting rejection (see MPEP § 821.04)
divisional application would not meet that two or more independent and and the provisions of 1.75(b)(4)
the definition of divisional application distinct inventions are claimed in the (determining number of claims for
set forth in § 1.78(a)(2), but would application. The examiner may accept purposes of examination support
instead be a continuation application as or refuse the suggested restriction document threshold when multiple
defined in § 1.78(a)(3). If the prior-filed requirement. Alternatively, the applications contain patentably
application is not subject to a examiner may issue a different indistinct claims).
requirement for restriction, the restriction. See the discussion of For example, where claims directed to
applicant may file a ‘‘voluntary’’ § 1.142(c). Either way, it remains a product and to a process of making
divisional application as a continuation important from the standpoint of the and/or using the product are presented
application under the conditions set public interest that no requirements for in the same application and subject to
forth in § 1.78(d)(1)(i). Such a definition restriction are made that might result in a requirement for restriction, the
is consistent with 35 U.S.C. 121. the issuance of two patents for the same applicant may request rejoinder of the
Furthermore, if the prior-filed invention. See MPEP § 803.01. non-elected process claims that depend
application is subject to a requirement Comment 11: One comment from or otherwise require all the
for restriction, § 1.78(d)(1)(ii) provides questioned the status of a divisional limitations of an allowable product
that an applicant may file an application if the restriction claim. See MPEP § 821.04(b). Upon
‘‘involuntary’’ divisional application requirement is withdrawn after filing of rejoinder of claims to a non-elected
directed to a non-elected invention that the divisional application. process invention, the requirement for
has not been examined. Therefore, Response: If a restriction requirement restriction between the elected product
§ 1.78(d) is consistent with Article 4G(2) is made and the applicant cancels the and non-elected process invention is
of the Paris Convention. non-elected claims (and any generic withdrawn. Thus, the rejoinder of non-
Comment 9: One comment suggested claims or other types of linking claims elected process claims after allowance
amending proposed § 1.78(d)(1)(ii) to if present) in the prior-filed application of the elected product claims may result
define a divisional application as an and files a divisional application, the in a prior or subsequently filed
‘‘divisional’’ application not being a benefit to applicant or to the Office Comment 13: Several comments
proper divisional application under associated with continuing this practice. suggested that, if the prior-filed
§§ 1.78(a)(2) and 1.78(d)(1)(ii) because Response: Inconsistent rules for application is abandoned in favor of a
the prior-filed application is no longer continuation applications and continuation-in-part application before
subject to a requirement for restriction. continuation-in-part applications would examination of the prior-filed
Applicant may avoid this problem by likely lead to confusion and create the application, or is filed within a short
canceling the non-elected process potential for abuse. First, there is no time of the prior-filed application, the
claims and claiming them in a reason to treat continuation applications limits on continuing applications
divisional application before rejoinder different from continuation-in-part should not include such continuation-
occurs. In such a situation, because the applications where both fall under in-part applications. Several comments
non-elected claims have been cancelled, § 1.78 and are contemplated by 35 explained that in rapidly advancing
the restriction requirement cannot be U.S.C. 120. Second, there is no reason sciences, continuation-in-part
withdrawn. This will preserve why the Office should maintain the applications are often filed while
applicant’s rights under 35 U.S.C. 121 ability to file an unlimited string of abandoning the prior application in the
and § 1.78(d)(1)(ii). continuation-in-part applications chain before an examination of the
If the applicant chooses to retain the without justification while proceeding merits. Thus, a continuation-in-part
non-elected claims and files a divisional with a change to § 1.78 to require a application is often the first in a series
application claiming the non-elected justification for any third or subsequent to be examined as an initial application.
invention and then the restriction continuation application. Third, if At a minimum, the rules should be
requirement is withdrawn in the prior- applicants could file continuation-in- modified to exclude from counting
filed application, the benefit claim part applications without restriction, prior-filed applications that are
under § 1.78(d)(1)(ii) in the later-filed then they could be used as a tool to abandoned before issuance of a first
divisional application would no longer circumvent this final rule. Thus, the action on the merits.
be proper. Thus, the later-filed Office considers it appropriate to
Response: Section 1.78(d)(1)(v) as
application would not be entitled to the require a justification for any third or
adopted in this final rule addresses the
benefit of the prior-filed application. If subsequent continuing application that
situation in which an applicant files a
applicant still desires to maintain the is a continuation application or a
continuation (or continuation-in-part)
later-filed application, applicant must continuation-in-part application.
The changes in this final rule do not application to correct informalities
delete or correct the benefit claim to
indicate that the application is a impact applicants’ ability to protect rather than completing an application
continuation application if the improvements to the invention for examination under § 1.53. Under
requirements set forth in § 1.78(d)(1)(i) disclosed in a prior-filed application. § 1.78(d)(1)(v), if the prior-filed
can be met. If applicant no longer wants Section 1.78(d)(1)(i) allows an applicant application is abandoned due to the
to maintain the later-filed application, to file two continuation-in-part failure to timely reply to an Office
applicant may abandon the application applications of a prior-filed application notice issued under § 1.53(f)), the
before the examination has been made without a petition and showing. applicant may file ‘‘one more’’
of the application and may request a Applicant may also file any third or continuation application (or
refund of any previously paid search subsequent continuation-in-part continuation-in-part application)
and excess claims fees. application with a petition and without there being a requirement for a
Comment 12: A number of comments showing. Hence, applicants have ample petition and showing under
suggested that limiting continuation-in- opportunity to seek protection for § 1.78(d)(1)(vi). Specifically,
part applications was unnecessary. The improvements. § 1.78(d)(1)(v) provides that a
comments explained that concerns Furthermore, for the continuation-in- continuation application or
associated with continually reopening part application to actually receive the continuation-in-part application is
prosecution do not apply to benefit of the filing date of the prior- permitted if the following conditions are
continuation-in-part applications, filed application, 35 U.S.C. 120 requires met: (1) The application claims benefit
which are usually filed as a result of the that the subject matter of at least one under 35 U.S.C. 120 or 365(c) of a prior-
inventor having developed a significant claim of the continuation-in-part filed nonprovisional application filed
improvement in the invention. One application must be disclosed in the under 35 U.S.C. 111(a), and the prior-
comment stated that limiting prior-filed application in the manner filed nonprovisional application became
continuation-in-part applications will provided by 35 U.S.C. 112, ¶ 1. See abandoned due to the failure to timely
not reduce application filings, but rather Studiengesellschaft Kohle m.b.H, 112 reply to an Office notice issued under
will simply cause applicants to file the F.3d at 1564–65, 42 U.S.P.Q.2d at 1677– § 1.53(f) and does not claim the benefit
application as a new application 78. The term of any patent resulting of any other nonprovisional application
without a benefit claim because the from the continuation-in-part or international application designating
claims of the continuation-in-part application will be measured under 35 the United States of America; (2) the
application are usually directed to the U.S.C. 154(a)(2) from the filing date of application is a continuation
new subject matter and thus not entitled the prior-filed application, even if the application as defined in § 1.78(a)(3) or
to benefit of the parent filing date. continuation-in-part application never a continuation-in-part application as
Several comments suggested that receives any benefit from the prior-filed defined in § 1.78(a)(4) that claims the
continuation-in-part applications are application. See Abbott Labs., 104 F.3d benefit under 35 U.S.C. 120, 121, or
necessary for adequate protection of at 1309, 41 U.S.P.Q.2d at 1537. To 365(c) of no more than three prior-filed
improvements to the invention and that maximize the term of any resulting applications; and (3) any application
these improvements often become the patent, applicant should file the whose benefit is claimed under 35
key feature of an invention that leads to application containing only claims U.S.C. 120, 121, or 365(c) in such
its success. One comment, however, directed to the improvements without nonprovisional application has its
suggested that continuation-in-part claiming the benefit of the prior-filed benefit claimed in no more than two
practice be terminated, because with the application rather than a continuation- other nonprovisional applications. This
twenty-year patent term, there is no in-part application. does not include any divisional
application that satisfies the conditions Response: The Office is neither Comment 17: One comment argued
set forth in § 1.78(d)(1)(ii) or encouraging nor discouraging the filing that requiring applicant to identify
continuation application that claims the of continuation-in-part applications. whether the claims are supported by the
benefit of such divisional application Rather, this final rule treats specification before the examination is
and satisfies the conditions set forth in continuation-in-part applications unfair and unreasonable because it is a
§ 1.78(d)(1)(iii). roughly the same as continuation legal issue that should be determined
For example, applicant may file a applications. That is, applicant is during the prosecution. Another
third continuation (or continuation-in- permitted to file two continuation or comment suggested that the Office
part) application claiming the benefit of continuation-in-part applications of an should, at most, require applicant to
an intervening (second) continuation (or initial application without a petition identify the differences between the
continuation-in-part) application, a first and showing. Applicant is also continuation-in-part application and the
continuation (or continuation-in-part) permitted to file a third or subsequent prior-filed application. Another
application, and a prior-filed continuation or continuation-in-part comment suggested that when a
application without a petition under application with a petition and continuation-in-part application is filed,
§ 1.78(d)(1)(vi), if the prior-filed showing. See § 1.78(d)(1)(i). The only the Office should require the applicant
application became abandoned due to notable difference between the two, to discuss whether the new matter
the failure to timely reply to a Notice to apart from their definitions, is that an added to the specification is inventive
File Missing Parts mailed by the Office applicant may file only a continuation or based on ordinary skill. One
of Initial Patent Examination and does application of a divisional application comment, however, supported the
not claim the benefit of any other and not a continuation-in-part requirement for a continuation-in-part
application. The prior-filed application, application of a divisional application. applicant to identify which claims are
however, must be entitled to a filing See § 1.78(d)(1)(iii). Nevertheless, disclosed in the prior-filed application
date and have paid therein the basic applicants may use continuation-in-part and thus are entitled to the earlier filing
filing fee within the pendency of the applications to correct initial date.
application. See § 1.78(d)(2). applications under this final rule to the Response: Applicants are in the best
Comment 14: One comment suggested extent they were used for this purpose position to identify the effective filing
that the rule changes encourage before this final rule. Furthermore, as date of their claims. Thus, § 1.78(d)(3)
applicants to file two applications, i.e., previously discussed, § 1.78(d)(1)(v) as provides that if an application is
a continuation-in-part application and a adopted in this final rule provides that identified as a continuation-in-part
divisional application, rather than a if an applicant files a continuation (or application, the applicant must identify
single continuation-in-part application, continuation-in-part) application to the claim or claims for which the
where the non-elected invention is correct informalities rather than subject matter is disclosed in the
further developed. The comment stated completing an application for manner provided by 35 U.S.C. 112, ¶ 1,
that this is inefficient for both the Office examination under § 1.53, the applicant in the prior-filed application. Any claim
and applicants. may file ‘‘one more’’ continuation that is not so identified will be treated
Response: The Office appreciates that application (or continuation-in-part as only being entitled to the actual filing
the changes being adopted in this final application) without there being a date of the continuation-in-part
rule do provide some incentive for requirement for a petition and showing application, and subjected to prior art
applicants who seek only to maximize under § 1.78(d)(1)(vi). See based on the actual filing date of the
the number of continuing applications § 1.78(d)(1)(v). continuation-in-part application.
and requests for continued examination Comment 16: One comment suggested Whether any ‘‘new matter’’ is
permitted without any justification to that the Office should require applicants inventive or based on ordinary skill is
file both a continuation-in-part to certify that no 35 U.S.C. 102(b) bar not determinative of whether the claims
application and a divisional application applies for continuation-in-part of the continuation-in-part application
in this situation. However, applicants applications filed more than twelve are entitled to the filing date of the
seeking to maximize the number of months from the earliest claimed date. prior-filed application. The test is
continued examination filings are not Response: Under § 1.56, applicant has whether the original disclosure of the
likely to file only a single continuation- a duty to disclose to the Office all prior-filed application provides
in-part application in this situation information known to applicant to be adequate support and enablement for
under either the former practice or the material to patentability including any the claimed subject matter of the
change to continuing application prior art under 35 U.S.C. 102(b). This continuation-in-part application in
practice being adopted in this final rule. includes a reference with a publication compliance with the requirement of 35
Furthermore, this final rule permits date more than one year prior to the U.S.C. 112, ¶ 1. See MPEP § 201.11, I,
applicant to file two continuation or filing date of the continuation-in-part Disclosure Requirement.
continuation-in-part applications plus application if at least one claim in the Comment 18: A number of comments
one request for continued examination continuation-in-part application is suggested that the rule changes
in an application family, without any drawn to the subject matter not effectively eliminate the use of ‘‘bypass’’
justification. And, this final rule permits disclosed in the prior-filed application. continuing applications (i.e., an
applicant to file two continuation Applicant is required to file a newly application filed under 35 U.S.C. 111(a)
applications plus one request for executed oath or declaration under that claims benefit under 35 U.S.C. 120
continued examination in the divisional § 1.63 upon the filing of a continuation- or 365(c) of the filing date of an earlier
application family, without any in-part application. See § 1.63(e). The international application that did not
justification. oath or declaration under § 1.63 must enter the national stage under 35 U.S.C.
Comment 15: One comment suggested include a statement that the person 371). The comments argued that a
that continuation-in-part applications making the oath or declaration bypass continuing application would be
are an important tool for correcting acknowledges the duty to disclose to the counted as a continuing application
errors in the initial application (e.g., Office all information known to the whereas a national stage submission
correction of test data) and this should person to be material to patentability as under 35 U.S.C. 371 would not. The
be encouraged, rather than discouraged. defined in § 1.56. See § 1.63(b)(3). comments indicated that there are
important reasons for filing bypass not include any divisional application final rule permits an applicant to file
applications and suggested that it is that satisfies the conditions set forth in two continuation applications or
unfair to treat bypass applications § 1.78(d)(1)(ii) or continuation continuation-in-part applications, plus a
differently than national stage application that claims the benefit of single request for continued
applications because in both such divisional application and satisfies examination in an application family,
applications the examiner will be the conditions set forth in without any justification. Therefore,
examining the claims for compliance § 1.78(d)(1)(iii). under this final rule, applicant is
with U.S. national law for the first time. For example, applicant may file a permitted to have the national stage of
Consequently, a number of comments third continuation application claiming an international application designating
recommended that the international the benefit of an intervening (second) the United States of America claim the
application should not be counted continuation (or continuation-in-part) benefit of a prior-filed nonprovisional
toward the threshold for filing application, the first ‘‘bypass’’ application in which a request for
continuing applications unless the continuation (or continuation-in-part) continued examination has been filed
international application enters the U.S. application, and the prior-filed without a petition and showing. The
national stage, while other comments international application without a provisions of § 1.78(d)(1) are
recommended that the bypass petition under § 1.78(d)(1)(vi), if a independent of the provisions of
application should not be counted. Demand has not been filed and the basic § 1.114. The filing of a request for
Response: The Office notes the national fee has not been paid in the continued examination in a
international application, and the nonprovisional application does not
concerns expressed in the public
international application does not claim preclude a U.S. national stage
comment regarding the proposed
the benefit of any other nonprovisional application from claiming the benefit of
changes to § 1.78(d)(1). The Office has
application or international application the nonprovisional application.
modified proposed § 1.78(d)(1) in this
designating the United States of Likewise, a U.S. national stage
final rule to provide for certain
America. application claiming the benefit under
‘‘bypass’’ continuing applications. Comment 19: Several comments
Under § 1.78(d)(1)(iv), if a Demand has 35 U.S.C. 120 or 365(c) of a
questioned whether an international nonprovisional application will not
not been filed and the basic national fee application that designates the United preclude an applicant from filing a
has not been paid in the international States of America and claims benefit to request for continued examination in
application, and the international a prior nonprovisional application the nonprovisional application.
application does not claim the benefit of would be treated as a second Applicant may also file any additional
any other nonprovisional application or continuation application upon entry continuation or continuation-in-part
international application designating into the U.S. national stage if a request application or request for continued
the United States of America, the for continued examination is filed in the examination with a petition and
applicant may file ‘‘one more’’ nonprovisional application prior to showing. If an international application
continuation application (or entering the national stage. Another that enters the U.S. national stage
continuation-in-part application) of comment questioned whether a request contains or is amended to contain a
such international application without for continued examination could be specific reference to a prior-filed
there being a requirement for a petition filed in a nonprovisional application if application that is not permitted by at
and showing under § 1.78(d)(1)(vi). a U.S. national stage application claims least one of §§ 1.78(d)(1)(i) through
Specifically, § 1.78(d)(1)(iv) provides benefit under 35 U.S.C. 120 or 365(c) to (d)(1)(vi), the Office will refuse to enter,
that a continuation application or the nonprovisional application. Several or will delete if present, the specific
continuation-in-part application is comments suggested that if an reference to the prior-filed application.
permitted if the following conditions are international application designating See § 1.78(d)(1). Furthermore, the
met: (1) The application claims benefit the United States of America claims national stage application will be
under 35 U.S.C. 120 or 365(c) of a prior- benefit to a prior-filed nonprovisional treated as entitled only to the actual
filed international application application, and a request for continued international filing date of the national
designating the United States of examination is filed in the stage application, and will be subject to
America, and a Demand has not been nonprovisional application, then a prior art based on the actual
filed and the basic national fee petition under § 1.78(d)(1)(vi) would be international filing date.
(§ 1.492(a)) has not been paid in the required, in violation of PCT Rule 51bis, Refusal to grant a petition under
prior-filed international application and in order to perfect entry of the § 1.78(d)(1)(vi) (assuming such a
the prior-filed international application international application into the U.S. petition is necessary) would not prevent
does not claim the benefit of any other national stage. The comments also an applicant from completing the
nonprovisional application or suggested that any refusal to grant such requirements for entry into the national
international application designating a petition would violate the PCT phase under 35 U.S.C. 371. The
the United States of America; (2) the because there is no basis in the treaty for requirements for entry of an
application is either a continuation refusing national stage perfection on international application into the
application as defined in § 1.78(a)(3) or such grounds. national phase under 35 U.S.C. 371 are
a continuation-in-part application as Response: The Office notes the set forth in 35 U.S.C. 371(c) and § 1.495.
defined in § 1.78(a)(4) that claims the concerns expressed in the public The effect of a refusal to grant any such
benefit under 35 U.S.C. 120, 121, or comment regarding the proposed petition would only be that the national
365(c) of no more than three (rather than changes to §§ 1.78(d)(1) and 1.114 that stage application would not be entitled
two) prior-filed applications; and (3) would permit an applicant to file only to the benefit of the filing date of the
any application whose benefit is one of the following: A continuation nonprovisional application under 35
claimed under 35 U.S.C. 120, 121, or application, a continuation-in-part U.S.C. 120 and 365(c). Furthermore, the
365(c) in such nonprovisional application, or a request for continued necessity to file a petition under
application has its benefit claimed in no examination, without any justification. § 1.78(d)(1)(vi) in the national stage
more than two (rather than one) other The Office has made modifications to application to obtain benefit to the
nonprovisional applications. This does these proposed changes such that this nonprovisional application would not
violate PCT Rule 51bis. PCT Rule 51bis application from claiming the benefit of as many claims as desired and then
does not govern the requirements that a the nonprovisional application. entering the U.S. national phase after
designated Office may impose for Note that, in the first described the claims have been searched in the
recognition of domestic benefit claims. application chain, the international international phase. The comments
Rather, the ability of a designated Office application claims benefit to a suggested that the Office should
to establish conditions for, and the nonprovisional application under 35 examine all claims in a national stage
effect of, domestic benefit claims is U.S.C. 120 or 365(c) and therefore is a application that were the subject of a
expressly provided for in PCT Article ‘‘continuing application’’ as defined in search and written opinion in the
8(2). PCT Article 8(2) states, in pertinent § 1.78(a). In the second described international phase, particularly if the
part, that ‘‘[w]here, in the international application chain, the international United States Patent and Trademark
application, the priority of one or more application is not a continuing Office was the international searching
national applications filed in or for a application as it only claims benefit to authority.
designated State is claimed, or where the provisional application. In any Response: The requirements of
the priority of an international event, § 1.78(d)(1) as adopted in this § 1.75(b) apply to national stage
application having designated only one final rule would not require a petition applications under 35 U.S.C. 371 as well
State is claimed, the conditions for, and and showing for the national stage as to applications filed under 35 U.S.C.
the effect of, the priority claim in that application to claim the benefit of a 111(a). Thus, the rule cannot be
State shall be governed by the national prior-filed application in which a circumvented by utilizing the PCT
law of that State.’’ request for continued examination has route. The fact that more than five
Comment 20: Several comments been filed. independent claims or more than
suggested that the rules create an Comment 21: One comment argued twenty-five total claims may have been
anomaly. The comments argued that if that applicants who first file a searched and even subjected to
an application is first filed as a nonprovisional application followed by international preliminary examination
nonprovisional application followed by a continuation-in-part application in the international phase will not
an international application claiming would not be able to designate the entitle applicants to more than five
benefit to the nonprovisional United States in any subsequently filed independent claims or more than
application, and a request for continued international application without a twenty-five total claims in the U.S.
examination is subsequently filed in the showing as to why the international national phase application without the
nonprovisional application, then a application could not have been filed submission of an examination support
petition under § 1.78(d)(1)(vi) would be earlier. The comment argued that this document. This is analogous to existing
needed when the international violates the PCT. practice under § 1.499, which permits
application enters the U.S. national Response: The Office has made restriction of claims in a national stage
phase. The comments, however, further modifications to the proposed changes application for lack of unity
argued that if the application is first to § 1.78(d)(1) such that this final rule notwithstanding that such claims may
filed as a provisional application permits an applicant to file two have been searched and subject to
followed by, one year later, concurrently continuation applications or international preliminary examination
filed international and nonprovisional continuation-in-part applications, plus a in the international phase. Applying
applications both claiming benefit to the single request for continued § 1.75(b) to national stage applications is
provisional application, then a petition examination in an application family, appropriate because prior art uncovered
under § 1.78(d)(1)(vi) would not be without any justification. Therefore, during the international search often
needed when the international under this final rule, applicant may file necessitates the need to make
application enters the U.S. national an international application designating substantial amendments to the claims in
phase even if a request for continued the United States of America claiming the national phase. Additionally, the
examination was filed in the the benefit of two prior-filed claims would need to be examined for
nonprovisional application. nonprovisional applications without a compliance with all substantive
Response: The Office has made petition and showing. Applicant may requirements of U.S. national law.
modifications to the proposed changes also file any additional continuation or Comment 23: One comment suggested
to §§ 1.78(d)(1) and 1.114 such that this continuation-in-part application or that the rules limiting continuing
final rule permits an applicant to file request for continued examination with applications would result in more
two continuation applications or a petition and showing. The petition applicants filing international
continuation-in-part applications, plus a procedure under § 1.78(d)(1)(vi) applies applications and entering the U.S.
single request for continued only to international applications that national stage in order to avoid onerous
examination in an application family, have entered the U.S. national stage restriction requirements. Another
without any justification. Therefore, after compliance with 35 U.S.C. 371. comment suggested that the rules
under this final rule, applicant may Thus, the rule neither requires nor limiting the examination of claims
enter the U.S. national stage in an provides for the submission of such might trigger increased usage of the PCT
international application designating petitions in international applications and national stage entry into the U.S.
the United States of America claiming during the international phase. It is also Response: Applicants are free to
the benefit of a prior-filed noted that under PCT Rule 4.9, the choose whichever route they believe is
nonprovisional application in which a designation of all states, including the more advantageous for obtaining patent
request for continued examination has United States of America, in protection in the United States, whether
been filed without a petition and international applications is automatic through the PCT or through a direct
showing. As discussed previously, the upon filing of the PCT request. national filing under 35 U.S.C. 111(a).
provisions of § 1.78(d)(1) are Comment 22: Several comments Comment 24: A number of comments
independent of the provisions of questioned whether the limitation on requested that the Office should notify
§ 1.114. The filing of a request for the examination of claims in the applicant in an Office action when
continued examination in a nonprovisional applications under a continuing application is not available
nonprovisional application does not § 1.75(b) could be circumvented by first under any one of the first three
preclude a U.S. national stage filing an international application with conditions in § 1.78(d)(1). A number of
comments stated that the refusal to enter review of restriction requirements procedural terms. See Boundy v. U.S.
or to delete any references to prior-filed would be filed in order to determine Pat. & Trademark Office, 73 U.S.P.Q. 2d
applications that are not permitted early in the prosecution cycle the 1468, 1472 (E.D. Va. 2004).
under § 1.78(d)(1) would place a heavy number of divisional applications that Comment 26: Several comments
burden on the Office. must be filed to preserve patent rights. stated that any resources saved via
Response: The changes to §§ 1.78 and Response: One of the Office’s goals is implementation of these final rules
1.114 in this final rule are clearly set to focus its limited patent examining would be used for other filings
forth in this final rule. Applicant and resources on the examination of new necessitated by the changes. Thus the
his or her representative have the duty applications, and thereby increase the rule changes, according to the
to know the rules of practice when effectiveness of Office resources while comments, would increase the backlog
prosecuting an application for patent also reducing the backlog of and pendency and add to the
before the Office. Applicant should not unexamined patent applications. The administrative cost and burdens of the
file a continuing application without requirements for seeking third and Office. In particular, a number of
knowing whether it is proper. The subsequent continuing applications will comments predicted that the number of
refusal to enter or to delete any not have an effect on the vast majority applications would increase because
references to prior-filed applications of patent applications. The changes applicants would file more of the
that are not permitted under § 1.78(d)(1) being adopted in this final rule, following: (1) Provisional applications;
would not place any additional burden however, will reduce the strain on the (2) continuation applications rather than
on the Office. Office’s patent examining resources, requests for continued examination; (3)
Comment 25: A number of comments which will allow for a better, more reissue applications to perfect or
argued that the rule changes would timely examination of new applications. broaden claims; (4) reexamination
protract the examination process and The Office recognizes the amount and proceedings to have prior art
divert resources from examining type of resources needed to implement considered; (5) divisional applications
functions to administrative tasks. In the changes to §§ 1.78 and 1.114 being (because applicants are required to file
particular, the comments predicted that adopted in this final rule. The authority all divisional applications during the
the rule changes would increase the to decide petitions under pendency of the first application); (6)
number of petitions, including petitions §§ 1.78(d)(1)(vi) and 1.114(g) has been multiple parallel applications that have
for filing additional continuing delegated to the Deputy Commissioner similar or the same disclosures; and (7)
applications and requests for continued for Patent Examination Policy (who may continuing applications before the
examination and petitions for further delegate this authority to effective date.
supervisory review of Office actions and officials under the Deputy Response: The Office notes the
restriction requirements. Several other Commissioner for Patent Examination concerns expressed in the public
comments argued that the delay in Policy). The Office is planning to comment and has attempted to avoid
prosecution of an application would provide sufficient staff to handle the the possibility of increased filings
increase while decisions on petitions projected number of petitions. necessitated by modifying the proposed
under §§ 1.78(d)(1)(vi) and 1.114(g) The Office provides the procedure changes. The Office has made
were debated and reviewed. Several under § 1.181 for applicants to seek modifications to the proposed changes
comments questioned whether the review of requirements and objections to §§ 1.78(d)(1) and 1.114 such that this
Office would be adequately staffed with made by the examiner. If applicant finds final rule permits an applicant to file
enough personnel to handle the that a requirement or an objection made two continuation applications or
onslaught of petitions, as well as further in an Office action is procedurally continuation-in-part applications, plus a
review of decisions dismissing the wrong, applicant should request single request for continued
petitions. Several comments also argued reconsideration or file a petition under examination in an application family,
that any reduction in backlog would be § 1.181 to review the requirement or without any justification. Also, under
insignificant given that the Office would objection. As an example, when this final rule, a divisional application
grant some of the petitions for applicant challenges the finality of an need not be filed during the pendency
additional continuing applications and Office action as being premature, the of the application subject to a
requests for continued examination. applicant should focus on whether the requirement for restriction, as long as
Several comments suggested that the Office action met the appropriate the copendency requirement of 35
proposed changes to the continued standard for finality. The Office will U.S.C. 120 is met. This final rule also
examination practice will force make every effort to decide the petitions permits applicant to file two
applicants to petition every improper in a timely manner. Applicant, however, continuation applications of a divisional
procedural requirement by examiners, should not file a continuing application application plus a request for continued
including restriction requirements, or a request for continued examination examination in the divisional
finality and non-entry of after-final in an effort to address improper application family, without any
amendments, in order to preserve procedural requirements. Petitions for justification. Therefore, the Office does
applicant’s rights. One comment stated supervisory review of Office actions and not expect any significant increase in
that applicants are likely to file restriction requirements will continue to filings of applications. Specifically, the
petitions, such as petitions addressing be decided by supervisory patent Office does not expect that the number
the prematureness of a final rejection examiners or other managers. Therefore, of divisional applications would
under § 1.181, to save their one ‘‘as- examiners will not be diverted from the increase in response to the changes
matter-of-right’’ continuation or examination process by these petitions. being adopted in this final rule because
continuation-in-part application or Finally, it should be noted that applicants should have sufficient time
request for continued examination. complaints about an Office action that to determine whether to file a divisional
Several comments stated that applicants relate to the merits of patentability of application for a non-elected invention
would petition almost all restriction the claims must be addressed in an following a restriction requirement.
requirements, resulting in an increase in appeal to the BPAI, and not in a petition Furthermore, an increase in filings of
the number of petitions filed. Another under § 1.181 for supervisory review, provisional applications will not place
comment stated petitions seeking even if the issues may be phrased in additional burden on the Office’s patent
examining resources because no continuing applications and requests for application with a petition and showing
examination is provided in provisional continued examination that may be filed under § 1.78(d)(1)(vi) or a second
applications. The Office does not expect without justification will encourage request for continued examination with
its examining resources to be impacted both applicants and examiners to engage a petition and showing under § 1.114(g).
when applicants file continuation in a more thorough prosecution and Comment 29: A number of comments
applications rather than requests for examination earlier in the application stated that the rule changes would not
continued examination, or when process. Examiners are professionals permit applicants to file even a single
applicants file reissue applications and who perform their duties in compliance continuation or continuation-in-part
reexamination proceedings rather than with patent laws, rules of practice, and application, when the applicant filed a
continuing applications. patent examining procedures set forth in request for continued examination in
The changes being adopted in this the MPEP. They are responsible for the the initial application.
final rule do not encourage applicants to quality of their work product. There is Response: The Office has made
file multiple applications with no reason why examiners would modifications to the proposed changes
patentably indistinct claims. Pursuant to provide lower quality examination in to §§ 1.78(d)(1) and 1.114 such that this
§ 1.78(f)(3), the Office may require response to the changes in this final final rule permits an applicant to file
elimination of the patentably indistinct rule. In fact, this final rule is intended two continuation applications or
claims from all but one of the to improve the quality of examination continuation-in-part applications, plus a
nonprovisional applications. If the by facilitating the examination of single request for continued
patentably indistinct claims are not applications that contain more than five examination in an application family,
eliminated from all but one of the independent claims or twenty-five total without any justification. Applicant
applications, the Office will treat each claims via the examination support may also file any additional
application as having the total of all of document. continuation or continuation-in-part
the claims (whether in independent or Comment 28: A number of comments application or request for continued
dependent form) for purposes of stated that the Office should treat examination with a petition and
determining whether an examination continuing applications the same as showing as to why the amendment,
support document is required by new applications and should not limit argument, or evidence sought to be
§ 1.75(b). See § 1.75(b)(4). Moreover, the available protection because entered could not have been submitted
when an applicant (or assignee) files applicants who file continuing earlier. The provisions of § 1.78(d)(1) are
multiple applications with the same applications pay the same filing fees as independent of the provisions of
claimed filing or priority date, a those who file a new application. One § 1.114. The filing of a request for
common inventor, and substantial comment argued that continuing continued examination in the initial
overlapping disclosures, the Office will applications should not be limited
application does not preclude applicant
presume that the applications contain because they claim ‘‘new inventions’’ in
from filing a continuing application of
patentably indistinct claims. See that they pursue broader claims, a
the initial application.
§ 1.78(f)(2). The applicant must either different invention, or an improvement,
Comment 30: Several comments
rebut this presumption or submit the and the purpose of patents is to protect
objected to the Office’s proposal that a
appropriate terminal disclaimers and inventions, not to facilitate examination.
explain why two or more pending One comment argued that continuation petition under § 1.78 to accept an
applications containing patentably and continuation-in-part applications unintentionally delayed claim under 35
indistinct claims should be maintained. are legitimate because the statutes that U.S.C. 120, 121, or 365(c) will not be
Once applicant recognizes that having create and authorize ‘‘continuation granted in an application in which a
multiple applications that contain practice’’ do not distinguish such request for continued examination has
patentably indistinct claims is not applications from ‘‘new’’ applications in been filed. One comment argued that
needed, applicant would abandon the terms of their importance, nor do they applicant would lose substantial rights
applications or stop filing multiple limit the resources that are committed to if the Office dismisses a petition to
applications that have patentably them. accept an unintentionally delayed claim
indistinct claims. Response: The former unrestricted filed after a request for continued
Comment 27: One comment stated continued examination practice was examination has been filed in the prior-
that a requirement for Director’s impairing the Office’s ability to examine filed application.
approval to file a second or subsequent new applications. As a result, the Office Response: The Office has made
continuing application or request for is modifying continued examination modifications to the proposed changes
continued examination would create a practice in this final rule to address the to §§ 1.78 and 1.114 such that the
disincentive for examiners to provide a backlog of unexamined new provisions of § 1.78(d) as adopted in this
thorough examination, leaving the applications. Under this final rule, final rule are independent of the
burden on the applicant to prosecute the therefore, if the amendments, provisions of § 1.114. Thus, § 1.78(e) as
application. arguments, or evidence sought to be adopted in this final rule does not
Response: The Office modified the entered could have been previously provide that a petition to accept an
proposed provision that would have submitted in the initial application, two unintentionally delayed claim under 35
limited applicant to one continuation or continuing applications, and a request U.S.C. 120, 121, or 365(c) will not be
continuation-in-part application or to for continued examination, applicants granted in an application in which a
one request for continued examination, are encouraged to make such request for continued examination has
without any justification. This final rule submissions early rather than wait to do been filed.
allows applicant to file two so in another continuing application or Comment 31: A number of comments
continuation or continuation-in-part request for continued examination. That stated that the rule changes would not
applications plus a request for way, the examiner would have the permit applicants to consolidate two
continued examination in an information earlier to make the applications into a single continuation-
application family, without any patentability determination. If applicant in-part application, which is contrary to
justification. What is more, the Office could not have submitted them earlier, the goal of reducing the number of
expects that limiting the number of applicant may file a third continuing applications.
Response: The Office has made countries or any adverse impact. Many patent system best serves the interests of
modifications to the proposed changes countries do not have flexible practices all parties, including the public, when
such that this final rule permits an for filing continuation applications, applicants and their representatives are
applicant to file two continuation continuation-in-part applications, and diligent in drafting the claims and
applications or continuation-in-part requests for continued examination. replies. Applicant would get a quality
applications, plus a single request for Comment 34: A number of comments patent with desirable claim coverage.
continued examination in an argued that the rule changes would The Office would not waste patent
application family, without any increase the cost to applicants for examining resources to examine
justification. Therefore, applicant is prosecuting each application, and for applications that are not diligently
permitted to file a continuation-in-part filing more multiple parallel prepared. Even prior to the changes
application that claims the benefit of applications, divisional applications, being adopted in this final rule,
two prior-filed applications without a appeals, and petitions under §§ 1.78 and applicants and their representatives had
petition and showing under 1.114. Several comments argued that the certain duties when prosecuting
§ 1.78(d)(1)(vi). If applicant thinks that a rule changes would cause applicants to applications in front of the Office.
third or subsequent continuation-in-part incur excessive expenses before Applicant is required to submit fully
application is necessary for determining whether the invention is responsive replies to Office actions (see
consolidation purposes, then such commercially viable. One comment § 1.111) and to particularly point out
applicant may file a petition and argued that the Office would cause and distinctly claim what the applicant
showing under § 1.78(d)(1)(vi) to obtain applicants to perform patent searches in regards as his or her invention (see 35
the additional filing. order to have a good working knowledge U.S.C. 112, ¶ 2). Furthermore, if
Comment 32: Several comments of the prior art to draft claims for full applicant’s lack of knowledge of the
argued that applicants need continuing coverage. One comment argued that the prior art (or lack of diligence) causes
applications and requests for continued rule changes would increase unnecessary delay or needless increase
examination because the reissue practitioner fees because applicants in the cost of prosecution before the
procedure does not give applicants the must submit more carefully drafted Office, applicant would be violating
same flexibility. claims and replies (estimated five § 10.18(b)(2)(i).
Response: Continuing applications additional hours per case for drafting all If applicants need more time to
and requests for continued examination possible claims, at an average of 150 determine the aspect of the invention
are not, by statute, available for the dollars per hour, the additional cost for which patent protection should be
same purposes as reissue applications. would be 750 dollars per application or sought, applicant may file a request for
Continuing applications and requests 200 million dollars for 317,000 deferred examination under § 1.103(d)
for continued examination are available applications). One comment estimated upon filing the initial application.
to an applicant during the prosecution that the attorney cost in preparing an Applicant should have sufficient time to
of an initial application to enable an application would at least double if not determine whether to file a divisional
applicant to secure protection on the increase by a factor of ten, which would application for a non-elected invention
full scope of an invention with the place new applications out of reach of because a divisional application is not
correct benefit claim. See 35 U.S.C. 120, small businesses. Several comments required under this final rule to be filed
121, and 365(c). By contrast, the reissue argued that it would be practically during the pendency of the initial
procedure is available to an applicant impossible or at least much more application, as long as the copendency
after a patent has issued to permit an difficult, expensive and time-consuming requirement of 35 U.S.C. 120 is met. If
applicant to correct errors made during to obtain patent protection for the full applicant disagrees with the examiner’s
the prosecution of the original scope of inventions, especially for large, rejections, it would be more effective to
application without any deceptive complex inventions. One comment appeal the rejections than to file a
intention and to enlarge the scope of the argued that the rule changes are continuing application or a request for
claims of the original patent if the extremely burdensome for patent continued examination. It should not be
reissue application is filed within two applicants and practitioners to maintain burdensome for applicants and their
years from the grant of the original and develop a cohesive patent strategy. representatives to prosecute diligently
patent. See 35 U.S.C. 252. Furthermore, One comment stated that the rule by drafting claims that particularly
this final rule permits applicant to file changes were very complex and fraught point out and distinctly claim the
two continuation or continuation-in- with ambiguity and would create subject matter which the applicant
part applications plus one request for difficulties and misunderstandings for regards as his or her invention, as well
continued examination in an applicants and practitioners in the as replies that are fully responsive to the
application family, without any implementation, possibly resulting in Office actions.
justification. These available filings the loss of inventors’ rights and an The requirements for seeking third
provide sufficient flexibility. increase in practitioners’ exposure to and subsequent continuing applications
Comment 33: One comment suggested malpractice. in this final rule will not have an effect
that the rule changes would be contrary Response: The Office encourages on the vast majority of patent
to patent harmonization goals. One applicants to diligently prosecute the applicants. Approximately 342,600
comment argued that the rule changes initial application, two continuation or nonprovisional patent applications
would hurt foreign applicants because continuation-in-part applications, and (excluding plant and design
they would be required to assess the one request for continued examination, applications) were filed in the Office in
degree of protection much earlier than without a petition and showing, so that fiscal year 2006. Of those applications,
they normally would, resulting in applicants do not need to file a petition approximately 32,700 were identified as
retaliatory challenges abroad for U.S. and showing to secure a third or continuation applications,
applicants. subsequent continuation or approximately 15,700 were identified as

Response: The Office did not receive continuation-in-part application or a continuation-in-part applications, and
any comments from any foreign patent second or subsequent request for approximately 20,600 were identified as
office or authority. The Office does not continued examination and incur the divisional applications. In addition,
expect any retaliation from other costs associated with these filings. The approximately 74,700 requests for
continued examination were filed in the is certifying that the paper is not being Office should not have included
Office in fiscal year 2006. The presented to cause unnecessary delay or ‘‘involuntary’’ divisional applications
requirements for seeking a third or needless increase in the cost of and requests for continued examination.
subsequent continuation or prosecution before the Office. Under One comment argued that the Office
continuation-in-part application or a Festo X, a narrowing amendment gives provided no statistical data showing the
second or subsequent request for rise to a presumption that equivalents percentage of applicants that ‘‘misuse’’
continued examination would only have not covered by the literal language of the continued examination practice as
affected 2.7 percent of these filings the claims have been foregone. alleged. One comment also suggested
(applications or requests for continued Permitting two continuing applications that although the Continuing
examination). As discussed previously, plus a request for continued Applications Proposed Rule cites to data
the changes being adopted in this final examination in any one of the initial regarding the total number of
rule do not give any advantage to those application or two continuing continuations and the consequential
applicants who file multiple parallel applications as of right should in burdens imposed on examiners, no
applications containing patentably general assure that applicants have an analysis is provided as to the grounds
indistinct claims. See §§ 1.75(b)(4) and adequate chance to advocate to the for filing these applications and whether
1.78(f). examiners that an amendment is those grounds constituted ‘‘abuse.’’
Comment 35: One comment argued unneeded. Beyond that, the Office is Several comments argued that there is
that the rule changes would encourage concerned that applications may be no indication that the Office has
the courts to have a more liberal view continued, rather than disputes on the conducted any serious analysis of how
on the doctrine of equivalents. Another need for amendment being appealed, for or why requests for continued
comment argued that the rule changes the purpose of delay. A requirement that examination and continuation
limiting continuation practice takes an applicant at that stage be prepared to applications are used by applicants. The
away the right of the patentee to use justify his or her need for an additional comments suggested the following: A
continuing applications to secure patent continuing application is reasonable in suitable analysis would involve review
protection for equivalents of the these circumstances. of prosecution histories of patents that
invention claimed in the prior-filed Comment 36: A number of comments were issued from a continuation
application, citing Festo Corp. v. suggested that the rule changes are application or a request for continued
Shoketsu Kinzoku Kogyo Kabushiki Co., arbitrary and capricious, premature, examination and determination of
344 F.3d 1359, 68 U.S.P.Q.2d 1321 (Fed. imprudent and ill-advised. A number of whether such patents could have issued
Cir. 2003) (Festo X). comments argued that the Office has no if the rule changes were in place; and if
Response: The doctrine of equivalents rational basis for the rule change, and such patents would not have issued, the
is a patent law concept relating to has not provided sufficient Office should explain how such a loss
infringement which protects patentees explanations, data or evidence to justify of rights is consistent with the goals of
against efforts of copyists to evade the rule changes and to show that the the patent system. A number of
liability for infringement by making rule changes will actually improve the comments asserted that the rule changes
only insubstantial changes to a patented backlog of applications, the quality of should be narrowly tailored to only
invention. See Festo Corp. v. Shoketsu examinations, overall examination those few applicants who intentionally
Kinzodu Kogyo Kabushiki Co., 535 U.S. efficiency, quality of patents, and delay the conclusion of examination
722, 726–27, 62 U.S.P.Q.2d 1705, 1709 pendency. In addition, the comments rather than adversely impacting all
(2002) (Festo VIII). The case law on the asserted patents would be harder to applicants. A number of comments
doctrine of equivalents has been well enforce and litigate because all relevant suggested that the Office should
established since Warner-Jenkinson Co. prior art may not have been considered. conduct a pilot program on the changes
v. Hilton Davis Chem. Co., 520 U.S. 17, One comment stated that the Office and report the results to the public prior
41 U.S.P.Q.2d 1865 (1997) and Festo does not have a pendency problem to implementing the rule changes.
VIII. A concurrence in Festo X noted because the average pendency is within Several comments further argued that
that the demise of the flexible doctrine zero to three years. One comment the Office has not identified any study
of equivalents ‘‘rule’’ may encourage argued that the Office provides no showing that restricting applicants to a
applicants to (inter alia) use studies to show that businesses are single continued examination
continuation strategies to avoid the lack being harmed due to delayed opportunity would satisfactorily address
of flexibility that now exists in the prosecution. One comment argued that its problems without causing substantial
doctrine of equivalents. See Festo X, 344 reducing the backlog is not an harm to the protection of innovation or
F.3d at 1375, 68 U.S.P.Q.2d 1332. This appropriate reason for limiting the the patent examining process. Several
concurrence in Festo X, however, was number of continuing applications and comments alleged that the Office has
not espousing some ‘‘right’’ of the requests for continued examination as a not sufficiently considered the effect of
patentee to use continuing applications matter of right. Several comments the rule changes on U.S. applicants and
to maintain the doctrine of equivalents, argued that the Office has not identified the U.S. economy and suggested that
but was simply noting that applicants continuation applications as a major further study is needed because the
now use continuing application practice source of the backlog, and therefore, the ability to file multiple continuing
as a substitute for a flexible doctrine of rule changes would have limited impact applications helps U.S. applicants to
equivalents. on the backlog. One comment pointed protect their inventions against foreign
The Office is concerned that out that second and subsequent competitors and the rule changes would
practitioners and applicants may indeed continued examination filings make up cause further outsourcing of American
be increasingly using continuing only a small percentage of the total manufacturing and loss of American
applications not to advance prosecution number of continued examination jobs.
but to compensate for changes in the filings. Several comments alleged that Several comments, however,
law of the doctrine of equivalents. Such the Office’s statistics are misleading and supported the rule changes. The
practices would appear to be likely to the rule changes would only eliminate comments provided the following
contravene § 10.18(b)(2)(i), under which at most five to ten percent of the reasons why the rule changes would be
a party presenting a paper to the Office continuation applications because the appropriate: (1) They would improve
the Office’s productivity, enhance that shall govern the conduct of applicants would file multiple
patent quality, and eliminate growing proceedings in the Office and facilitate continued examination filings.
abuses in the patent prosecution and expedite the processing of patent Applicants could have different reasons
process, which would accelerate applications. See 35 U.S.C. 2(b)(2). The for filing continuation applications,
innovation, especially in the software Office has the responsibility to take continuation-in-part applications and
and hardware technologies that have appropriate action to improve requests for continued examination. The
fast technology evolution and short efficiency, patent quality and pendency. rules appropriately provide applicant
product life cycle; (2) the rule changes The Office does not expect that the the opportunity to show why a third or
would help the Office reduce backlog changes being adopted in this final rule subsequent continuing application or
and pendency because they would alone will be sufficient to address the second or subsequent request for
reduce the ancillary loads on the growing backlog of unexamined patent continued examination is needed. The
examination process so that examiners applications. The Office is comments do not provide any
can focus on important core issues, and implementing many initiatives to persuasive data or evidence that shows
the Office could focus its limited improve efficiency in the examination how the rule changes, or any restrictions
examining resources on faster process and quality of patents. on the continued examination filing
examination of new applications; (3) the Continued examination filings divert practice, would have a negative impact
rule changes appropriately address the Office’s limited examining resources on the quality of patents, the U.S.
those few applicants who from the examination of new economy, or innovation.
disproportionately contribute to the As discussed previously,
applications. One of the Office’s goals is
backlog and provide applicants with the approximately 342,600 nonprovisional
to focus the limited examining resources
ability to file appropriate continued patent applications (excluding plant and
on the examination of new applications.
examination filings and multiple design applications) and approximately
The rules do not place an absolute limit
opportunities to present claims and 74,700 requests for continued
on the number of continued
arguments; (4) applicant may correct examination were filed in the Office in
examination filings. The Office
appropriate mistakes (including by fiscal year 2006. The requirements for
recognizes there are appropriate reasons
broadening claims) through the reissue seeking a third or subsequent
for applicant to file a continuing
process; (5) by eliminating long chains continuation or continuation-in-part
application or request for continued
of continued examination filings, the application or a second or subsequent
examination. Under this final rule, request for continued examination
rule changes would provide earlier and applicant is permitted to file the initial
greater legal certainty as to the scope of would only have affected 2.7 percent of
application, two continuing these filings (applications or requests for
patent rights, reduce wasteful litigation, applications, and a request for
and encourage negotiations between continued examination). The Office did
continued examination in an not include divisional applications in
patent holders and others; (6) the rule application family, without any
changes would likely promote this analysis. The Office included
justification. Thus, applicant has requests for continued examination
confidence in U.S. patents, stimulate sufficient opportunities to present
innovation, enhance competition, and because when an applicant files a
claims, amendments, arguments, request for continued examination, the
increase consumer welfare; and (7) the evidence, and prior art during the
rule changes would help to deter examiner reopens the prosecution of the
prosecution of the initial application, application and conducts another
applicants from strategically using the two continuing applications, and a substantive examination similar to a
continued examination practice to request for continued examination. An continuation application.
disadvantage competitors and their applicant who considers this to be Comment 37: Several comments
licensees, and would prevent applicants insufficient may file a third or argued that the amount of resources
from keeping continuation applications subsequent continuing application or spent on additional continuing
pending for extended periods of time so second or subsequent request for applications or requests for continued
that they can monitor the development continued examination with a petition examination is not as high as asserted
of the market and modify their claims to and showing as to why the amendment, because continuation applications and
cover their competitors’ products. argument, or evidence sought to be requests for continued examination take
Response: In fiscal year 2006, the entered could not have been previously less of the examiner’s time than new
average pendency to first Office action submitted. If the amendment, argument, applications since the examiner is
was 22.6 months for the entire Patent or evidence can be submitted earlier in already familiar with the prior art,
Examining Corps. The average was the prosecution process, applicant is issues, and subject matter of the
much higher in certain areas (e.g., in required to do so, rather than delay the application.
Technology Center 2100 (computer prosecution and waste the Office’s Response: The Office expects that
architecture, software and information patent examining resources on a limiting the number of continuing
security) the average pendency to first prosecution that is not focused. The applications and requests for continued
Office action was 30.8 months, and in examination process is more efficient examination that may be filed without
Technology Centers 3620 and 3690 when the applicant diligently justification will encourage both
(electronic commerce) the average prosecutes the application so that the applicants and examiners to focus on
pendency to first Office action was 43.9 examiner has all of the relevant ‘‘getting it right the first time.’’ In any
months). As several comments noted, information, including amendments, event, examiners are given the same
long pendency of patent applications is evidence, arguments, and prior art as amount of time to examine a continuing
problematic in some industries (e.g., early as possible. Most applicants who application or request for continued
computer software and hardware prosecute diligently will not need to file examination as a new application.
technologies) where product life cycles a third or subsequent continuing Certain continuing applications and
are short and new improvements can application. Reviewing the prosecution requests for continued examination
quickly make the technology obsolete. histories of patents, conducting pilot could have more complex issues than a
The Office has the authority and programs, publishing green papers, etc., new application, such as evaluating new
responsibility to establish regulations would not show all of the reasons why evidence in a biotechnology application.
Any reduction in the number of protection afforded by an eventual (with a Technology Center Director’s
continuing applications and requests for patent because the claims have not been approval) to make a rejection on the
continued examination would increase determined to be patentable at the time grounds of prosecution history laches.
the Office’s ability to focus its patent of publication. Asking the public to See MPEP section 2190. Some of the
examining resources on the examination determine the broadest range of claim reasons cited by the comments as to
of new applications. protection and to prevent infringement why an indefinite number of continuing
Comment 38: Several comments based on the publication of an applications is needed suggest that
asserted that the premise that expedited application would defeat the purposes continuing applications may be used for
examination is more important than of patent examination and 35 U.S.C. purposes of delay more commonly than
protection of inventor’s rights is faulty. 112, ¶ 2. The patent claims provide the could be effectively addressed by the
Response: The Office did not state public with notice of the patent Office’s application of its equitable
such a premise. Applicants may seek protection, not the disclosure of an prosecution history laches authority.
full protection of their inventions under application. Moreover, even where strategies of
this final rule, which does not place any Comment 41: A number of comments delay are not deliberately pursued, the
absolute limits on the number of stated that the current patent law lack of reasonable requirements on the
continuing applications and requests for already contains its own solution to the use of continued examination practice
continued examination. Limiting the problem of long chains of continuing may act as a disincentive to the
number of continuing applications and applications. The comments argued that examiner and applicant taking the most
requests for continued examination that filing and maintenance fees and the effective steps to reach conclusion.
may be submitted without justification twenty-year patent term provision The Office did not place a per se limit
is not counter to the protection of an discourage applicants from filing on the number of continuing
inventor’s rights. continuing applications. Several applications and requests for continued
Comment 39: Several comments comments argued that the Office is examination. The rules require
predicted that the rule changes would acting prematurely because the recent applicant to show why a third or
decrease the Office’s revenue due to the changes (e.g., the Office electronic filing subsequent continuing application or
decrease in continuing applications and system, the increase in hiring and fees, second or subsequent request for
requests for continued examination. court decisions on doctrine of continued examination is necessary to
Response: The Office’s goal is to equivalents, the twenty-year patent term advance prosecution. The Office
utilize its patent examining resources provisions, and publication of recognizes both the adverse effects of
more efficiently to reduce backlog and applications) should be sufficient to unrestricted continued examination
improve pendency. In exchange for reduce the backlog and improve public practice, and the appropriate uses of
greater efficiency, the Office expects notice. A number of comments alleged continued examination filings. The
there would be some decrease in that the doctrine of prosecution laches Office has sought to draw a reasonable
revenue as the number of continued is sufficient to address abuses. One balance in order not to discourage
examination filings declines, as the comment argued that the Office should appropriate uses of continued
comment indicates. But, this final rule not be concerned with enforcement examination filings while providing a
is not being implemented with a view issues and the problem with public regulatory setting in which unnecessary
toward revenue; instead, it is being notice should not be a reason for the prolongation of proceedings can be
implemented to improve the patent rule changes. Several comments argued avoided. The changes being adopted in
examination process. that the Office’s concern over public this final rule are appropriately tailored
Comment 40: A number of comments notice is misplaced because the notice to permit applicants to file the initial
argued that there is no public notice function of claims is limited to application, two continuation or
problem. The comments argued that published or patented claims and it continuation-in-part applications, and a
most applications (ninety percent) are does not extend to any future claims request for continued examination in
published, the prosecution of the that might arise. Several comments, any one of these three applications
published applications is open to the however, noted that even with the without any justification. An applicant
public, and competitors are already able twenty-year patent term provisions, who considers this to be insufficient
to analyze a file history to determine the unrestricted continued examination may file any additional continuation or
broadest range of claim protection that practice still gives applicants incentives continuation-in-part application or
may be granted in a patent of a to keep continuing applications pending request for continued examination with
continuing application. Several after the issuance of a patent so that the a petition and showing as to why the
comments suggested that members of applicants can monitor the industry amendment, argument, or evidence
the public could prevent infringement development and capture other sought to be entered could not have
by identifying the novel inventions in companies’ products by changing the been submitted earlier. The changes in
the disclosure and avoiding those scope of the claims in the continuing this final rule will also permit the Office
inventions in their practices. Several applications. to focus its limited resources on
comments, however, noted that Response: The percentage of examination of new applications in
publication of applications is not continued examination filings did not order to reduce the backlog of
sufficient to provide public notice of decrease after the implementation of the unexamined applications.
what the patentee will ultimately claim twenty-year patent term provision of the Comment 42: One comment argued
because a patent may eventually issue Uruguay Round Agreement Act (Pub. L. that the Office’s assertion that multiple
with broader or significantly different 103–465, 108 Stat. 4809 (1994)). Thus, patents tend to defeat the public notice
claims than those published and any the twenty-year patent term provisions function of patent claims does not
delays at the Office will perpetuate do not discourage applicants from filing justify the rule changes because the
uncertainty as to the scope of the continued examination filings. As restriction practice tends to increase the
eventual patent. discussed previously, this final rule is number of patents. One comment
Response: The Office agrees that the not intended to address extreme cases of argued that the Office is making
publication of an application is not prosecution laches or to codify Bogese unsupported assumptions that: (1) The
sufficient notice of the scope of II. Examiners already have the authority possible issuance of multiple patents
arising from continuing applications averred that inventors would delay the application and give applicant sufficient
tends to defeat the public notice filing of applications until after clinical opportunity to seek appropriate
function of patent claims; and (2) the or market testing is concluded, a protection for the disclosed invention.
public is left uncertain as to what a set potentially commercially viable product Accordingly, the changes being adopted
of patents resulting from the initial is identified, or other refining of the in this final rule do not place a per se
application will cover when multiple invention is completed. The comments limit on the number of claims presented
applications with patentably indistinct also predicted that some inventors in an application, nor do they place a
claims are filed. would keep the invention secret from per se limit on the number of continuing
Response: Restriction practice the public and/or limit the scope of the applications and requests for continued
encourages applicant to file a single disclosure to avoid dedicating examination available in an application
application for each patentably distinct potentially commercial embodiments to family. The changes being adopted in
invention. The public notice function of the public. One comment argued that this final rule likewise do not give any
patent claims is undermined, however, the Office is making an unsupported advantage to those applicants who file
when multiple patents together claim assumption that continuing applications multiple applications that contain
only one patentable invention (i.e., the and multiple applications containing patentably indistinct claims because
patents contain patentably indistinct patentably indistinct claims impose a such applicants would be required to
claims). In such case, applicant should burden on innovation. One comment identify the multiple applications that
file a single application claiming one argued that applicants would file contain patentably indistinct claims.
patentable invention rather than multiple applications having divergent See §§ 1.75(b) and 1.78(f).
multiple applications claiming the same subject matter rather than a single The changes adopted in this final rule
patentable invention. The Office is not application and applicants would omit will not discourage applicants from
making unsupported assumptions that certain concepts from the applications. filing patent applications because the
the possible issuance of multiple One comment stated that the prior art substantive criteria for entitlement to a
patents arising from continuing complications caused by the inability to patent and the basic incentives for a
applications tends to defeat the public claim priority of an earlier filed patent (exclusive rights) have not
notice function of patent claims, and application through intermediate changed. Whether applicants file
that the public is left uncertain as to applications would severely curb narrow or broad disclosures, the
what a set of patents resulting from the disclosure because applicants would changes in this final rule will reduce
initial application will cover when avoid creating their own prior art under uncertainty with respect to what the
multiple applications with patentably 35 U.S.C. 102(b) on a possible important applicant is claiming as the invention.
indistinct claims are filed. See, e.g., To commercial embodiment. One comment The Office also does not expect
Promote Innovation: The Proper stated that the current continued applicants to delay the filing of an
Balance of Competition and Intellectual examination practice encourages early application because any commercial
Property Law and Policy, Ch. 4 at 26– disclosure of multiple embodiments of activities and public disclosures that
31 (Federal Trade Commission 2003); inventions developed through the occurred more than one year prior to the
Lemley and Moore, Ending Abuse of iterative design process. One comment filing of an application would still be
Patent Continuations, 84 B.U. L. Rev. at stated that large applications that considered prior art under 35 U.S.C.
100 (eliminating continuing application disclose everything are good and 102(b). The changes being adopted in
practice would be consistent with the advance the Office’s mission. One
this final rule simply require applicants
policy goal of giving adequate notice to prosecute their applications
comment argued that the proposed rule
about what is and is not covered by a diligently and submit amendments,
changes to the examination of claims
patent). argument, and evidence early in the
Comment 43: Several comments will force applicants to file applications
prosecution of the initial application,
predicted that the rule changes would that incorporate secondary features into
two continuing applications and a
discourage public disclosure of their own separately filed application.
request for continued examination. As
technology, thereby hurting industrial One comment argued that the new rules
previously discussed, applicant has
growth and innovation. Several would result in omnibus filings on
sufficient time to determine whether to
comments argued that by limiting an anything and everything.
file a divisional application. If applicant
applicant’s ability to claim everything Response: The Office has made needs more time to determine which
that is disclosed in the application, the modifications to the proposed rules aspect of the invention to seek
rule changes would cause the applicant concerning both continuing applications protection for, applicant may file a
to submit more narrow disclosures to and examination of claims practices. request for deferral of examination
avoid inadvertent dedication of the First, this final rule permits an applicant under § 1.103(d).
subject matter to the public (citing to file two continuation applications or Comment 44: Several comments
Johnson & Johnston Associates, Inc. v. continuation-in-part applications, plus a alleged that the rule changes would
R.E. Service Co., 304 F.2d 1235, 62 single request for continued have a significant adverse impact on
U.S.P.Q.2d 1225 (Fed. Cir. 2002) (en examination in an application family, applicants if the first-to-file system is
banc)). Several comments noted that the without any justification. Second, this adopted because applicants would need
rule changes would force applicants to final rule permits applicants to present to file more continuing applications to
delay filing until all foreseeable more than five independent claims or protect their inventions because
information has been obtained or forego more than twenty-five total claims in an applicants would need to file as soon as
continuation-in-part filings that contain application if applicant files an possible with broadly conceptualized
additional information. Several examination support document before disclosures and subsequently file
comments stated that small entities that the first Office action on the merits of continuing applications (e.g.,
have limited resources would not the application. Taken together, the continuation-in-part applications) on
disclose alternative embodiments or changes to continuing application and the improvement or detailed
would file applications with narrow examination of claims practices adopted embodiments.
disclosures to avoid restriction in this final rule permit applicant to file Response: The United States currently
requirements. Several comments as many claims as desired in one does not have a ‘‘first inventor-to-file’’
standard. Other countries that have a allotted for the initial search and application is subject to a requirement
‘‘first inventor-to-file’’ standard have examination and more likely to make for restriction. The divisional
less flexible continued examination restriction requirements, and applicants application need not be filed during the
practice than the United States. For need additional opportunities to address pendency of the application subject to a
example, the Japan Patent Office does technical issues arising during requirement for restriction, as long as
not permit continuation-in-part prosecution and submit evidence and the copendency requirement of 35
applications. Under the JPO practice, clinical testing data; (8) companies in U.S.C. 120 is met. This final rule also
applicant may only submit an the life sciences need continued permits applicant to file two
application on an improvement as a examination filings to obtain multiple continuation applications of a divisional
new application. The Office will patents that protect innovations and application plus a request for
continue to consider the issues related improvements that arise over the long continuation examination in the
to the ‘‘first-to-invent’’ standard and the time period of research and divisional application family, without
‘‘first inventor-to-file’’ standard in development, clinical testing, and the any justification. Applicant may also
determining the rights to a patent in the Food and Drug Administration (FDA) file any third or subsequent
context of international harmonization approval process; (9) in biotechnology, continuation or continuation-in-part
efforts. applicants may not know at the time of application, or any second or
Comment 45: A number of comments filing which embodiments of the subsequent request for continued
argued that the rule changes would invention have commercial value or examination in an application family,
disproportionately impact small entities how a competitor may attempt to copy with a petition and showing. Therefore,
including universities, start-up the invention or circumvent the patent. applicants should have sufficient time
companies, biotechnology companies, One comment that supports the rule to determine whether to seek protection
and public health industry because they changes noted that large entities also for a particular aspect of an invention
are more likely to file continuing operate within limited filing budgets, and should have sufficient
applications and requests for continued and the effects of the rules will apply opportunities to present claims,
examination and have less resources. across the board because any applicant amendments and evidence for that
The comments provided the following must decide what level of filing activity aspect. For example, applicant is
reasons: (1) The proposed rule would it can reasonably afford, and make filing permitted to obtain a patent on the
require significant expenses early in the decisions accordingly. The comment allowed claims from the initial
prosecution of the application that further stated that small entities already application, and then continue to
would cause small entities and receive a fifty percent discount on fees prosecute the broader or rejected claims
independent inventors economic and can take advantage of inexpensive in two continuation or continuation-in-
hardship; (2) the rule changes would provisional applications to delay paying part applications, and one request for
encourage large companies that have filing fees. Several comments argued continued examination without
more financial resources to ‘‘steal’’ that the rule changes will justification. Beyond those filings,
inventions from the small entities disproportionately impact small entities applicant may seek a third or
because the increased cost of obtaining and that the Office obscures this fact by subsequent continuation or
patent protection would prevent small including requests for continued continuation-in-part application and a
entities from obtaining full protection of examination into the analysis. The second or subsequent request for
their inventions and cause many small comments stated that: 32 percent of continued examination with a petition
entities not to seek patent protection; (3) patents to the top nineteen universities and showing. As previously discussed,
small entities need the flexibility to are continuation or continuation-in-part the changes being adopted in this final
respond to changing conditions by applications; 35.2 percent of first rule do not give any advantage to those
refining claims and they cannot afford continuations and continuation-in-part applicants who file multiple parallel
up-front parallel filings as large applications are filed by small entities; applications containing patentably
companies can; (4) independent and 37.9 percent of second indistinct claims. See §§ 1.75(b)(4) and
inventors and small entities need the continuations and continuation-in-part 1.78(f).
ability to file multiple continued applications are filed by small entities. Applicant should also have sufficient
examination filings to spread the costs; Response: The Office notes the opportunities to spread the cost of
(5) the rule changes could stifle the concerns expressed in the public prosecution. Applicant has a one-year
building of patent portfolios for small comment particularly by small entities grace period under 35 U.S.C. 102(b)
companies and cause a reduction of regarding the proposed changes to before filing a patent application to test
capital investment in these companies §§ 1.78(d)(1) and 1.114 that would have the market or obtain capital resources.
and in new technologies; (6) applicants permitted an applicant to file only one Before the end of the one-year grace
should be permitted to get a patent on of the following: A continuation period, applicant may file a provisional
the allowed claims and then continue to application, a continuation-in-part application to obtain a U.S. filing date
prosecute the broader or rejected claims application, or a request for continued and wait up to twelve additional
or to claim subject matter not previously examination, without any justification. months to file an initial nonprovisional
claimed in a continuing application, in The Office has made modifications to application. During this two-year time
order to bring technologies to the market these proposed changes such that this period, applicants may determine the
sooner, which would permit small final rule will permit an applicant to file commercial value of each aspect of the
entities to attract investors and obtain two continuation applications or invention before filing the initial
financing for further product continuation-in-part applications, plus a nonprovisional application. Applicant
development and patent prosecutions; single request for continued may also request a deferral of
(7) continued examination filings are examination in an application family, examination under § 1.103(d) and defer
more likely needed in complex fields without any justification. Under this the examination up to three years from
like biotechnology because examiners final rule, an applicant may file a the earliest filing date claimed (e.g., the
are less likely to comprehend the divisional application directed to a non- filing date of the provisional
invention fully in the limited time elected invention if the prior-filed application). See § 1.103(d). By
requesting a deferral of examination, pay only one-half of the fees that other may be filed or on the number of claims
applicant would have even more time to applicants pay for continuing an applicant may present in an
determine the commercial value of the applications, requests for continued application. Applicant is permitted to
invention or obtain capital resources examination, and excess claims. submit all of the claims that applicant
and would avoid the cost of filing and Comment 46: A number of comments desires during the prosecution of the
prosecuting multiple continued predicted the rule changes would limit initial application, two continuation or
examination filings. Furthermore, applicants’ opportunities to present continuation-in-part applications, and a
divisional applications need not be filed claims, which would reduce the scope request for continued examination. An
during the pendency of the application of the patent claims because applicants applicant who considers this to be
subject to a requirement for restriction, would be pressured to pursue and insufficient may file a third or
as long as the copendency requirement accept narrower claims. The comments subsequent continuing application or
of 35 U.S.C. 120 is met. argued that inventors would not be able second or subsequent request for
The changes being adopted in this to adequately protect their inventions continued examination with a petition
final rule do not disproportionately and would in turn lose patent protection showing why the amendment,
impact small entities. The Office to certain aspects of their inventions, argument, or evidence sought to be
estimates that the change would have which would have an adverse impact on entered could not have been submitted
required such a petition and showing in the value of patents, patent quality, earlier. For most applicants who
only 2.9 percent of the 112,210 small innovations, research and development, prosecute their applications diligently,
entity applications and requests for the competitiveness of U.S. companies, additional continued examination
continued examination filed in fiscal and the U.S. economy and would filings would not be needed. Applicant
year 2006. The Office included the eliminate U.S. jobs. The comments may also file a reissue application under
number of requests for continued provided the following reasons: (1) The 35 U.S.C. 251, if appropriate, to submit
examination into the analysis because Office has not appropriately addressed claims with different scope. Further, the
requests for continued examination applicants’ interests in maximizing use of continuation practice to
divert the Office’s patent examining patent protection and receiving a fair circumvent statutory requirements for
resources from the examination of new consideration of all claims submitted; reissue and reexamination proceedings
applications and contribute to the (2) the rule changes would require is not appropriate. In addition, the rules
increasing backlog of unexamined applicants to claim all aspects of the require an applicant to advance
applications, just like continuation and disclosed invention initially, even prosecution and not waste the Office’s
continuation-in-part applications. though applicants often file applications resources examining an application
The Office notes that, during fiscal without knowing the value of their when the applicant is not ready to
year 2006, it appears that the percentage inventions in order to determine which particularly point out and distinctly
of small entity continued examination embodiment will have value and be claim the subject matter which the
filings that would have required a worthy of the investment in patent applicant regards as his or her
petition is slightly higher than the protection; (3) applicants would not be invention. See also § 10.18(b)(2)(i) and
percentage of total continued able to identify and address all claim Hyatt v. Dudas, 2007 U.S. App. LEXIS
examination filings that would have permutations in the initial application 15350 (Fed. Cir. Jun. 28, 2007).
required a petition (2.9 percent small and one continuation application, and Applicant should not use continued
entity as opposed to 2.7 percent for all complex inventions often need more examination practice to delay the
applicants). The Office also notes that, claims and more than one continuation
prosecution of the application because
during fiscal year 2006, it appears that application to protect the invention; (4)
this adversely impacts the Office’s
the percentage of small entity the Office should provide applicants the
applications that exceeded the five ability to examine new applications and
flexibility to prosecute different
independent claims and twenty-five reduce the backlog of unexamined
embodiments at a later time; (5) the
total claim threshold is also slightly applications.
applicant should be permitted to
higher than the percentage of total present claims (or change the scope of Comment 47: One comment predicted
applications that exceeded the five the claims) in continuing applications to that the rule changes would discourage
independent claim and twenty-five total cover an embodiment of the invention first action allowances because some
claim threshold (24.4 as opposed to disclosed in the initial application when applicants would intentionally file
23.7). These percentages are based upon the applicant later determines the applications with at least one defect in
data that is available in the Office’s commercial value of the embodiment, order to receive a rejection to drag out
PALM system for applications filed develops the actual product, or pendency so that they can have more
during the most recent fiscal year. The discovers a potential infringer’s product; time to determine whether to file
Office does not think these slight (6) competitors could easily circumvent continuing applications.
differences establish that the changes in the patent claims because applicant Response: There is no reason why the
this final rule will have a would not have the ability to change the new changes being adopted in this final
disproportionate economic impact on scope of the claims to cover the rule will encourage an applicant to
small entities since these differences are competitor’s product in a continuing intentionally file an application with at
within the margin of error. In addition, application; (7) in view of the courts’ least one defect to delay prosecution.
the comments provide no reason, and restrictive claim interpretation, the Additionally, such an action by an
there is no apparent one for why small required showing under §§ 1.78(d)(1) applicant would violate § 10.18(b)(2)(i).
entity applicants would inherently and 1.114 would eliminate a vast By presenting to the Office any paper
require more continued examination number of legitimate continuing (including an application), the applicant
filings to prosecute the applications to applications and requests for continued is certifying that to the best of the
completion or more claims to examination needed to provide coverage applicant’s knowledge, information and
adequately cover their inventions. Thus, of alternate aspects of an invention. belief, formed after an inquiry
even higher differences in these Response: This final rule does not reasonable under the circumstances,
percentages could easily be explained place any per se limits on the number that the paper is not being presented to
by the fact that small entity applicants of continued examination filings that cause unnecessary delay or needless
increase in the cost of prosecution more than twenty total claims in an application family, without any
before the Office. application if applicant files an justification. Applicant may also file a
Comment 48: One comment sought examination support document. third or subsequent continuation or
clarification as to whether an applicant Applicant is also permitted to file two continuation-in-part application or a
is permitted to amend the claims and/ continuation or continuation-in-part second or subsequent request for
or file a continuation application to applications, plus a request for continued examination with a petition
claim allowable subject matter continued examination in an and showing. This final rule permits
presented in dependent claims. application family, without any applicant to present up to five
Response: Applicant may amend the justification. The changes being adopted independent claims or twenty-five total
claims of an initial application to claim in this final rule do not place per se claims in each application, without an
allowable subject matter presented in limits on the number of claims which explanation. Applicant may also present
dependent claims if the amendment applicant may present in an application more than five independent claims and
complies with the rules of practice (e.g., or on the number of continued more than twenty-five total claims if
§ 1.116). For example, applicant may examination filings. The changes being applicant files an examination support
submit such an amendment in the adopted in this final rule do not document before the first Office action
initial application in response to a non- encourage applicant to file multiple on the merits of the application.
final Office action in the initial parallel applications that contain Applicant may file as many claims as
application. Such an amendment, patentably indistinct claims. See necessary to claim the full scope of his
however, will not be entered in the §§ 1.75(b)(4) and 1.78(f). Applicants or her invention. This final rule
initial application as a matter of right would obtain little benefit from filing provides sufficient opportunities for
after a final Office action. Under this multiple applications that contain applicant to present claims to provoke
final rule, applicant alternatively may patentably indistinct claims because the an interference during the prosecution
file two continuation or continuation-in- Office would treat each application as of these applications. Therefore, the
part applications plus one request for having the total of all of the claims changes to §§ 1.75(b)(4) and 1.78(d)(1)
continued examination in an (whether in independent or dependent being adopted in this final rule are not
application family, without any form) in all such applications for inconsistent with 35 U.S.C. 135.
justification and pursue the amendment purposes of determining whether an Furthermore, applicant may also file a
in one of those two applications or in examination support document is reissue application under 35 U.S.C. 251,
the request for continued examination. required by § 1.75(b)(1) (but not for if appropriate, to submit claims for
Comment 49: Several comments purposes of calculating the excess provoking an interference. In other
argued that the combined effect of the claims fee due in each application). situations, however, applicant is not
limit on the number of representative Likewise, this final rule will not cause permitted to maintain an application in
claims and the limit on the number of the number of divisional applications to pending status, without advancing
continuing applications and requests for increase because this final rule permits prosecution, for the sole purpose of
continued examination as a matter of divisional applications to be filed awaiting developments in similar or
right would increase the number of serially. Therefore, applicant should parallel technology. As previously
multiple parallel applications and have sufficient time to determine discussed, such practice does not
divisional applications because whether to file a divisional application advance prosecution before the Office
applicants would file more multiple to claim a non-elected invention. and impairs the ability of the Office to
parallel applications with small Comment 50: A few comments examine new and existing applications.
numbers of claims or present claim sets suggested that the limits set in In other situations, however,
that would provoke restriction §§ 1.75(b)(4) and 1.78(d)(1) are applicant is not permitted to maintain
requirements. Either way, the comments inconsistent with interference practice an application in pending status,
contended that the backlog will under 35 U.S.C. 135 of copying claims without advancing prosecution, for the
increase. One comment further alleged for purposes of preserving the right to sole purpose of awaiting developments
that applicants would file more provoke an interference. One comment in similar or parallel technology. As
continued examination filings and suggested that the changes to § 1.78 previously discussed, such practice
appeals because by limiting the number eliminates an applicant’s right to add does not advance prosecution before the
of claims examined, two Office actions claims to an application to cover a Office and impairs the ability of the
would be insufficient, thus resulting in similar or parallel technology, provided Office to examine new and existing
an increase in pendency and cost. One that the added claims find support in applications.
comment argued that the rule changes the specification, citing PIN/NIP, Inc., v. The Federal Circuit noted in PIN/NIP
would disproportionately impact Platt Chemical Co., 304 F.3d 1235, 1247, that one may amend an application for
inventions that require more claims, 64 U.S.P.Q.2d 1344, 1352 (Fed. Cir. the purpose of encompassing devices or
continuing applications, or examiner 2002). One comment stated that processes of others, subject to
time. One comment stated that the subjecting patentably indistinct claims compliance with the requirements of the
limitations on continued examination in multiple commonly owned patent statute and regulations (the claim
filings and claims would cause more applications to elimination under at issue was determined to be invalid
litigation because they would create § 1.78(f)(3) violates case law, for under 35 U.S.C. 112, ¶ 1, for lack of
more uncertainty in infringement and example Kingsdown Med. Consultants, written description support). See PIN/
validity. Ltd. v. Hollister Inc., 863 F.2d 867, 874, NIP, 304 F.3d at 1247, 64 U.S.P.Q.2d at
Response: As discussed previously, 9 U.S.P.Q.2d 1384, 1390 (Fed. Cir. 1352. As such, PIN/NIP cannot be relied
the Office is not adopting the 1988). upon to support a ‘‘wait and see’’
‘‘representative claims’’ examination Response: The Office has modified concept under which an applicant files
approach or restricting the number of proposed § 1.75(b)(4) and § 1.78(d)(1). an initial application followed by a
continued examination filings to one This final rule permits an applicant to stream of continuation applications just
without any justification. Rather, this file two continuation or continuation-in- to wait for any competitor to develop
final rule permits applicant to present part applications plus one request for and market an invention not claimed in
more than five independent claims or continued examination in an the initial application. PIN/NIP, 304
F.3d at 1247, 64 U.S.P.Q.2d at 1352. multiple applications if applicant conduct testing and to reevaluate the
Further, in Kingsdown, the Federal submits a terminal disclaimer in claim scope in light of new prior art,
Circuit opined: ‘‘Nor is it in any manner accordance with § 1.321(c) and explains market experience, and technology
improper to amend or insert claims why submitting patentably indistinct development; (10) for complex
intended to cover a competitor’s claims in separate applications is technologies, it may take several
product the applicant’s attorney has necessary. prosecutions to determine the bounds of
learned about during the prosecution of Comment 51: Several comments patentable subject matter; (11)
a patent application. Any such suggested that if the Office implements applicants may want many patents on
amendment or insertion must comply the limits on continued examination an invention to strengthen the
with all statutes and regulations, of filings, the limits on the number of protection; (12) applicants may file
course, but, if it does, its genesis in the claims would be unnecessary. continuing applications to correct errors
marketplace is simply irrelevant.’’ Response: The comment provides no in the initial prosecution including
Kingsdown, 863 F.2d at 874, 9 explanation as to how or why those made by inexperienced
U.S.P.Q.2d at 130. This statement does implementation of the continued representatives or applicants; and (13)
not equate to a pronouncement that an examination filing changes would make applicants who are in a crowded or
applicant has a ‘‘right’’ under the patent the claims provisions unnecessary. The highly valuable field need to keep a
statutes to file a continuous stream of Office determined that the continuing application pending for the
continuing applications to ensure that implementation of the changes to the purposes of provoking interference.
there is always a pending application in continued examination practice and Response: The Office recognizes that
which to present claims encompassing practice for examination of claims in there are some appropriate reasons for
devices or processes of others. patent applications are necessary to filing multiple continuing applications
Further continuation practice is not achieve quality and efficiency in the and requests for continued examination.
intended to supplant or permit patent examination process. There are, however, a number of reasons
circumvention of reissue practice. The Comment 52: A number of comments given for multiple continuing
patent statute at 35 U.S.C. chapter 25 argued that applicants should be applications and requests for continued
provides for the correction of patents, permitted to file more than one examination that are not considered
and specifically provides for the reissue continuation or continuation-in-part appropriate. The changes being adopted
of a patent in those situations in which application or request for continued in this final rule are tailored to permit
a ‘‘patent is, through error without any examination as a matter of right because applicants to file the initial application,
deceptive intention, deemed wholly or there are many legitimate reasons for the two continuation or continuation-in-
partly inoperative or invalid, by reason filings. The comments provided the part applications, and a request for
of * * * the patentee claiming more or following examples: (1) The process of continued examination in an
less than he had a right to claim in the developing the best prior art and application family, without any
patent.’’ See 35 U.S.C. 251. See also obtaining the broadest possible justification. Any applicant who
Toro Co. v. White Consol. Indus., 383 protection is a complex process and considers this to be insufficient may file
F.3d 1326, 1333, 72 U.S.P.Q.2d 1449, may extend the prosecution process; (2) an additional continuation or
1454 (Fed. Cir. 2004) (citing Johnson & applicants may use strategies that would continuation-in-part application or a
Johnston, 304 F.2d at 1055, 62 avoid prosecution history estoppel and request for continued examination with
U.S.P.Q.2d at 1231). Nothing, however, preserve doctrine of equivalents a petition showing why the amendment,
suggests that an applicant has a ‘‘right’’ protection; (3) applicants may maintain argument, or evidence sought to be
under the patent statutes to file a a continuing application so that they entered could not have been submitted
continuing application to avoid the could respond to any adverse court during the prosecution of the prior
requirements of the reissue statute when decisions and associated uncertainties; filings. Applicants are required to
seeking to correct or enlarge the scope (4) the quality of the examination prosecute diligently and to particularly
of a patent. There is a difference process may cause delays; (5) examiners point out and distinctly claim the
between adding claims to an application would allow broader claims in a subject matter which the applicant
that are otherwise pending, and continuation application after becoming regards as his or her invention, upon
deliberately prolonging prosecution in more familiar with the subject matter filing the application. If applicant’s lack
order to be able to do so. Deliberately and have more time to improve the of knowledge of prior art, or lack of
prolonging a proceeding before the search and analysis; (6) applicants may diligence during the prosecution of the
Office would not be consistent with the maintain a continuing application application, causes unnecessary delay
requirements of § 10.18. pending to prevent competitors from or needless increase in the cost of
Applicant may copy claims from copying the invention or circumventing prosecution before the Office, applicant
another application or patent that is not the initial patent claims because the would be violating his or her duty under
commonly owned for the purposes of courts are less inclined to interpret the § 10.18. See § 10.18(b)(2)(i).
provoking an interference, without scope of invention beyond the literal Comment 53: A number of comments
triggering § 1.78(f)(3). Section 1.78(f)(3) meaning of the claims, precluding claim argued that many continuing
applies only to multiple commonly scope that once was captured under the applications and requests for continued
owned applications that contain doctrine of equivalents; (7) applicants examination are caused by inadequate
patentably indistinct claims. Section may file continuation applications as an examinations, the final Office action
1.78(f)(3) is a restatement of former ‘‘insurance policy’’ so that applicants practice, and the examiner production
§ 1.78(b), which previously gave the can correct any defects found in the first system. The comments provided the
Office the same discretion to require patent or adjust the claim coverage following examples: (1) It may take
elimination of patentably indistinct without surrendering the patent (as in several exchanges between the examiner
claims in all but one of the pending the reissue and reexamination and applicant before the examiner
nonprovisional applications. The Office practices); (8) applicants may file appears to understand the invention; (2)
is not preventing applicants from continuing applications to build large examiners’ lack of experience in the art
providing such patentably indistinct patent portfolios and attract capital and patent law; (3) some examiners
claims in a single application, or in investments; (9) applicants want time to have difficulty using the English
language in oral and written is expensive, especially for independent pendency of a decided appeal was 5.6
communications; (4) the Office has large inventors and small entities. The months. The pendency of an appeal is
turnover in examining personnel; (5) comments predicted that the rule the period between the assignment of an
examiners make too many restriction changes would increase the number of appeal number and the mailing date of
requirements; (6) examiners want to pre-appeal brief conferences, examiner’s the decision. In addition, the BPAI has
obtain additional ‘‘counts’’; (7) answers and appeals, and force reduced the inventory of pending
examiners make improper rejections; (8) applicants to appeal applications that appeals from 9,201 at the close of fiscal
examiners refuse to enter any after-final are not in condition for appeal (e.g., the year 1997 to 1,357 at the close of fiscal
replies; (9) examiners are not given record has not been fully developed and year 2006. Nevertheless, continuing
sufficient time to conduct a proper unamended claims may be appealed). applications and requests for continued
search and examination in the initial Several comments pointed out that examination as a percentage of total
application; (10) examiners did not read continuing applications and requests for filings have increased as BPAI appeal
the specification and claims; (11) continued examination help applicants pendency and inventory of pending
examiners do not adequately consider to place the application in better appeals has decreased. Applicants
arguments made by the applicants; (12) condition for appeal because most should have sufficient opportunity to
examiners make premature final examiners refuse to enter the after-final place the application in condition for
rejections; (13) examiners conduct amendments. One comment stated that appeal during the prosecution of the
piecemeal examination; (14) examiners some applicants might file the appeal initial application, two continuing
are being overturned by supervisors or simply to preserve pendency. Some of applications, and one request for
quality control; (15) examiners do not the comments suggested that the Office continued examination in an
indicate allowable claims; (16) should wait and see what effect a application family. An applicant who
examiners do not set forth the rejections quicker appeal process would have on considers this to be insufficient may file
clearly in the Office actions; (17) the backlog before implementing the any third or subsequent continuation or
examiners do not apply legal standards rule changes. The comments stated that continuation-in-part applications or
consistently; and (18) examiners make once applicants appreciate the appeal second or subsequent requests for
new grounds of rejection or cite new art process changes, more applicants would continued examination with a petition
in final Office actions. file appeals rather than continuing showing why the amendment,
Response: The Office provides applications and requests for continued argument, or evidence sought to be
applicant with procedures to address examination. Furthermore, the entered could not have been previously
inadequate examination issues. comments noted that a study conducted submitted.
Applicant should not use the continued by a firm shows that out of 121 appeal
examination practice as a substitute for Comment 55: Several comments
briefs (appeals from January 1, 2004 to alleged that the Office has provided no
the petition or appeal process. The March 23, 2006), examiners issued only
practice of permitting an unlimited evidence for the assertion that the
nine answers, which represents an exchange between applicants and
number of continuing applications and enormous waste of applicants’ time and
requests for continued examination examiners becomes less beneficial and
money. One comment predicted that the suffers from diminished returns after the
appears to have created lax practices. BPAI would be quickly overwhelmed
Applicants should raise any issue of initial application. A number of
and a broken appeal process would comments also argued that the Office
inadequate examination before the create more damage to the examination
examiner and/or the examiner’s did not provide any investigation or
process than the current problems. analysis of the frequency with which
supervisor. For example, applicants
should raise any question as to Response: If applicant disagrees with the value of exchanges between the
prematureness of a final rejection before the examiner’s rejections, applicants examiner and applicant decrease after
the primary examiner. Applicant may should file an appeal rather than filing the first continuing application or
seek review of the examiner’s decision a continuation application or a request request for continued examination. A
on the finality of the Office action by for continued examination. The appeal number of comments suggested that
petition under § 1.181, if appropriate. process offers a more effective continuing applications and requests for
See MPEP §§ 706.07(c) and 1002.02(c). resolution than the filing of a continued examination permit
Restriction requirements are also continuation application or a request for additional mutually beneficial
reviewable by petition under § 1.181. continued examination. The pre-appeal interaction between the examiner and
Applicants may request an interview brief conference program provides applicant because: (1) The examiner and
with the examiner to ensure that the applicant a relatively expeditious and applicant already are familiar with the
examiner understands the invention or low cost review of rejections by a panel issues in the prosecution; (2) they give
claims correctly, or to seek clarification of examiners. If, after the conference, the examiner more time to examine the
of the rejections or Office action. See the prosecution is reopened, the same subject matter and gain better
§ 1.133(a)(2). If applicant disagrees with applicant will have a further understanding of the prior art; and (3)
the examiner’s rejections, applicant may opportunity to prosecute in front of the they permit applicants multiple
appeal the rejections to the BPAI and/ examiner. Applicant would not need to opportunities to refine the claims and
or request a pre-appeal brief conference, file an appeal brief. If the Office decides present additional data or evidence
if appropriate. that the application should remain which would result in better quality
Comment 54: A number of comments under appeal, it would be more efficient patents with valid claims and clearly
argued that filing continuing to appeal the rejection to the BPAI by defined subject matter. Several
applications and requests for continued filing an appeal brief rather than delay comments argued that the rule changes
examination is more efficient and cost- the appeal by filing a continuation would not improve public notice and
effective in dealing with deficiencies of application or a request for continued the exchanges between the examiner
the examination process (even before a examination. Furthermore, the and applicant because applicants would
‘‘stubborn examiner’’) because the pendency of an appeal is relatively file multiple parallel applications rather
factual record is fixed on appeal and the short. The current (as of the end of the than one single application and the
appeal process takes a longer time and second quarter of fiscal year 2007) applications would be assigned to
different examiners. Several comments presented earlier. Nevertheless, an applicant to respond to a first Office
argued that the exchanges between the applicant can show on petition that an action by preparing what would be a de
examiner and applicant would be less additional filing is necessary. Finally, facto appeal brief with all of the
efficient and more contentious because the changes being adopted in this final arguments and evidence. Nevertheless,
applicants would present broader rule require applicant to submit all of the examination will be more efficient
claims and argue rejections more the claims that are patentably indistinct when applicant submits a fully
aggressively resulting in higher in one single application and to identify responsive reply to each Office action so
pendency. Several comments also multiple applications that contain that the examiner will have the
predicted that applicant would request patentably indistinct claims. See information, including amendments,
more interviews which would be more §§ 1.75(b) and 1.78(f). arguments, and evidence, to determine
work for both the examiner and Comment 56: One comment argued the patentability sooner rather than
applicant. Several comments argued that the Office should not impose a limit later. Even prior to the changes being
that it is unclear how the exchange on the number of continuing adopted in this final rule, applicants
between examiners and applicants will applications an applicant may file when have been required to file a fully
be more efficient because there is the Office can issue any number of responsive reply to an Office action. See
nothing in the proposal to encourage rejections and improper final rejections. §§ 1.111(b) and (c). A change to the
examiners to be more reasonable and Response: In this final rule, the Office rules of practice that encourages
appeals are not more efficient. One has not placed an absolute limit on the applicants to submit complete, rather
comment also argued that the Office is number of continued examination than piecemeal, replies will advance
making unexplained assumptions that: filings. Rather, applicant is permitted to prosecution to final disposition with a
(1) The value of a continuing file the initial application, two minimum number of Office actions,
application or a request for continued continuing applications, and a request continuing applications, and requests
examination is less than the value of a for continued examination in an for continued examination. Such change
new application; (2) the changes to application family, without any streamlines the examination process,
continuing applications practice being justification, and any third or thereby benefiting both applicants and
adopted in this final rule should subsequent continuing application or the Office.
improve the quality of issued patents, second or subsequent request for Comment 58: A number of comments
making them easier to evaluate, enforce, continued examination with a petition argued that continuation or
and litigate; (3) this small minority of and a showing as why the amendment, continuation-in-part applications and
applicants prejudices the public argument, or evidence sought to be requests for continued examination are
permitting applicants to keep entered could not have been submitted needed so that applicants can submit
earlier. Applicant may seek review of prior art that is discovered after the
applications in pending status while
any improper finality of a rejection by prosecution is closed (e.g., through
awaiting developments in similar or
filing a petition under § 1.181, or of any international search reports or foreign
parallel technology and then later
improper rejection by filing a notice of search reports), and amend the claims in
amending the pending application to
appeal, a request for pre-appeal brief view of late newly-discovered art.
cover the developments; and (4) the
conference, and an appeal brief. Several comments suggested that the
changes being adopted in this final rule Comment 57: Several comments
will result in claims issuing faster. Office should permit applicants to file a
argued that examiners will have to request for continued examination
Response: Under this final rule, review larger submissions because without a petition and showing to
applicant is permitted to file two applicants will be forced to front-load submit newly discovered prior art, and
continuation or continuation-in-part responses to every Office action with art cited by the U.S. International
applications plus one request for interviews, declarations and other Searching Authority similar to art cited
continued examination in an evidence when the attorney’s argument by a foreign patent office, because
application family. These filings will alone otherwise might have been otherwise applicants would be
provide sufficient opportunities for sufficient. The comments argued that penalized due to PCT administrative
applicants to submit amendments, this would increase pendency. One backlogs. One comment sought
arguments, and evidence. Furthermore, comment predicted that the rule clarification in the situation where an
the exchange between applicant and the changes would decrease examiners’ applicant wishes to withdraw an
examiner will be more efficient because production because there would be application from issue to submit new art
applicant can no longer delay the ‘‘more hard cases’’ and ‘‘less easy for consideration and a continuation
submissions of amendments, argument, counts.’’ Several comments stated that application has been filed.
and evidence and the examiner will the rule changes would require Response: Applicant is not required to
have the information earlier to applicant to respond to a first Office file a continuation or continuation-in-
determine the patentability of the action by preparing what would be a de part application or a request for
claims. In addition, even if one could facto appeal brief with all of the continued examination in order to
argue that additional continuing arguments and evidence because submit prior art discovered after the
applications and requests for continued applicant would only file the one prosecution is closed or an amendment
examination are beneficial in the permissible continuation or in view of the late discovered art. The
particular application, the marginal continuation-in-part application or Office recently proposed changes to
value of a third or subsequent request for continued examination as a information disclosure statement (IDS)
continuing application or a second or last resort after appeal. requirements. See Changes To
subsequent request for continued Response: Section 1.78 as adopted in Information Disclosure Statement
examination vis-á-vis the patent this final rule permits an applicant to Requirements and Other Related
examination process decreases due to file two continuing applications plus Matters, 71 FR 38808 (July 10, 2006),
the Office resources occupied by the one request for continued examination 1309 Off. Gaz. Pat. Office 25 (Aug. 1,
additional continued examination in an application family, without any 2006) (proposed rule) (hereinafter
filings for amendments, argument, and justification. Thus, the changes adopted ‘‘Information Disclosure Statement
evidence that could have been in this final rule do not require Proposed Rule’’). The proposed changes
(if adopted) would permit applicant to two or three requests for continued desirable because it would encourage
submit an IDS after a first Office action examination per application. Several applicants to file an unlimited number
on the merits, but before the mailing comments suggested that the Office of continued examination filings before
date of a notice of allowability or a should permit more than one the time period expires. Furthermore, a
notice of allowance under § 1.311, if continuation or continuation-in-part time limit would preclude an applicant
applicant files the IDS with the application if the applications are filed from filing appropriate continued
certification under § 1.97(e)(1) and a within a reasonable time period (e.g., examination filings after the time period
copy of the foreign search report, or an one to eight years from the earliest filing expires. Additionally, this suggested
explanation under proposed date claimed). One comment suggested strategy would also disproportionately
§ 1.98(a)(3)(iv) and a non-cumulative that the Office should permit requests impact applications in certain
description under proposed for continued examination filed within technologies (e.g., biotechnology) that
§ 1.98(a)(3)(v). Applicant would also be three years of the filing date if applicant have long prosecutions.
permitted to submit an IDS after has filed a petition to make special for Requiring a patentability report or a
allowance, but before the payment of accelerated examination. One comment prior art search in a continuation
the issue fee, if applicant files the IDS suggested that the Office should permit application would not increase
with a patentability justification under applicant to file a request for continued efficiency in the examination of the
proposed § 1.98(a)(3)(vi), including any examination, but allow the examiner to initial application. If applicant submits
appropriate amendments to the claims. refuse the request for continued the information earlier in the initial
Applicant would be permitted to submit examination if the first action can be application, applicant most likely
an IDS after the payment of the issue fee made final. One comment suggested that would not need to file a third or
if applicant files a petition to withdraw the Office should eliminate all subsequent continuing application
from issue pursuant to § 1.313(c)(1), the continuing applications except for because the examiner would have all of
patentability justification under divisional applications. One comment the relevant information to make the
proposed § 1.98(a)(3)(vi)(B), and an proposed that the Office should patentability determination in the initial
amendment to the claims. Prior to the eliminate all continuing applications, application.
effective date of any final rule based but permit requests for continued The Office recognizes there are
upon the Information Disclosure examination. One comment suggested appropriate reasons for filing continued
Statement Proposed Rule, applicant may that the limitation on the number of examination filings. As a result, the
submit an IDS after the close of continued examination filings should Office did not place an absolute limit on
prosecution with a petition under not apply to divisional applications and the number of continued examination
§ 1.183 if the IDS complies with the requests for continued examination. filings. If the prior-filed application was
applicable requirements set forth in the Response: The Office has modified subject to a requirement for restriction,
Information Disclosure Statement the proposed provisions that permit applicant may file a divisional
Proposed Rule for such an IDS. applicant to file one continuation or application directed to a non-elected
continuation-in-part application or invention that has not been examined.
B. Treatment of Third and Subsequent request for continued examination The divisional application need not be
Continuation or Continuation-In-Part without any justification. Under this filed during the pendency of the
Applications final rule, applicant may file two application subject to a requirement for
Comment 59: Several comments continuation or continuation-in-part restriction, as long as the copendency
supported the rule changes that permit applications plus one request for requirement of 35 U.S.C. 120 is met. See
one continued examination filing continued examination in an § 1.78(d)(1)(ii). Therefore, the changes
without any justification. A number of application family, without any being adopted in this final rule
comments, however, suggested that the justification. Applicant may also file appropriately balance the need to
Office should permit more than one any third or subsequent continuation or reduce the large and growing backlog of
continued examination filing without continuation-in-part application or unexamined patent applications and
requiring a petition and showing. The second or subsequent request for make the patent examination process
comments suggested the following continued examination with a petition more effective.
without a petition and showing: (1) At and showing. The changes being Comment 60: Several comments
least two continuation or continuation- adopted in this final rule will permit the expressed concerns that there would be
in-part applications; (2) at least three Office to focus its patent examining an added economic burden on
continuation or continuation-in-part resources on examining new applicants, particularly small entities, to
applications; (3) three to six continued applications, and thus reduce the pursue additional continued
examination filings; (4) three to five backlog of unexamined applications and examination filings due to the new
applications per application family; (5) improve pendency for all applications. petition process, and that the economic
only one patent to be issued from a Permitting more than two continuation burden will effectively be a bar to many
chain of continuation applications; (6) or continuation-in-part applications and applicants. The comments stated that
unlimited number of continuation more than one request for continued even when an additional continued
applications coupled with a examination in an application family examination filing is completely
requirement for a patentability report in without any justification would justified, applicants will suffer undue
the third or subsequent continuation significantly decrease the effectiveness hardship and will likely be deterred
application or a prior art search and of the changes being adopted in this from even attempting to request any
compliance with the requirements final rule. These final rule requirements additional continued examination filing
under 35 U.S.C. 112; (7) two requests for for seeking a third or subsequent because of the expense and time
continued examination, but only one continuation or continuation-in-part involved to review and prepare the
continuation or continuation-in-part application will not impact the vast petition. One comment suggested that
application; (8) at least one request for majority of the applications. the petition process under
continued examination per application; A time limit requirement for filing §§ 1.78(d)(1)(vi) and 1.114(g) will have a
(9) more than one request for continued continuing applications and requests for disparate effect on small entities.
examination per application; and (10) continued examination would not be Several comments suggested that the
Office should provide an exception for in-part applications and more than one Similarly, the filing of a continuation or
filing additional continued examination request for continued examination in an continuation-in-part application does
filings to applicants who are small application family. Therefore, the $400 not preclude an applicant from filing a
entities and those that qualify for petition fee and the showing request for continued examination.
financial hardship. One comment requirement will impact only a small When applicant files a request for
further suggested that the Office should minority of applicants. continued examination, the prosecution
provide the exception for five years. of the application is reopened and the
Response: The Office notes the C. Treatment of Second and Subsequent examiner conducts another substantive
concerns expressed in the public Requests for Continued Examination examination on the claims present in
comment regarding the proposed Comment 61: Several comments the application. Consequently, similar
changes to §§ 1.78(d) and 1.114(g) that supported the changes to § 1.114. A to continuation or continuation-in-part
would permit an applicant to file one number of comments, however, objected applications, requests for continued
continuation application, continuation- to the changes and suggested that the examination divert the Office’s patent
in-part application, or request for Office should permit applicants to file examining resources from the
continued examination, without any requests for continued examination examination of new applications and
justification. The Office has made without a petition and showing. The contribute to the backlog of unexamined
modifications to the proposed comments provided the following applications. The request for continued
provisions such that this final rule reasons: (1) Requests for continued examination practice should not be used
permits an applicant to file two examination are different from as a substitute for the appeal, petition or
continuation applications or continuing applications because reissue process. If the applicant
continuation-in-part applications, plus a requests for continued examination disagrees with the examiner’s rejections,
single request for continued require applicant to advance then the applicant should pursue the
examination in an application family, prosecution and would not cause the appeal process as a means to more
without any justification. Under this Office to issue multiple patents to the efficiently resolve the disagreement.
final rule, an applicant may also file a same invention; (2) requests for In addition, under the Office’s new
divisional application of a prior-filed continued examination are not optional streamlined continuation
application for the claims to a non- continuation applications, but rather are procedure, an applicant may request
elected invention that was not examined the same application; (3) requests for that a continuation application be
if the application was subject to a continued examination help applicants placed on an examiner’s amended
requirement for restriction. The to deal with deficiencies in the (Regular Amended) docket (see
divisional application need not be filed examination process and provide a more discussions of §§ 1.78(d)(1)(i) and 1.114)
during the pendency of the application efficient, effective and cheaper which would be picked up for action
subject to a requirement for restriction, procedure to advance prosecution and faster than an application placed on the
as long as the copendency requirement have art considered than the appeal, examiner’s new continuing application
of 35 U.S.C. 120 is met. This final rule petition or reissue process; (4) limiting (New Special) docket. By requesting that
also permits applicant to file two applicants to one request for continued the two continuation applications
continuation applications of a divisional examination without a petition would permitted under § 1.78(d)(1)(i) be
application plus a request for continued lead to more filings of continuation treated under the optional streamlined
examination in the divisional applications and petitions; (5) due to the continuation application procedure, an
application family, without any changes in § 1.75, the Office would applicant may obtain the benefits of
justification. Applicant may file any issue more final Office actions with new faster processing similar to having a
additional continuation application or grounds of rejection, which would second and third request for continued
request for continued examination with necessitate the filing of more requests examination without a petition under
a petition and showing. for continued examination; and (6) § 1.114(g).
The changes to §§ 1.78(d) and 1.114(g) applicants would file more appeals, and Comment 62: One comment sought
adopted in this final rule apply to all thus the pendency of applications clarification on whether the changes to
applicants, regardless of whether they would increase. §§ 1.78 and 1.114 being adopted in this
are individuals, small businesses or Response: The Office has modified final rule apply to reissue applications.
large multinational corporations. These the proposed provisions to provide that Response: The changes to §§ 1.78 and
changes do not disproportionately affect an applicant may file a request for 1.114 being adopted in this final rule
individuals and small businesses. continued examination in an apply to reissue applications. Under this
Applicants who seek to file a third or application family, without a petition final rule, applicant may file two reissue
subsequent continuation or and showing. An application family continuation applications plus a request
continuation-in-part application or a includes the initial application and its for continued examination in the reissue
second or subsequent request for continuation or continuation-in-part application family, without any
continued examination are required to applications. Under this final rule, justification. Benefit claims under 35
file a petition under § 1.78(d)(1)(vi) or applicant may also file a request for U.S.C. 120, 121, or 365(c) in the
1.114(g) regardless of their status. The continued examination in a divisional application for patent that is being
requirements for seeking a third or application family, without a petition reissued will not be taken into account
subsequent continuation or and showing. A divisional application in determining whether a continuing
continuation-in-part application or a family includes the divisional reissue application claiming the benefit
second or subsequent request for application and its continuation under 35 U.S.C. 120, 121, or 365(c) of
continued examination would only have applications. The provisions of the reissue application satisfies one or
affected 2.9 percent of the applications § 1.78(d)(1) are independent of the more of the conditions set forth in
or requests for continued examination provisions of § 1.114. Therefore, the §§ 1.78(d)(1)(i) through 1.78(d)(1)(vi).
filed by a small entity in fiscal year filing of a request for continued For example, even if the application for
2006. The Office notes that a vast examination does not preclude an the original patent was a second
majority of applicants do not file more applicant from filing two continuation continuation application, applicant may
than two continuation or continuation- or continuation-in-part applications. still file two reissue continuation
applications. However, an applicant for continued examination in a prior- bureaucracy. One comment in support
may not use the reissue process to add filed application after a continuation of the showing under §§ 1.78(d)(1) and
to the original patent benefit claims application has been filed. 1.114 stated that it is a sensible
under 35 U.S.C. 120, 121, or 365(c) that compromise that does not ban
D. Petitions Related to Additional
do not satisfy one or more of the additional continued examination
Continuation Applications,
conditions set forth in §§ 1.78(d)(1)(i) filings, but requires applicants in
Continuation-In-Part Applications, and
through 1.78(d)(1)(vi) to the original essence to show good cause for
Requests for Continued Examination
patent, if the application for the original additional continued examination
patent was filed on or after November 1, Comment 65: A number of comments filings. Several comments in support of
2007. were critical of the showing requirement the showing stated that the proposed
Comment 63: One comment suggested set forth in §§ 1.78(d)(1) and 1.114. One rules accommodate the legitimate uses
that the examiner should not make any comment argued that the required of continuations, limit abuses that can
new rejections in a request for showing is a per se limit on the number harm the competitive process, and
continued examination, unless the of continuation or continuation-in-part promote the patent system’s ability to
amendment to the claims raises new applications and requests for continued provide incentives to innovate by
issues. examination. Several comments stated reducing pendency.
Response: When applicant files a that the standard under §§ 1.78(d)(1)
Response: The Office notes the
request for continued examination in and 1.114 is a hindsight standard. The
concerns expressed in the public
compliance with § 1.114, the comments argued that except for rare
instances when evidence was not in comment regarding the proposed
prosecution of the application is
existence prior to filing the additional provisions that would require a petition
reopened and the examiner will
continuing examination filing, the and showing if an applicant files more
consider the amendment, argument, or
evidence submitted by the applicant. Office could almost always conclude, in than one continued examination filing
The examiner will conduct another hindsight, that the amendment, (a continuation application, a
substantive examination, consistent argument, or evidence sought to be continuation-in-part application, or a
with providing ‘‘for the continued entered could have been previously request for continued examination). The
examination of application’’ under 35 submitted. One comment argued that Office has made modifications to these
U.S.C. 132(b). Limiting the examiner’s the showing under §§ 1.78(d)(1) and proposed changes such that this final
ability to conduct a patentability 1.114(g) is too stringent and unrealistic rule permits an applicant to file two
determination after the filing of a given the practicalities of conventional continuation applications or
request for continued examination and reasonable patent prosecution continuation-in-part applications, plus a
would not result in efficiency in the practice and the interests of patent single request for continued
examination process. applicants. Several other comments examination in an application family,
Comment 64: One comment argued described the showing as exceptionally without any justification. Under this
that it would be inconsistent to permit high, onerous, impossible to meet, final rule, an applicant may also file a
the filing of a request for continued restrictive, and ambiguous. divisional application of an application
examination in a prior-filed application Furthermore, several comments asserted for the claims to a non-elected invention
after a continuation application is filed, that the rule changes required that was not examined if the application
but to not permit the filing of a applicants to be aware of all possible was subject to a requirement for
continuation application of an prior art. Several other comments stated restriction. The divisional application
application that has a request for that the required showing set forth in need not be filed during the pendency
continued examination filed therein. §§ 1.78(d)(1) and 1.114 appears difficult of the application subject to a
Another comment suggested that the to meet for any amendment submitted requirement for restriction, as long as
Office should permit an applicant to file with an application that is not a the copendency requirement of 35
a continuation application even though continuation-in-part application, U.S.C. 120 is met. This final rule also
a request for continued examination had indicating that it is hard to imagine how permits applicant to file two
been filed in the prior-filed application. one would prove that an amendment or continuation applications of a divisional
Response: The Office has modified argument ‘‘could not have been application plus a request for continued
the proposed provisions to provide that submitted’’ in the absence of new examination in the divisional
an applicant may file a request for matter. One comment objected to the application family, without any
continued examination in an required showing under §§ 1.78(d)(1) justification. Applicant may file any
application family, without a petition and 1.114 because the purpose of filing additional continuation application or
and showing. The provisions of an additional continuation or request for continued examination with
§ 1.78(d)(1) are independent of the continuation-in-part application or a a petition and showing. Therefore, given
provisions of § 1.114. Therefore, the request for continued examination may the multiple opportunities for applicant
filing of a request for continued be to do something other than present to submit amendments, arguments, or
examination does not preclude an a new argument, evidence or evidence, it is appropriate to require an
applicant from first filing two amendment, such as protect a different applicant to justify why an amendment,
continuation or continuation-in-part aspect of the invention revealed by argument, or evidence sought to be
applications. Likewise, the filing of a research and development subsequent entered could not have been submitted
continuation or continuation-in-part to an initial application filing. One earlier when filing any third or
application does not preclude an comment stated that given enough time subsequent continuation application,
applicant from first filing a request for and effort an applicant will almost continuation-in-part application, or
continued examination. Put differently, always be able to come up with some second or subsequent request for
under this final rule, applicant may file reason why the amendment, argument, continued examination. The Office
a continuation application of an or evidence could not have been considers the standard set forth in
application in which a request for previously submitted as required by §§ 1.78(d)(1)(vi) and 1.114(g) to be an
continued examination has already been §§ 1.78(d)(1) and 1.114 and that this appropriate balance of the interests of
filed. Applicant may also file a request requirement merely adds a layer of applicants and the need for a better
focused and effective examination reaching implications that extend inequitable conduct. The simple
process to reduce the large and growing outside the patent process. Several submission of a showing as to why an
backlog of unexamined applications. comments expressed concerns that the amendment, argument or evidence
Applicants and practitioners have a showing may require applicants to sought to be entered could not have
duty to refrain from submitting an disclose highly sensitive business been submitted earlier does not by itself
application or other filing to cause information such as business strategies, raise such intent. If an applicant acts
unnecessary delay or needless increase and to alert their competitors as to how with candor and good faith in dealing
in the cost of prosecution before the the applicants plan to gain a with the Office, there should be no
Office. See § 10.18(b)(2). Applicants also competitive edge. The comments further increased risk that the applicant will be
have a duty throughout the prosecution expressed concerns that the petition accused of inequitable conduct.
of an application to make a bona fide procedure may also invoke attorney- Similarly, if patent practitioners abide
attempt to advance the application to client privilege. by the standards of professional conduct
final agency action. See Changes to Response: Applicants or patent expected of practitioners in their
Practice for Continuing Applications, owners often present sensitive business relationships with their clients, and
Requests for Continued Examination information to the Office, such as a comply with the requirements of the
Practice, and Applications Containing showing of unavoidable delay in a patent statutes and rules, there should
Patentably Indistinct Claims, 71 FR at petition to revive under § 1.137(a) or a be no reason for increased exposure to
49, 1302 Off. Gaz. Pat. Office at 1319. petition to accept late payment of a malpractice suits.
Applicant should be prepared to maintenance fee under § 1.378(b). The Comment 69: Several comments
particularly point out and distinctly Office has procedures in place for suggested that the Office should adopt
claim what the applicant regards as his applicants and patent owners to submit an alternate standard for additional
or her invention. Furthermore, the trade secrets, proprietary material, and continued examination filings in place
examination process is more efficient protective order material and to prevent of the standard set forth in §§ 1.78(d)(1)
and the quality of the patentability unnecessary public disclosure of the and 1.114. Some of the comments
determination will improve when material. See MPEP §§ 724–724.06. If it suggested the following alternatives: (1)
applicant presents the desired claims, is necessary for an applicant to disclose A reasonable diligence standard; (2) a
amendments, arguments and evidence sensitive business information to the certification by a practitioner that it is
as early as possible in the prosecution. Office to meet the showing under necessary for the inventor to be
The changes to §§ 1.78 and 1.114 in this § 1.78(d)(1)(vi) or 1.114(g), applicant adequately protected; (3) the ‘‘unduly
final rule do not require an applicant to may submit the information in interferes’’ standard as set forth in the
be aware of all possible prior art to meet compliance with the procedures set former § 1.111(b); (4) a requirement that
the showing under §§ 1.78(d)(1)(vi) and forth in MPEP §§ 724–724.06 (e.g., the the submission be a bona fide attempt
1.114(g), but applicant is required to information must be clearly labeled as to advance prosecution; (5) an
conduct a prior art search for filing an such and be filed in a sealed, clearly explanation of the need for the
examination support document under labeled, envelope or container). continued examination filing; (6) a
§ 1.265. Nor do these changes add to Comment 68: One comment stated reasonable justification standard; (7) a
applicant’s existing duties under that the petitions under §§ 1.78(d)(1) reasonable under the circumstances
§ 1.56(a) to disclose to the Office all and 1.114 would be scrutinized in court, standard; or (8) a good cause standard.
information known to the applicant to creating a substantial increase in time One of the comments stated that a good
be material to patentability, and under and resources devoted to litigating and cause standard would not place an
37 CFR Part 10. enforcing otherwise valid patent rights. undue burden on the Office or prejudice
Comment 66: One comment asserted One comment expressed concern that the public. Additionally, the comment
that the Office will not achieve its goal the petitions under §§ 1.78(d)(1) and requested that an application filed for
of reducing the number of filings of 1.114 are unlikely to be granted and are good cause should not count toward the
continuation applications because an likely to be the subject of an attack in single continued examination filing as a
applicant could easily show why the litigation. A number of comments matter of right.
amendment, argument, or evidence asserted that applicants would be Response: The Office considers the
could not have been previously subject to a higher potential for standard that the amendment, argument
submitted when the subject matter of allegations of inequitable conduct. or evidence sought to be entered could
the claims in the continuation Additionally, one comment argued that not have been previously submitted set
application is different from the subject the proposed rule changes would forth in §§ 1.78(d)(1)(vi) and 1.114(g)
matter of the claims of the initial increase the frequency of malpractice appropriate for an additional continued
application. litigation. examination filing. The standard set
Response: The submission of an Response: The rules adopted in this forth in §§ 1.78(d)(1)(vi) and 1.114(g) as
amendment to the claims or new claims final rule require applicants to adopted in this final rule (‘‘a showing
to different subject matter alone will not prosecute their applications with that the amendment, argument, or
be sufficient to meet the showing reasonable diligence and foresight. The evidence sought to be entered could not
requirement under § 1.78(d)(1)(vi). submission of a showing as to why an have been submitted [earlier]’’) is more
Applicant must provide a satisfactory amendment, argument or evidence definite than the alternatives suggested
showing that the amendment, argument, sought to be entered could not have in the comments (e.g., ‘‘good cause’’ and
or evidence sought to be entered could been submitted earlier does not expose ‘‘reasonable under the circumstances’’)
not have been previously submitted an applicant to a greater risk of and other standards set forth in the
during the prosecution of the initial inequitable conduct or litigation. The patent statutes (see e.g., Smith v.
application, two continuation failure to disclose material information, Mossinghoff, 671 F.2d 533, 538, 213
applications, and the request for or an affirmative misrepresentation of a U.S.P.Q. 977, 982 (DC Cir. 1982) (noting
continued examination. material fact or submission of false the absence of guidance concerning the
Comment 67: One comment stated material information or statements, meaning of the term ‘‘unavoidable’’ in
that the required showing under coupled with an intent to deceive or 35 U.S.C. 133)). The comments do not
§§ 1.78(d) and 1.114 might have far- mislead the Office, constitutes provide an explanation as to why any of
these alternatives would be a more previously submitted’’ to ‘‘a showing as files a continuation or continuation-in-
effective standard or more definite. to why the new claim, amendment, part application to correct informalities
Furthermore, §§ 1.78(d)(1) and 1.114(g) argument, or evidence presented could rather than completing an application
as adopted in this final rule do not set not have been previously submitted’’ to for examination under § 1.53 (i.e., the
an absolute limit on the number of resolve any potential ambiguity in the prior-filed application became
continued examination filings. rules. abandoned due to the failure to timely
Applicants are permitted to file two Response: The Office notes the reply to an Office notice issued under
continuation or continuation-in-part comments’ concern for ambiguity in the § 1.53(f)), the applicant may file ‘‘one
applications and one request for language of the rules. The phrase, ‘‘a more’’ continuation or continuation-in-
continued examination without any showing * * * that the amendment, part application without a petition and
justification. Applicants are also argument, or evidence sought to be showing under § 1.78(d)(1)(vi). Thus,
permitted to file any third or subsequent entered could not have been submitted’’ applicant may file a continuation or
continuation or continuation-in-part (emphasis added) inherently continuation-in-part application to
application or second or subsequent encompasses a showing as to why a new correct informalities rather than
request for continued examination with claim could not have been previously completing an application for
a petition and showing. If an submitted. A new claim presented in a examination under § 1.53. The prior-
amendment, argument, or evidence continuing application is considered to filed nonprovisional application,
could have been submitted during the be an amendment to the claims of the however, must be entitled to a filing
prosecution of the initial application, prior-filed application. Thus, by using date and have paid therein the basic
two continuing applications, or a the word ‘‘amendment’’ in the standard filing fee within the pendency of the
request for continued examination, of §§ 1.78(d)(1)(vi) and 1.114(g), the application. See § 1.78(d)(2).
applicant must present such submission Office intended to capture new claims
earlier rather than wait to submit it later sought to be introduced in a third or
suggested the Office should include
in a third or subsequent continuation or subsequent continuation or
exceptions to the petition requirement
continuation-in-part application or in a continuation-in-part application or
of §§ 1.78(d)(1) and 1.114 to permit
request for continued examination. second or subsequent request for
applicant to file a continuing
Thus, the required showing is an continued examination.
Comment 72: One comment application or a request for continued
appropriate standard.
recommended that the Office should examination as a matter of right,
Finally, as discussed further in this
final rule, the Office may grant relief ‘‘in only require a petition and showing if without requiring a petition and
an extraordinary situation’’ in which the claims are presented more than two showing, in the following situations: (1)
‘‘justice requires’’ even if the situation years after the earliest filing date Some of the claims in the prior-filed
does not technically meet the standard claimed. application have been allowed and the
that the amendment, argument or Response: Sections 1.78(d)(1) and continuation application contains only
evidence sought to be entered could not 1.114 as adopted in this final rule claims that were rejected in the prior-
have been previously submitted. See provide applicant sufficient filed application; (2) the continuation
§ 1.183. The Office, however, does not opportunities to present claims during application contains claims to an
anticipate granting petitions under the prosecution of the initial unclaimed invention disclosed in the
§ 1.78(d)(1)(vi) on a basis other than a application, two continuing prior-filed application; (3) the
showing that the amendment, argument applications, and a request for continuing application is claiming an
or evidence sought to be entered could continued examination in an independent and distinct invention; (4)
not have been previously submitted. application family without a petition the continuing application claims
Comment 70: Several comments under § 1.78(d)(1)(vi) or 1.114(g). The species or subgenus that falls within a
suggested that the changes to § 1.78 prosecution of these applications and generic claim that has been allowed or
should only be temporary so that the the request for continued examination, issued in one of the prior-filed
Office may assess the impact of the most likely, would extend more than applications; (5) the continued
changes before adopting the rule. One two years from the earliest claimed examination filing is filed for the
comment also suggested that if the filing date. Therefore, the suggestion, if purposes of submitting newly
Office adopts the rule changes, the adopted, would likely increase the discovered prior art or amendments or
Office should eliminate the changes number of applicants who would be evidence in view of the newly
once the backlog decreases. required to file a petition and showing. discovered prior art; (6) the continued
Response: Unrestricted continued Comment 73: Several comments examination filing is filed after an
examination filings and duplicative proposed an exception to the rule unsuccessful appeal; (7) a divisional
applications that contain patentably changes to permit applicant to file a application of an application that was
indistinct claims are significantly continuing application or a request for subject to a restriction requirement is
hindering the Office’s ability to examine continued examination as a matter of filed for the purposes of claiming the
new applications to such an extent that right, without requiring a petition and non-elected inventions; (8) the
it is necessary for the Office to adopt showing, if the prior application is continuation application includes
and implement the changes to these abandoned prior to examination. claims that were canceled in the prior-
practices. After the implementation of Response: As suggested, the Office filed application; (9) the applicant
the changes being adopted in this final has made modifications to the proposed certifies that the filing is done in good
rule, the Office will re-evaluate the rules provisions to provide that an applicant faith to advance prosecution and
of practice to determine what, if any, may file a continuation or continuation- without deceptive intent; (10) the
additional changes are necessary. in-part application without any continued examination filing is filed for
Comment 71: Several comments justification in certain situations in submitting evidence or an amendment
suggested that §§ 1.78(d)(1) and 1.114 which the prior-filed application was to overcome a final rejection; (11) a
should be revised from ‘‘a showing as to abandoned prior to examination. continuation or continuation-in-part is
why the amendment, argument, or Section 1.78(d)(1)(v) as adopted in this filed to overcome a lack of utility
evidence presented could not have been final rule provides that if an applicant rejection; (12) the continued
examination filing is filed to submit a application or international application continuation-in-part application)

declaration under § 1.131 or 1.132; (13) designating the United States of without claiming the benefit of the
the continued examination filing is filed America. See the discussion of prior-filed applications and avoid
to submit data or other evidence not § 1.78(d)(1)(iv). Section 1.78(d)(1)(v) paying the $400 petition fee. As
available for submission in the parent pertains to the situation where an discussed previously, claims to new
application to obviate a rejection under applicant files a continuation or subject matter will not be entitled to any
35 U.S.C. 101 or 112, ¶ 1 (e.g., for lack continuation-in-part application to benefit of the prior-filed application that
of utility or enablement); (14) the correct informalities rather than does not provide support under 35
continued examination filing is filed to completing an application for U.S.C. 112, ¶ 1, for the claimed subject
respond to an examiner’s request for examination under § 1.53. See the matter and the patent term of any
additional information; (15) the discussion of § 1.78(d)(1)(v). resulting patent of the continuation-in-
continued examination filing is filed to The Office will decide petitions under part application would be measured
respond to a new ground of rejection; §§ 1.78(d)(1)(vi) and 1.114(g) based on from the filing date of the prior-filed
(16) the prior-filed application was their substantive argument and the facts application.
abandoned in favor of a continuing in the record and apply the standard in Comment 76: One comment requested
application that is filed using the Office a consistent manner. There are no that the Office waive the requirement
electronic filing system; and (17) a situations that will result in a per se or for a petition fee if applicant submits
request for continued examination is pro forma grant of a petition under new art from a foreign search report or
filed via the Office electronic filing § 1.78(d)(1)(vi) or 1.114(g). Whether related application or files an
system. One comment stated that if specific situations would be a sufficient amendment in response to new
Congress does not eliminate 35 U.S.C. showing under § 1.78(d)(1)(vi) or arguments made by the examiner.
135(b)(2), the need to copy claims from 1.114(g) is discussed in the responses to Response: A petition, the appropriate
published applications should be subsequent comments. showing, and the fee set forth in
exempt from the limit of continued Comment 75: Several comments § 1.17(f) are required under
examination filings in an application as opposed the $400 fee for filing a petition § 1.78(d)(1)(vi) or 1.114(g) when
a matter of right. under §§ 1.78(d)(1) and 1.114. The applicant files a third or subsequent
Response: The Office notes the comments indicated that the proposed continuing application or a second or
concerns expressed in the public petition fee of $400 is unnecessarily subsequent request for continued
comment regarding the proposed high, especially in view of the filing examination regardless of the reason for
changes to §§ 1.78(d)(1) and 1.114 that fees. Furthermore, the comments argued such a filing. In addition, a request to
would have required applicant to file a that it is unfair to require the submit new art from a foreign search
petition and showing for a second or submission of a costly fee and a time- report or related application is not likely
subsequent continuation or consuming petition regardless of the to be a sufficient showing under
continuation-in-part application or reason for filing the continuing § 1.78(d)(1)(vi) or 1.114(g) (see
request for continued examination. The application or request for continued discussion relating to the filing of
Office has modified these proposed examination. One other comment stated continuing applications and requests for
changes such that this final rule permits that the proposed petition fee does not continued examination to obtain
an applicant to file two continuation cover the amount of work required to consideration of an information
applications or continuation-in-part determine if applicant’s showing is disclosure statement). Likewise, the
applications, plus a single request for sufficient to meet the requirements in mere fact that the examiner made new
continued examination in an §§ 1.78(d)(1) and 1.114. Another arguments or a new ground of rejection
application family, without any comment questioned why an applicant in a final Office action would not be
justification. must pay a petition fee of $400 when considered a sufficient showing. The
Other than the situations provided in filing an additional continuation-in-part Office will decide each petition on a
§§ 1.78(d)(1)(iv) and (d)(1)(v), this final application simply to add new matter. case-by-case basis focusing on whether
rule permits that a third or subsequent Response: The Office considers $400 the new ground of rejection in the final
continuing application or any second or to be an appropriate fee for filing a Office action could have been
subsequent request for continued petition under § 1.78(d)(1)(vi) or anticipated by the applicant.
examination to be filed with a petition 1.114(g). 35 U.S.C. 41(d) authorizes the Comment 77: Several comments
and a showing as to why the Director to establish fees to recover the stated that there is no public notice of
amendment, argument, or evidence estimated average cost to the Office for the criteria the Director will apply to
sought to be entered could not have handling, reviewing and deciding meet the required showing under
been previously submitted. Sections petitions. The Office has determined § 1.78(d)(1) or 1.114. A number of
1.78(d)(1)(iv) and (d)(1)(v) provide that that the average cost to the Office for comments sought clarification on what
applicant may file ‘‘one more’’ handling, reviewing and deciding the type of showing under § 1.78(d)(1) or
continuation or continuation-in-part petitions under §§ 1.78(d)(1)(vi) and 1.114 would be necessary to permit the
application without a petition and 1.114(g) will be at least $400. As filing of an additional continuing
showing in certain situations. previously discussed, applicants most application or request for continued
Specifically, § 1.78(d)(1)(iv) pertains to likely will be able to avoid the examination. A number of comments
the situation where an applicant files a requirements for filing a petition and specifically sought clarification of the
bypass continuation or continuation-in- the required fee if applicants diligently phrase, ‘‘could not have been previously
part application rather than paying the prosecute applications (including the submitted,’’ in §§ 1.78(d)(1) and 1.114
basic national fee (entering the national continuing applications and a request regarding the satisfactory showing
stage) in an international application in for continued examination permitted needed to be permitted to file an
which a Demand for international under §§ 1.78(d)(1) and 1.114(f) without additional continuing application or
preliminary examination (PCT Article any petition). If an applicant desires to request for continued examination. A
31) has not been filed, and the file an application simply to claim new number of other comments suggested
international application does not claim subject matter, the applicant may file a that prior to the implementation of the
the benefit of any other nonprovisional new application (rather than a final rule, the Office should publish
more specific guidelines such as a non- for continued examination), if the rejections under 35 U.S.C. 112 or
exclusive set of examples that would showing under § 1.78(d)(1)(vi) or objections to have the application
constitute a sufficient showing under 1.114(g) relates to an issue that should placed in proper form for examination),
§§ 1.78(d)(1) and 1.114. In addition, be petitioned or appealed, the Office the consistency of the Office’s position
several comments requested that the will likely not grant the petition for an during prosecution (e.g., whether
Office provide an opportunity for public additional continuing application or applicant received wholly new prior art
comment on the suggested guidelines. request for continued examination. rejections versus prior art rejections
Response: As discussed previously, Applicant should address any issues slightly modified to address the
the standard set forth in §§ 1.78(d)(1)(vi) pertaining to inadequate examination by amendments), and the earnestness of the
and 1.114(g) as adopted in this final rule seeking review via a petition under applicant’s efforts to overcome
(‘‘a showing that the amendment, § 1.181 or an appeal, rather than by outstanding rejections (e.g., whether
argument, or evidence sought to be filing a continuing application or replies fully addressed all of the
entered could not have been submitted request for continued examination. grounds of rejection or objection in the
[earlier]’’) is more definite than the If the disagreement between the Office actions, or whether amendments
alternatives suggested in the comments examiner and applicant is procedural in or evidence were submitted only when
(e.g., ‘‘good cause’’ and ‘‘reasonable nature (e.g., an objection), then arguments were failing to persuade the
under the circumstances’’) and other applicant should file a petition under examiner).
standards set forth in the patent statutes § 1.181. For example, an applicant Comment 78: One comment sought
(see e.g., Smith v. Mossinghoff, 671 F.2d should file a petition under § 1.181 to clarification as to whether a petition
533, 538, 213 U.S.P.Q. 977, 982 (D.C. request the withdrawal of the finality of under § 1.78(d)(1) would be available for
Cir. 1982) (noting the absence of an Office action when the finality was ‘‘involuntary’’ divisional applications.
guidance concerning the meaning of the premature, or to review the examiner’s Another comment suggested an
term ‘‘unavoidable’’ in 35 U.S.C. 133)). refusal to enter an after-final applicant should be permitted to file
If an amendment, argument or evidence amendment. The Office will likely not any divisional application in response
could be submitted during the grant a petition under § 1.78(d)(1)(vi) or to a restriction requirement.
prosecution of the initial application, 1.114(g) if applicant argues only that an Response: The Office notes the
two continuing applications, and a amendment after final rejection should concerns expressed in the public
request for continued examination in an have been entered in the prior-filed comment regarding the proposed
application family, applicant must application because the final was changes to § 1.78(d)(1)(ii). The Office
present such an amendment, argument premature. Applicant should have has modified this provision relative to
or evidence earlier rather than wait to addressed the non-entry in the prior- the proposed changes such that
submit it later in an additional filed application and not later in a § 1.78(d)(1)(ii) as adopted in this final
continuing application or request for petition under § 1.78(d)(1)(vi) or rule does not require a divisional
continued examination. Applicants 1.114(g) for a continuing application or application to be filed during the
should not rely upon the availability of request for continued examination. If pendency of the application subject to a
additional continuing applications or the issue goes to the merits of a requirement for restriction, as long as
requests for continued examination in rejection, applicant should file an the copendency requirement of 35
prosecuting an application. The Office appeal to the BPAI under 35 U.S.C. 134 U.S.C. 120 is met. Under this final rule,
will determine on a case-by-case basis and § 41.31. applicant may file, without any
whether the applicant’s showing as to With respect to the second factor (the justification, a divisional application
why the amendment, argument or number of applications filed in parallel containing only claims directed to a
evidence sought to be entered could not or serially with substantially identical non-elected invention that has not been
have been submitted earlier is disclosures), the higher the number of examined if the prior-filed application
satisfactory. In addition to the showing applications with identical or was subject to a requirement for
submitted by the applicant, the Office substantially identical disclosures or the restriction (an ‘‘involuntary’’ divisional
may review the prosecution history of higher the number of applications in the application’’). Applicant may also file
the initial application and the prior chain of prior-filed copending two continuation applications and a
continuing applications or require applications, the more opportunities request for continued examination in
additional information from the applicant had to present the the divisional application family,
applicant in deciding a petition. The amendment, argument or evidence. without any justification. Furthermore,
following are some factors that the Accordingly, a petition under applicant may file a third or subsequent
Office may consider when deciding § 1.78(d)(1)(vi) or 1.114(g) is less likely continuation application or a second or
whether to grant a petition under to be granted. subsequent request for continued
§ 1.78(d)(1)(vi) or 1.114(g): (1) Whether With respect to the third factor examination with a petition and
applicant should file an appeal or a (whether the evidence, amendments, or showing.
petition under § 1.181 (e.g., to withdraw arguments are being submitted with Comment 79: Several comments
the finality of an Office action) rather reasonable diligence), the Office will sought clarification on whether the
than a continuing application or request focus on whether the evidence or data Office will grant a petition under
for continued examination; (2) the submitted with the petition to meet the § 1.78(d)(1) for filing a divisional
number of applications filed in parallel showing under § 1.78(d)(1)(vi) or application of an application that was
or serially with substantially identical 1.114(g) was presented in a reasonably subject to a restriction requirement for
disclosures; and (3) whether the diligent manner. This will take into the purposes of claiming the non-
evidence, amendments, or arguments account the condition of the application elected inventions.
are being submitted with reasonable at the time of examination (e.g., whether Response: As previously discussed,
diligence. the initial application was in proper the Office has modified the provisions
With respect to the first factor form for examination by the time of the of § 1.78(d)(1)(ii) relative to the
(whether applicant should be filing an first Office action in the initial proposed changes. In this final rule,
appeal or a petition under § 1.181 rather application or whether it was necessary § 1.78(d)(1)(ii) does not require a
than a continuing application or request to first issue Office actions containing divisional application to be filed during
the pendency of the application subject situation in which an application one claim of the later-filed application
to a requirement for restriction, as long contains at least one claim that is in the manner provided by 35 U.S.C.
as the copendency requirement of 35 patentably indistinct from at least one 112, ¶ 1, for the later-filed application to
U.S.C. 120 is met. This final rule claim in another application, the Office actually receive the benefit of the filing
provides that an applicant may file a will treat the claims in both applications date of the prior-filed application. Thus,
divisional application directed to each as being present in each of the any claim in the continuation-in-part
non-elected invention that has not been applications for the purposes of application that is directed to the
examined if the prior-filed application determining whether each application subject matter not disclosed in the
is subject to a requirement for exceeds the five independent claim and manner provided by 35 U.S.C. 112, ¶ 1,
restriction. Section § 1.78(d)(1)(iii) as twenty-five total claim threshold under in the prior-filed application would be
adopted in this final rule also permits § 1.75(b). See the discussion of entitled only to the actual filing date of
applicant to file two continuation § 1.75(b)(4). Accordingly, the Office is the continuation-in-part application (not
applications of a divisional application, not likely to grant a petition for the sole the filing date of the prior-filed
plus a request for continued purpose of partitioning claims to avoid application), and subject to prior art
examination in the divisional a terminal disclaimer. based on the actual filing date of the
application family, without any Additionally, a disclaimer of a continuation-in-part application.
justification. Furthermore, applicant terminal portion of the term of an Applicant should not claim the benefit
may file an additional continuation individual claim, or individual claims, of the prior-filed application if all of the
application or request for continuation is not allowed by statute. 35 U.S.C. 253 claims in the continuation-in-part
examination with a petition and provides that ‘‘any patentee or applicant application are directed to the new
showing. Under this final rule, may disclaim or dedicate to the public subject matter. The continuation-in-part
applicant should have sufficient time to * * * any terminal part of the term, of application would not be entitled to the
file a divisional application for claiming the patent granted or to be granted.’’ benefit of the filing date of the prior-
a non-elected invention. Therefore, the (Emphasis added.) Therefore, under 35 filed application, and the term of any
Office will most likely not grant a U.S.C. 253, a terminal disclaimer must patent resulting from the continuation-
petition under § 1.78(d)(1)(vi) to permit be of a terminal portion of the term of in-part application will be measured
an applicant to file a divisional the entire patent and cannot be applied under 35 U.S.C. 154(a)(2) from the filing
application directed to a non-elected to selected claims as advocated in the date of the prior-filed application. That
invention. comment. is, applicant would not receive any
Comment 80: One comment suggested Comment 81: Several comments benefit of the earlier application but
a petition under § 1.78(d)(1) should be asserted that an applicant filing an would have a patent term that is
granted when an applicant needs an additional continuation-in-part measured from the filing date of the
additional continuing application to application would be able to argue earlier application. If there are any
partition the claims in the prior-filed successfully that the amendment or claims in the continuation-in-part
application, such that a terminal argument could not have been application that are directed solely to
disclaimer applies only to some but not previously submitted because the subject matter disclosed in the prior-
all claims in the prior-filed application. subject matter was not present at the filed application, applicant must submit
The comment alternatively suggested time of filing the initial application. those claims in the prior-filed
changing the regulations to allow the Thus, the proposed rules would force application rather than filing a
filing of a terminal disclaimer for these applicants to file a pro forma continuation-in-part application unless
selected claims. petition. applicant provides a showing as to why
Response: This final rule permits Response: The mere fact that the these claims could not have been
applicant to file two continuation or subject matter was not present at the previously submitted.
continuation-in-part applications plus a time of filing the prior-filed application Comment 82: Several comments
request for continued examination in an would not be a sufficient showing under requested that the Office permit an
application family, without justification. § 1.78(d)(1)(vi). The Office will decide applicant to file an additional
Therefore, applicant may use one of the these petitions on a case-by-case basis continuing application or request for
two permitted continuation or based on the prosecution history of the continued examination when the
continuation-in-part applications to prior-filed application as well as the applicant indicates why the new
partition the claims such that a terminal records of the continuation-in-part invention could not otherwise be
disclaimer applies to the prior-filed application. The Office will consider the protected using another type of
application but does not apply to the showing of why the new subject matter application, such as a reissue
continuation application. Notably, sought to be entered could not have application or a reexamination
applicant may avoid this situation by been previously submitted in the prior- proceeding. These comments also
presenting all of the patentably filed application. The Office will also requested that the Office permit an
indistinct claims in a single application. consider the amendment including any additional continuing application or an
As discussed previously, multiple new claims to determine whether the additional request for continued
applications with patentably indistinct claims in the continuation-in-part examination that contains claims
claims divert the Office’s patent application are directed to the new broader than in the previous application
examining resources from the subject matter or mainly to the subject to which priority is claimed and contain
examination of new applications. matter disclosed in the prior-filed claims not subject to a double patenting
Applicant should submit all patentably application. For example, if the new rejection.
indistinct claims in a single application. subject matter is not being claimed in Response: The Office will likely not
See §§ 1.75(b)(4) and 1.78(f). Under this the continuation-in-part application, but grant such a petition. Applicant may file
final rule, applicant must identify such merely being added to circumvent the a reissue application under 35 U.S.C.
multiple applications with patentably rule, the Office will not grant the 251 or a reexamination proceeding, if
indistinct claims to the Office and assist petition. Furthermore, 35 U.S.C. 120 appropriate, to submit claims with
the Office in resolving double patenting requires that the prior-filed application different scope. A desire to avoid the
issues early in the prosecution. In the disclose the subject matter of at least requirements governing reissue
applications or reexamination examination filing, then the necessitated by previously cited prior
proceedings would not be a sufficient experimentation leading to the evidence art or newly discovered prior art; and (4)
showing under § 1.78(d)(1)(vi) or must have been conducted diligently to submit broadened claims after receipt
1.114(g). and commenced within six months of of a foreign search or examination report
Comment 83: One comment sought the filing of the initial application. citing new art. One comment argued
clarification on whether the required Another comment further suggested that submissions of late discovered prior
showing under §§ 1.78(d)(1) and 1.114 evidence that an applicant had not art should be permitted because the
will preclude explanations that are previously learned or known that others consideration of the prior art will
permitted when filing a reissue had developed similar or parallel improve patent quality and eliminate
application. A further comment stated technology should not be considered as allegations of inequitable conduct in
the required showing under evidence that an amendment, argument obtaining patent rights.
§§ 1.78(d)(1) and 1.114 is greater than or evidence could not have been Response: The Office will likely not
the showing required to file a reissue submitted previously under § 1.78(d)(1) grant such a petition for submitting an
application. or 1.114. information disclosure statement (IDS)
Response: This final rule permits Response: The Office will decide or an amendment necessitated by (or in
applicant to file two continuation or petitions under § 1.78(d)(1)(vi) or view of) newly discovered prior art. The
continuation-in-part applications plus 1.114(g) on a case-by-case basis. The effectiveness and quality of the
one request for continued examination Office will focus on whether the examination process as well as
in an application family, without any evidence or data submitted with the patentability determinations would
justification. Applicant may also file a petition to meet the showing under improve if the most pertinent
third or subsequent continuation or § 1.78(d)(1)(vi) or 1.114(g) was information were presented early in the
continuation-in-part application or a presented in a timely manner and was examination process. An additional
second or subsequent request for diligently obtained. Any evidence or continued examination filing is not
continued examination with a petition data that petitioner did not act necessary for the consideration of newly
and showing that the amendment, diligently in obtaining in response to a discovered prior art or an amendment to
argument, or evidence sought to be rejection or requirement in an Office the claims that is necessitated by the
entered could not have been submitted action will be considered unfavorably newly discovered prior art. See Changes
previously. As previously discussed, if when deciding a petition under To Information Disclosure Statement
an amendment, argument, or evidence § 1.78(d)(1)(vi) or 1.114(g). For example, Requirements and Other Related
could have been submitted during the the Office will likely not grant a petition Matters, 71 FR at 38812–16, 38820–22,
prosecution of the initial application, if the examiner made the rejection in the 1309 Off. Gaz. Pat. Office at 27–31, 34–
two continuation or continuation-in- first Office action of the initial 36 (proposed changes to §§ 1.97 and
part applications or a request for application and maintained it in the 1.98 permit applicant to submit prior art
continued examination, applicant must subsequent Office actions, but for consideration by the examiner, when
submit the amendment, argument or applicants responded only with applicant complies with specific
evidence in one of these filings, rather arguments, instead of with evidence or requirements at various time periods,
than in a third or subsequent continuing an amendment, until after the final including after final action, notice of
application or second or subsequent Office action. In contrast, the Office will allowance and payment of the issue fee).
request for continued examination to likely grant a petition if, in a continuing The proposed IDS changes (if
ensure that applicant advances the application or request for continued adopted) would permit applicant to
prosecution to final action and does not examination, the data necessary to submit an IDS after a first Office action
impair the ability of the Office to support a showing of unexpected results on the merits, but before the mailing
examine new applications. just became available to overcome a new date of a notice of allowability or a
Under 35 U.S.C. 251, applicant may rejection under 35 U.S.C. 103 made in notice of allowance under § 1.311, if
file a reissue application to correct an the final Office action, and the data is applicant files the IDS with either: (1)
error in the patent which was made the result of a lengthy experimentation The certification under § 1.97(e)(1) and
without any deceptive intent, where, as that was diligently commenced and a copy of the foreign search report, or
a result of the error, the patent is could not have been completed earlier. (2) an explanation under proposed
deemed wholly or partly inoperative or Applicant should exercise reasonable § 1.98(a)(3)(iv) as to why each reference
invalid. See MPEP section 1402. The foresight to commence any appropriate is being cited, and a non-cumulative
required showing under §§ 1.78(d)(1)(vi) experimentation early rather than wait description under proposed
and 1.114(g) is different than the until the examiner makes a rejection or § 1.98(a)(3)(v) as to how each reference
explanation required for filing a reissue finds applicant’s arguments is not cumulative of any other reference
application. The showing under unpersuasive. cited. Applicant would also be
§§ 1.78(d)(1)(vi) and 1.114(g) does not Comment 85: Several comments permitted to submit an IDS after
require an error made without any sought clarification on whether an allowance but before the payment of the
deceptive intent and does not require as additional continued examination filing issue fee, if applicant files the IDS with
a result of the error, the patent to be would be permitted under § 1.78(d)(1) a patentability justification under
deemed wholly or partly inoperative or or 1.114 for submitting an information proposed § 1.98(a)(3)(vi), including any
invalid. If it is more appropriate for disclosure statement or an amendment appropriate amendments to the claims.
applicant to file a reissue application, in view of an information disclosure Applicant would also be permitted to
applicant should file a reissue statement in the following situations: (1) submit an IDS after the payment of the
application under 35 U.S.C. 251 rather To submit a newly discovered reference, issue fee if applicant files a petition to
than filing a continuing application. including a reference cited in a foreign withdraw from issue pursuant to
Comment 84: Several comments counterpart application; (2) to submit a § 1.313(c)(1), the patentability
suggested that if the Office permits new reference that was not publicly justification under proposed
applicant to provide additional available at the time the previous § 1.98(a)(3)(vi)(B), and an amendment to
evidence of unexpected results with the amendment was filed; (3) to submit an the claims. Prior to the effective date of
filing of an additional continued amendment to the claims that is the final rule of the changes to IDS
requirements, applicant may submit an unfair and presents an opportunity for sought to be entered could not have
IDS after the close of prosecution with abuse. been submitted prior to the close of
a petition under § 1.183 if the IDS Response: The Office will decide each prosecution in the prior-filed
submission complies with the proposed petition for an additional continued application.
rule requirements in §§ 1.97 and 1.98. examination filing on a case-by-case Comment 89: Several comments
Comment 86: Several comments basis, focusing on whether the new sought clarification as to whether the
sought clarification as to whether an ground of rejection in the final Office Office will likely grant a petition for an
additional continued examination filing action could have been anticipated by additional continuing application if
would be permitted under §§ 1.78(d)(1) the applicant. For example, the Office some of the claims in the prior
and 1.114 in the following situations: (1) will likely grant a petition if the final application are rejected and other
When the examiner found the earlier rejection, after the two continuing claims are allowed, and applicant
arguments and amendments by applications and request for continued wishes to appeal the rejected claims and
applicants to be unpersuasive; (2) when examination permitted under obtain a patent on the allowed claims.
the examiner’s interpretation of the §§ 1.78(d)(1) and 1.114(g) without a Response: The Office is not likely to
claims is unusual and only recently petition, contains a new ground of grant a petition under § 1.78(d)(1)(vi) in
understood by the applicant; (3) when rejection that could not have been this situation in the absence of special
the examiner changes his or her anticipated by applicant. However, the circumstances. Section 1.78(d)(1)(i)
interpretation of claim language; and (4) Office will likely not grant a petition permits an applicant whose initial
when the practitioner discovers that the under § 1.78(d)(1)(vi) or 1.114(g) if the application contains rejected claims and
examiner is under a misunderstanding. examiner only changed a rejection allowed claims to obtain a patent on the
Response: These circumstances alone under 35 U.S.C. 102 to a rejection under allowed claims, and continue
more than likely would not be sufficient 35 U.S.C. 103 (or maintained a rejection prosecution of the rejected or other
to establish a showing under under 35 U.S.C. 103) with the addition claims in a continuation or
§ 1.78(d)(1)(vi) or 1.114(g). Applicant of a new secondary reference in continuation-in-part application. The
response to an amendment adding a
should request an interview with the applicant is expected to use the two
new claim limitation because such a
examiner to resolve these types of issues continuation or continuation-in-part
new rejection should have been
during the prosecution of the initial applications permitted without any
anticipated by the applicant. Therefore,
application, two continuation or petition or showing under § 1.78(d)(1)(i)
the mere fact that the examiner made a
continuation-in-part applications and for this purpose. The applicant needs to
new ground of rejection in a final Office
request for continued examination. In pursue an appeal (or cancel the rejected
action probably would not constitute a
addition, applicant in each reply to an claims) if the application still contains
sufficient showing.
Office action must distinctly and Comment 88: Several comments rejected claims after a second
specifically point out the supposed sought clarification on whether an continuing application and request for
errors in the Office action and must additional continued examination filing continued examination.
reply to every ground of objection and would be permitted under §§ 1.78(d)(1) Comment 90: Several comments
rejection raised in the Office action. See and 1.114 in the following situations: (1) suggested that applicant should be
§ 1.111(b). The reply must also present When the examiner indicates in an permitted to file an additional
detailed explanations of how each claim advisory action that an after-final continuing application under
is patentable over any applied amendment would require a new § 1.78(d)(1) or request for continued
references. See §§ 1.111(b) and (c). If search; or (2) to submit evidence or an examination under § 1.114 for changing
applicant disagrees with the examiner’s amendment to overcome a final the scope of the claims in the following
decision to maintain a rejection on the rejection. situations: (1) Pursue claims that have
basis that the applicant feels that the Response: The Office will likely not the same or narrower scope as the
examiner is misinterpreting the claims, grant a petition based on the mere claims in an allowed application; (2)
applicant should seek an appeal rather showing that the examiner indicates in claim a species or subgenus that falls
than file additional continuing an advisory action that the entry of an within a generic claim that has been
applications or requests for continued after-final amendment would require a allowed or issued in one of the prior-
examination. new search, or that the evidence or filed applications; (3) pursue the
Comment 87: Several comments amendment sought to be entered will rejected or broader claims when other
sought clarification on whether an overcome a final rejection. Applicants claims are allowable; (4) file broader
additional continued examination filing are permitted to submit any desired claims, when applicant recently
would be permitted under §§ 1.78(d)(1) amendment, argument, or evidence discovered a limitation in an allowed
and 1.114 when the examiner makes a during the prosecution of the initial claim that was unduly limiting; (5)
new ground of rejection in a final Office application, two continuation or pursue broader claims, or claim aspects
action using a new prior art reference, continuation-in-part applications and of the invention that are disclosed, but
a reference already of record but not one request for continued examination. not claimed, in the prior-filed
previously applied, a new basis for the Since numerous opportunities are given application (contains claims to an
rejection (e.g., changing a rejection to submit any desired amendment, unclaimed invention disclosed in the
under 35 U.S.C. 102 to a rejection under argument, or evidence, the mere fact prior-filed application); (6) pursue
35 U.S.C. 103), or a different reasoning that an amendment, argument, or narrower claims; (7) claim inventions of
(e.g., the supporting arguments have evidence is refused entry because a different scope when the scope of new
changed or the rejection refers to a new prosecution in the prior-filed claims finds specific support in the
portion of the applied art). Several application is closed will not, by itself, application as filed; (8) pursue new
comments stated that permitting a final be a sufficient reason to warrant the claims when the scope of new claims
rejection based on a new ground of grant of a petition under § 1.78(d)(1)(vi) was unintentionally omitted from the
rejection while not allowing further or 1.114(g). Rather, an applicant will be initial application; or (9) protect a
opportunity to amend through expected to demonstrate why the different aspect of the invention
continued examination applications is amendment, argument, or evidence revealed by research and development
subsequent to an initial application Comment 92: Several comments for continued examination in each
filing. suggested allowing an applicant to file application family, applicant should
Response: If a claim can be submitted an additional continuing application or consider using the deferral of
during the prosecution of the initial request for continued examination to examination process. See § 1.103(d).
application, two continuation or claim inventions related to drugs The Office recognizes that, in certain
continuation-in-part applications and undergoing the FDA approval process. unpredictable arts (including, for
one request for continued examination, In particular, one comment suggested example, biotechnology and certain
applicant must present such a claim two ways of satisfying the required pharmaceuticals), there may be a need
early in these filings rather than wait to showing under §§ 1.78(d)(1) and 1.114: for research or testing to obtain
submit it later in an additional (1) An applicant provides an affidavit or additional evidence or data to obviate a
continuing application or request for other statement to the Office confirming rejection for lack of utility under 35
continued examination. The situations that the applicant is presently engaged U.S.C. 101 (and consequently for lack of
described in the comments do not in obtaining information needed for enablement under 35 U.S.C. 112, ¶ 1).
present any reason why claims directed submitting an Investigational New Drug The case law, however, does not shift
to claims with the same, narrower, or (IND) application for that drug; or (2) an the burden to the applicant to provide
broader scope could not have been applicant provides evidence to the rebuttal evidence or data concerning the
submitted earlier. Applicants may file a Office that the applicant has already invention’s utility until the examiner
reissue application under 35 U.S.C. 251, submitted an IND or a Biologics License ‘‘provides evidence showing that one of
if appropriate, to submit claims with a Application (BLA) (or an amended IND ordinary skill in the art would
different scope. application or amended BLA) for the reasonably doubt the asserted utility.’’
Comment 91: Several comments particular drug. Brana, 51 F.3d at 1566, 34 U.S.P.Q.2d at
sought clarification on whether an 1441 (citing In re Bundy, 642 F.2d 430,
additional continued examination filing Response: Such evidence of ongoing
433, 209 U.S.P.Q. 48, 51 (CCPA 1981)).
would be permitted under §§ 1.78(d)(1) FDA review for a drug allegedly claimed
Even in situations in which a
and 1.114 for the following situations: in an application would not by itself be
requirement for such additional
(1) When a product recently becomes considered a sufficient showing under
evidence is appropriate, the evidence or
commercially viable; (2) when a § 1.78(d)(1)(vi) or 1.114(g). Applicant
data that would warrant an applicant’s
competing product is newly discovered; should know what the applicant regards
decision to initiate the FDA regulatory
(3) when new information is discovered as his or her invention upon filing an process should be sufficient to establish
that could not have been provided in application and should claim the utility for purposes of compliance with
the prior application; (4) when invention prior to, or regardless of, any 35 U.S.C. 101 and 112, ¶ 1. See MPEP
applicant discovered new inherent FDA approval. There is no reason why § 2107.03 (as a general rule, if an
properties that he or she now wishes to an applicant must have FDA approval applicant has initiated human clinical
claim; (5) when applicant now has the prior to deciding for which aspect(s) of trials for a therapeutic product or
financial resources to file previously the invention or which invention(s) to process, Office personnel should
unclaimed inventions; (6) when clinical seek patent protection. See In re Brana, presume that the applicant has
trials indicate the previously unclaimed 51 F.3d 1560, 1568, 34 U.S.P.Q.2d 1436, established that the subject matter of
subject matter may be useful; or (7) 1442 (Fed. Cir. 1995) (‘‘FDA approval that trial is reasonably predictive of
when the court determined that the * * * is not a prerequisite for finding a having the asserted therapeutic utility).
format of a patented claim is improper compound useful within the meaning of With respect to situations in which it is
and applicant wishes to file a the patent laws.’’). The changes adopted questionable as to whether there is
continuing application to seek the in this final rule permit an applicant to sufficient enablement for the invention
proper protection. file two continuation or continuation-in- as claimed, evidence submitted to the
Response: The Office likely will not part applications and one request for FDA to obtain approval for clinical trials
grant such a petition in these situations. continued examination in the may be submitted. However,
Applicant is permitted to file two application family, without any considerations made by the FDA for
continuation or continuation-in-part justification. In addition, applicant may approving clinical trials are different
applications and a request for continued file a divisional application directed to from those made by the Office in
examination without a petition and each non-elected invention that has not determining whether a claim is
showing. Applicant should have been examined if the prior-filed sufficiently enabled. See MPEP
sufficient time to submit any desired application was subject to a restriction § 2164.05 (citing Scott v. Finney, 34
claims. Applicant should also know requirement and the claims to the non- F.3d 1058, 1063, 32 U.S.P.Q.2d 1115,
what the applicant regards as his or her elected invention are cancelled upon 1120 (Fed. Cir. 1994)). Thus, situations
invention and claim his or her invention filing of the divisional application. in which it is necessary for an applicant
during the prosecution of these Applicant may also file two to submit data to the Office to
applications, regardless of whether continuation applications of the demonstrate patentability using data
applicants have recently discovered a divisional application and a request for obtained from research or testing carried
commercially viable product, financial continued examination in the divisional out as part of the FDA regulatory
resources, useful subject matter, a application family, without justification. process should be rare.
competing product, or similar or And, applicant may file a third of Nevertheless, in the situation in
parallel technology on the market. subsequent continuation application or which there is a rejection such as lack
Applicants may file a reissue a second request for continued of utility under 35 U.S.C. 101 (and/or
application under 35 U.S.C. 251, if examination with a petition and consequently for lack of enablement
appropriate, to correct or amend any showing. If applicant is not prepared to under 35 U.S.C. 112, ¶ 1) in an
patented claims. The Office would not particularly point out and distinctly application claiming subject matter in
likely grant a petition to permit an claim what the applicant regards as his such an unpredictable art, the Office
applicant to end-run the two-year filing or her invention during the prosecution will likely grant a petition under
period requirement of 35 U.S.C. 251, of the initial application, its two § 1.78(d)(1)(vi) or 1.114(f) if, in a
¶ 4. continuing applications, and a request continuing application or request for
continued examination, the evidence or applications may create due process registration under § 1.293) in a limited
data to demonstrate utility or issues because there may be different situation where an interference is
enablement just became available or treatment of joint inventors of an declared in a second continuation or
could not have been otherwise earlier application. The comment provided an continuation-in-part application that
presented, and the evidence or data example of an application filed naming contains both claims corresponding to
resulted from research or testing that joint inventors, e.g., Inventors C and D, the count and claims not corresponding
was commenced with reasonable and ensuing problems caused by the to the count, and the BPAI suggests that
diligence. However, this presupposes proposed rules as follows: Inventor C the claims not corresponding to the
that the applicant has taken reasonable files a continuation application to count be canceled from the application
steps to resolve the issue during the prosecute his or her invention. Inventor subject to the interference and pursued
prosecution of the initial (or divisional) D may be deprived of filing a in a separate application.
application, its two continuing continuation application on his Comment 96: Several comments
applications, and a request for invention because the filing by Inventor sought clarification as to whether the
continued examination in each D would be a second or subsequent Office will grant a petition for an
application family. In particular, the continuing application that would additional continuing application or
Office will consider, inter alia, whether require a petition under § 1.78(d)(1). request for continued examination when
the applicant: (1) Sought review of the Response: This final rule permits the Office changes the examiner
rejection via an appeal that proceeded to applicants to file two continuation or assigned to the application either on its
at least the appeal conference stage and continuation-in-part applications plus own initiative or in response to the
resulted in an examiner’s answer (rather one request for continued examination applicant’s request.
than simply filing continuing without justification. Applicants may Response: The Office will not grant
applications or a request for continued file a third or subsequent continuation such a petition. The mere fact that the
examination without the evidence or or continuation-in-part application or a Office changes the examiner assigned to
data to again argue patentability before second or subsequent request for the application would not be a sufficient
the examiner); (2) initiated the research continued examination with a petition showing under § 1.78(d)(1)(vi) or
or testing promptly (rather than waiting and showing. Under § 1.78(d)(1)(i), 1.114(g).
for a decision to initiate the FDA Inventor C is permitted to file a Comment 97: Several comments
regulatory review process); and (3) continuation application (the first sought clarification as to whether the
sought suspension of action (§ 1.103(a) continuation application) to prosecute Office will grant a petition for an
or (c)) or deferral of examination if his or her invention, and Inventor D is additional continuing application or
applicable (§ 1.103(d)) in the continuing permitted to file a continuation request for continued examination when
applications or the request for application (the second continuation applicant changes the practitioner of
continued examination and alerted the application) to prosecute his or her record, when applicant states that the
Office of the research or testing. invention. change of practitioner was made in good
Comment 93: Several comments Comment 95: Several comments faith and certifies that the applicant was
sought clarification whether the Office sought clarification whether the Office dissatisfied with the prior practitioner’s
would grant a petition for an additional will grant a petition for an additional claim drafting, or when the delay in
continuing application or request for continuing application or request for filing claims was due to practitioner’s
continued examination to correct the continued examination for the purpose error or inaction and was not the fault
inventorship of the application due to of provoking an interference. of the applicant. One comment
information discovered after Response: The Office will likely not expressed concern that if changing the
prosecution of the application has grant a petition with a showing that the practitioner of record is an acceptable
closed. additional continuation or continuation- reason, it will promote attorney
Response: The Office will likely not in-part application or request for swapping.
grant such a petition. Applicant should continued examination is solely for the Response: The Office will not grant
make the correction early in the purpose of provoking an interference. In such a petition for these circumstances.
examination process. Furthermore, the most situations, applicants should have A change of practitioner, or errors or
Office has recently proposed changes to sufficient opportunity to provoke an delays caused by the practitioner, would
§ 1.312 to provide that the Office may interference and copy claims in a timely not be considered sufficient showings.
permit a correction of the inventorship manner in compliance with 35 U.S.C. An applicant is bound by the
filed in compliance with § 1.48 after the 135(b)(2) in the initial application, two consequences of the acts or omissions of
mailing of a notice of allowance if continuation or continuation-in-part the applicant’s duly authorized and
certain requirements are met, such as if applications, and one request for voluntarily chosen legal representative.
the correction is filed before or with the continued examination, all of which are See Link v. Wabash R. Co., 370 U.S. 626,
payment of the issue fee or if the available without any justification. In 633–34 (1962).
correction is filed with the processing any event, the Office is likely to require Comment 98: One comment suggested
fee set forth in § 1.17(i) and in sufficient that a request for a statutory invention that an applicant should be permitted to
time to permit the patent to be printed registration under § 1.293 be submitted file an additional continuation or
with the correction. See Changes To as a condition of granting any petition continuation-in-part application when
Information Disclosure Statement under § 1.78(d)(1)(vi) in the situation the practitioner does not present the
Requirements and Other Related where a third or subsequent claims in the prior application because
Matters, 71 FR at 38817–8, 38823, 1309 continuation or continuation-in-part of excusable neglect.
Off. Gaz. Pat. Office at 32, 37. Finally, application or second or subsequent Response: Rule 60(b) of the Federal
after the patent has issued, applicant request for continued examination is for Rules of Civil Procedure (Rule 60(b))
may correct the inventorship by filing a the purpose of provoking an does provide ‘‘excusable neglect’’ as a
reissue application under 35 U.S.C. 251 interference. The Office, however, basis (among others) for relieving a
or pursuant to 35 U.S.C. 256. would likely grant a petition under party of a judgment or order. See Fed.
Comment 94: One comment discussed § 1.78(d)(1)(vi) (without requiring a R. Civ. P. 60(b)(1). Rule 60(b), however,
that the limitations on continuing request for a statutory invention further provides that a motion based
upon ‘‘excusable neglect’’ must be continued examination was filed using application or request for continued
‘‘made within a reasonable time,’’ and the Office electronic filing system. examination. This example permits the
‘‘not more than one year after the Response: The Office will likely not applicant to file an additional
judgment, order, or proceeding was grant such a petition. The mere fact that continuing application or request for
entered or taken.’’ See Fed. R. Civ. P. a continuing application or request for continued examination when the
60(b). Sections 1.78(d)(1) and 1.114 as continued examination is electronically applicant can show that collection of
adopted in this final rule permit an filed via the Office electronic filing the data necessary to demonstrate
applicant to file an initial application, system would not be a sufficient unexpected results was started after the
two continuation or continuation-in- showing as to why the amendment, applicant received the rejection for the
part applications, and a request for argument or evidence sought to be first time, and was completed only
continued examination in any one of entered could not have been previously shortly before filing the petition for an
these three applications without submitted. additional filing. A number of
justification. Given the numerous Comment 100: A few comments comments stated that granting a petition
opportunities provided in §§ 1.78(d)(1) sought clarification as to whether the should only depend on when the
and 1.114 to prosecute an application Office will likely grant a petition for an information becomes available and not
for patent, the ‘‘mistake, inadvertence, additional continuing application or when the tests begin. One other
surprise, or excusable neglect’’ standard request for continued examination if the comment stated that experiments are
set forth in Rule 60(b)(1) is not an applicant becomes disabled for a typically ongoing from the date of
appropriate basis for seeking yet another lengthy time during pendency of invention and that it would be
opportunity to prosecute the application. inappropriate for the Office to require
application. Therefore, the Office is not Response: The Office will likely not experimentation to overcome an
likely to grant a petition under grant such a petition on the mere obviousness rejection to commence only
§ 1.78(d)(1)(vi) or 1.114(g) solely on the showing that the applicant becomes after the rejection has been made for the
basis of ‘‘excusable neglect.’’ disabled for a lengthy time during first time. One comment suggested
pendency of application. The changes removing the language, ‘‘could not have
Rule 60(b)(6), however, does provide being adopted in this final rule permit
for relief on the ‘‘catchall’’ basis of ‘‘any been anticipated by applicant,’’ from the
applicants to file two continuation or example provided by the Office of an
other reason justifying relief from the continuation-in-part applications and a
operation of the judgment.’’ See Fed. R. adequate showing under § 1.78(d)(1) or
request for continued examination, 1.114. The comment expressed concern
Civ. P. 60(b)(6). While this language without a petition and showing.
appears to be open-ended, this that the Office’s example is vague and
Applicant may also file a third or subjective, and that removal of the
provision is typically limited to subsequent continuation or
exceptional or extraordinary language, ‘‘could not have been
continuation-in-part application or a anticipated by applicant,’’ would make
circumstances suggesting that a party second or subsequent request for
was faultless in the delay. See Marquip, the standard less arbitrary.
continued examination with a petition Response: The example is merely one
Inc. v. Fosber Am., Inc., 198 F.3d 1363, and showing. Furthermore, applicant illustration of when a petition under
1370, 53 U.S.P.Q.2d 1015, 1020 (Fed. may file a petition for suspension of § 1.78(d)(1)(vi) or 1.114(g) will likely be
Cir. 1999) (citing Pioneer Inv. Serv. Co. action under § 1.103(a) or a request for granted. Other appropriate showings
v. Brunswick Assocs. Ltd. P’ship, 507 deferral of examination under could result in a petition under
U.S. 380, 393 (1993)). The patent rules § 1.103(d), when necessary. § 1.78(d)(1)(vi) or 1.114(g) being granted.
of practice (§ 1.183) provide that ‘‘in an Comment 101: Several comments As discussed previously, the Office will
extraordinary situation’’ in which suggested an applicant should be focus on whether the evidence or data
‘‘justice requires,’’ the Office may waive permitted to file an additional submitted was obtained and presented
or suspend any requirement of the continuation or continuation-in-part in a reasonably diligent manner.
regulations in 37 CFR part 1, which is application or a request for continued Comment 103: One comment
not a requirement of statute. The Office examination for patent term extension expressed concern regarding the
does not anticipate granting petitions reasons. requirement under § 1.78(d)(1) that an
under § 1.78(d)(1)(vi) or 1.114(g) on a Response: No patent term extension applicant must submit a petition within
basis other than a showing that the benefits under 35 U.S.C. 154 and 156 four months from the actual filing date
amendment, argument or evidence will accrue to applicant by filing a third of the later-filed continuing application,
sought to be entered could not have or subsequent continuing application or stating that applicant may need more
been previously submitted. However, in a second or subsequent request for time to complete the experimentation or
the rare exceptional or extraordinary continued examination. Therefore, a to prepare the submission in response to
situation in which an applicant was desire to obtain a patent term extension a rejection or a requirement for
faultless in the delay, and the situation would not be a sufficient reason to information. This comment suggested
does not meet the standard that the permit a third or subsequent continuing that the Office should accept an interim
amendment, argument or evidence application or a second or subsequent statement from the applicant when more
sought to be entered could not have request for continued examination. In time is needed, such as a statement that
been previously submitted, the Office fact, the filing of a continuing the experimentation is progressing, but
may grant relief pursuant to § 1.183. application or request for continued is not completed.
Comment 99: Several comments examination may result in the loss of a Response: Applicant should prepare a
sought clarification as to whether the patent term adjustment under 35 U.S.C. reply diligently upon receiving the final
Office will likely grant a petition for an 154(b). Office action in the prior application,
additional continuing application or Comment 102: A number of which provides a six-month statutory
request for continued examination if the comments expressed concern regarding period for reply. There is no reason why
prior-filed application was abandoned an example provided by the Office that an applicant should delay preparing a
in favor of a continuing application that would meet the showing under petition under § 1.78(d)(1)(vi) until a
was filed using the Office electronic §§ 1.78(d)(1) and 1.114 to permit the third or subsequent continuing
filing system or if the request for filing of an additional continuing application has been filed. Applicants
should not rely solely upon the four- further delegate this authority to will be able to show that the
month time period under § 1.78(d)(1)(vi) officials under the Deputy amendment, argument, or evidence
to prepare and file a petition under Commissioner for Patent Examination sought to be entered could not have
§ 1.78(d)(1)(vi) for a third or subsequent Policy). A decision on a petition under been previously submitted.
continuing application. Therefore, the § 1.78(d)(1)(vi) or 1.114(g) is not Comment 106: One comment sought
four-month time period from the actual appealable to the BPAI. The denial of a clarification regarding the status of an
filing date of a third or subsequent petition under § 1.78(d)(1)(vi) or application during consideration of the
continuing application is a reasonable 1.114(g) may be viewed as a final agency petition. Specifically, the comment
deadline to file a petition under action for the purposes of judicial questioned whether an applicant who
§ 1.78(d)(1)(vi). review under 5 U.S.C. 704. See MPEP had filed a petition under § 1.78(d)(1) or
Comment 104: A number of § 1002.02. Final decisions of the Office 1.114 would be permitted to file a notice
comments requested clarification of the Commissioner for Patents are of appeal under § 41.31(a) within the
regarding who will decide the petitions accessible in the Freedom of time period provided in § 1.134 to avoid
under §§ 1.78(d)(1) and 1.114. Several Information Act (FOIA) section of the abandonment of the application if the
comments argued that examiners should Office’s Internet Web site at (http:// petition is dismissed. The comment also
not decide the petitions under www.uspto.gov/web/offices/com/sol/ inquired whether the notice of appeal
§§ 1.78(d)(1) and 1.114. Furthermore, a foia/comm/comm.htm). fee would be refunded if the petition
number of comments argued that there The Deputy Commissioner for Patent were granted. Several other comments
is a danger that the standard would be Examination Policy and officials under suggested that the filing of a petition
applied differently in different the Deputy Commissioner for Patent under § 1.78(d)(1) or 1.114 should serve
Technology Centers. Several comments Examination Policy will decide as a notice of appeal if the petition is
suggested that the Office of Petitions petitions under §§ 1.78(d)(1)(vi) and dismissed. In the alternative, several
should decide the petitions to encourage 1.114(g) on their merits and the facts in comments suggested that the Office
consistency, ensure uniform the record and apply the standard in a should allow applicants additional time
interpretation of the rules, and reduce consistent manner. The officials who to file a notice of appeal after the
the impact on examining resources. Yet will decide petitions under dismissal of a petition.
another comment suggested that the §§ 1.78(d)(1)(vi) and 1.114(g) are Response: The Office will make every
BPAI should review the showing professionals who perform their duties effort to decide the petitions in a timely
required under §§ 1.78(d)(1) and 1.114. within the framework of the law, rules, manner. The rules have not changed the
The comments further argued that there and examination practice. The Office time period for filing a notice of appeal
is a potential for both disparate only desires to curtail continuing or an appeal brief. Pursuant to
treatment and inconsistent application applications and requests for continued § 41.31(a)(1), an applicant must file a
of §§ 1.78(d)(1) and 1.114 depending on examination in situations in which the notice of appeal accompanied by the fee
who decides the petitions and that the continued examination filing is for the set forth in § 41.20(b)(1) within the time
potential of either would violate the purpose of presenting an amendment, period for reply set forth in the Office
concept of equal protection under the argument or evidence that could have action. The notice of appeal fee is set by
law. been, but was not, submitted earlier. statute and is non-refundable. If the
Several comments requested The Office recognizes the need for Office grants the petition prior to a
clarification regarding the procedures continued examination filings for decision on the merits by the BPAI, the
for appealing the denial of a petition presenting an amendment, argument or fees paid for the notice of appeal and
under § 1.78(d)(1)(vi) or 1.114(g). evidence that truly could not have been the appeal brief can be applied to a later
Specifically, the comments questioned submitted earlier. appeal on the same application. See
whether a denial of a petition should be Comment 105: A number of MPEP § 1207.04. Additionally, the filing
appealed to the BPAI or petitioned to comments requested that the Office set of a petition will not serve as a notice
the Director. The comment further a time limit for rendering decisions on of appeal, and the Office will not allow
requested that the Office publish the petitions under §§ 1.78(d)(1) and 1.114. more time to file a notice of appeal. The
decisions to encourage consistency and The comments suggested that the Office filing of a petition, moreover, does not
understanding of the standard. One should set up an adequately staffed toll the period for reply to any
comment sought clarification on the office to decide the petitions promptly, outstanding Office action. An applicant
remedies available to an applicant if the and in any event, before the close of should not use the continued
Office denies a petition for an additional prosecution of the parent application so examination practice as a substitute for
continuing application or request for that applicants are advised of their an appeal. Rather, an applicant should
continued examination when the prosecution options. The comments appeal the decision if warranted.
examiner introduced new prior art in a further suggested that the Office should Comment 107: One comment sought
final Office action. One comment grant the petition if it is not decided clarification of the status of the
questioned whether petitions under prior to the close of prosecution. application if, after filing a notice of
§§ 1.78(d)(1) and 1.114 could be decided Response: The Office is continuing to appeal under § 41.31(a), an applicant
objectively due to the Office’s desire to ensure prompt and consistent decisions later files a petition under § 1.114 with
dramatically curtail continuing on petitions. It is the general policy of a request for continued examination
applications and requests for continued the Office that petitions are decided in (with a submission and the appropriate
examination. the order that they are filed in the fees), which is dismissed. The comment
Response: The Office is making every Office. Moreover, the Office will likely questioned whether the application
effort to become more efficient, to apply deny any petition under § 1.78(d)(1)(vi) would be abandoned given that the
the rules and statutes uniformly, and to or 1.114(g) filed before the close of filing of a request for continued
allocate Office resources properly. The prosecution because applicant may still examination would be treated as a
authority to decide petitions under submit the amendment, argument, or request to withdraw the appeal.
§§ 1.78(d)(1)(vi) and 1.114(g) has been evidence in the application if the Response: In the situation described
delegated to the Deputy Commissioner prosecution is open. Further, in such in the comment, the application would
for Patent Examination Policy (who may situation, it is unlikely that applicants be abandoned if the application has no
allowed claims because the request for after compliance with 35 U.S.C. 371, or inequitable conduct when § 1.78(f)(1) is
continued examination would be treated two months from the mailing date of the considered in light of the duties
as a request to withdraw the appeal. See initial filing receipt in the other concurrently imposed on applicants and
MPEP § 1215.01. nonprovisional application, to identify practitioners by § 1.56 and the ethics
In the situation where applicant other nonprovisional applications in rules in 37 CFR Part 10, such as § 10.18.
already filed a request for continued compliance with § 1.78(f)(1). See also Dayco, 329 F.3d at 1365–69, 66
examination in the application family, a Comment 109: A number of U.S.P.Q.2d at 1806–08 (individuals
better alternative is for applicant to file comments requested identification of covered by § 1.56 cannot assume that
the request for continued examination any consequences for failing to identify the examiner of a particular application
with a petition under § 1.114(g), and one or more applications that meet the is necessarily aware of other
then if the petition is not decided prior criteria set forth in § 1.78(f)(1), or for applications which are ‘‘material to
to the expiration of the statutory period failing to identify such applications patentability’’ of the application under
for reply to the final Office action, within the time period set forth in examination, but must instead bring
applicant may file a notice of appeal § 1.78(f)(1). such other applications to the attention
within the period for reply (and petition Response: If applicant inadvertently of the examiner).
for any extension of this period under fails to identify the other nonprovisional Comment 111: Several comments
§ 1.136(a) or (b), if necessary) to avoid applications in compliance with requested clarification regarding the
abandonment of the application. If the § 1.78(f)(1)(i) within the time period applications that must be identified
Office subsequently dismisses the provided in § 1.78(f)(1)(ii), applicant pursuant to § 1.78(f)(1) when common
petition, the request for continued should submit the identification to the inventor(s) and common ownership
examination will be treated as an Office as soon as practical. If the exist.
improper request for continued submission necessitates a new rejection Response: Applicant must identify
examination. However, the request for based upon double patenting (including those pending nonprovisional
continued examination will not be an obviousness-type double patenting applications that are filed within two
treated as a request to withdraw the rejection) in a second or subsequent months of each other taking into
appeal because the request for Office action on the merits, the account any filing date for which benefit
continued examination was filed before examiner may make such an action final is sought, that name at least one
the notice of appeal (i.e., the application (assuming that the conditions for common inventor, and that are owned
was not on appeal at the time of filing making a second or subsequent action by the same person or subject to an
the request for continued examination). final are otherwise met). The Office may obligation of assignment to the same
also refer any registered practitioner person. For example, the applicant for
E. Treatment of Multiple Applications who repeatedly fails to comply with the application A is required to identify
Comment 108: A number of rule requirements to the Office of application B and the applicant for
comments suggested the four-month Enrollment and Discipline for application B is required to identify
time period provided in § 1.78(f)(1) for appropriate action. Applicants and application A in the following situation:
identifying to the Office applications practitioners are strongly encouraged to The actual filing date of application A
that meet the criteria set forth in revise their practices to ensure timely is August 8, 2006. Application A claims
§ 1.78(f)(1) is unreasonably short and is submissions of the required priority of a foreign application filed on
impractical in view of the time often identification. Applicants and registered August 10, 2005. The actual filing date
required by the Office to assign practitioners are reminded of their of application B is April 11, 2006.
application numbers and communicate duties under § 10.18 and other Application B claims the benefit of a
these numbers to the applicants. One professional responsibility rules, and prior-filed nonprovisional application
comment suggested the time period the consequences of any violations (e.g., filed on October 4, 2005, and claims the
provided in § 1.78(f)(1) for identifying to §§ 10.18(c), 10.18(d) and 10.23). benefit of a prior-filed provisional
the Office applications that meet the Comment 110: A number of application filed on January 4, 2005.
criteria set forth in § 1.78(f)(1) does not comments requested clarification of Application A and application B have at
permit an applicant to timely identify § 1.78(f)(1) and how it interacts with least one common inventor and
an international application designating § 1.56, including the preexisting duty of common ownership. Each applicant
the United States of America that an applicant to disclose similar must identify the other application
entered the national stage thirty months information to the Office under § 1.56. because application A has a filing date
after the filing date of a nonprovisional Several comments stated that § 1.78(f)(1) (August 10, 2005, the foreign priority
application filed under 35 U.S.C. 111(a) imposes burdens on the applicants that date) within two months of a filing date
when these two applications meet the provide a new basis for inequitable of application B (October 4, 2005, the
criteria set forth in § 1.78(f)(1). conduct allegations. filing date of the nonprovisional
Response: The Office notes the Response: Section 1.78(f)(1) provides application whose benefit is claimed by
concerns expressed in the public that an applicant must identify other application B). ‘‘Filing date’’ includes
comments concerning the proposed pending applications or patents that are the actual filing date, foreign priority
changes to § 1.78(f)(1). The Office has commonly owned, have a common date, and the filing date of a provisional,
modified this provision relative to the inventor, and have a claimed filing or nonprovisional, or international
proposed changes such that § 1.78(f)(1) priority date within two months of the application whose benefit is sought
as adopted in this final rule provides claimed filing or priority date of the under title 35, United States Code.
applicant four months from the actual application. This requirement does not Comment 112: A number of
filing date of a nonprovisional supplant an applicant’s duty to bring comments objected that §§ 1.78(f)(1) and
application filed under 35 U.S.C. 111(a), other applications that are ‘‘material to (2) require applicants to identify and
four months from the date on which the patentability’’ of an application (e.g., resolve a possible double patenting
national stage commenced under 35 applications containing patentably issue prior to a rejection being issued by
U.S.C. 371(b) or (f) in a nonprovisional indistinct claims) to the attention of the the examiner. One comment suggested
application which entered the national examiner. Section 1.78(f)(1) does not that the rebuttable presumption in
stage from an international application provide a new basis for allegations of § 1.78(f)(2) was akin to saying that if an
applicant submits prior art, there is a contains only claims that are patentably application whose benefit is claimed in
presumption of obviousness. One distinct. Merely explaining that some of a nonprovisional application is within
comment suggested that § 1.78(f)(2) was the claims are patentably distinct would two months of the filing date of another
unnecessary because § 1.78(f)(1) not be sufficient to rebut this pending nonprovisional application,
provides the Office with sufficient presumption. and the nonprovisional applications
information to require a terminal Comment 113: One comment objected name at least one inventor in common
disclaimer or require the cancellation of that § 1.78(f)(2) would impose an undue and are owned by the same person or
claims. One comment stated that many burden on inventors because it creates subject to an obligation of assignment to
applicants will attempt to circumvent a presumption that commonly owned the same person, each applicant of the
§ 1.78(f)(2) by filing multiple patent applications which share a nonprovisional applications must
applications that meet the criteria set common disclosure and at least one identify the other nonprovisional
forth in § 1.78(f)(2), but that include inventor, are patentably indistinct. The application to the Office. For example,
both patentably distinct claims and comment further asserted that the if two nonprovisional applications
patentably indistinct claims. presumption is not in the interest of claim priority of the same foreign
Response: The rebuttable American competitiveness as American application (or two foreign applications
presumption set forth in § 1.78(f)(2) is a companies often file numerous patent filed within two months of each other),
procedural tool requiring the applicant applications with claims directed to name at least one inventor in common,
to help focus and consolidate the different features of the same new and are owned by the same person, then
examination process and thus is not product. One comment suggested that each applicant of the nonprovisional
akin to a presumption of obviousness. § 1.78(f)(1) places an excessive burden applications must identify the other
The examination is more efficient when on applicants to anticipate all the nonprovisional application, no matter
double patenting issues are identified unique claims that could be filed at the the difference in time between their U.S.
and resolved early in the process. Where time of filing the initial application. filing dates.
an applicant chooses to file multiple Response: Section 1.78(f)(2)(i) Comment 115: A number of
applications that are substantially the requires that the related applications comments suggested that § 1.78(f)(1)
same, it will be the applicant’s must have the same claimed filing or could be eliminated if the Office
responsibility to assist the Office in priority date in addition to being assigned all related applications to the
resolving potential double patenting commonly owned with one inventor in same examiner.
situations rather than taking no action common and with substantial Response: The Office attempts to
until faced with a double patenting overlapping disclosure. Multiple patent assign related applications to the same
rejection. Although the ultimate applications related to the same product examiner where possible. However,
determination of double patenting rests are not precluded by § 1.78(f)(2). In the applicant is in the best position to
with the Office, applicants are in a far situation where § 1.78(f)(2)(i) actually determine and identify when
better position than the Office to applies and the multiple applications applications are related, not the Office.
identify applications that may raise relate to patentably distinct features of By meeting the provisions of § 1.78(f),
double patenting concerns. the same new product, it should not be applicants will reduce the burden on
Section 1.78(f)(2) requires applicant to difficult to explain how the applications the Office to identify which applications
resolve the double patenting issues early contain patentably distinct claims under are related and facilitate examination of
in the prosecution by either: (1) Filing § 1.78(f)(2)(ii)(A), and thereby rebut the the related application by the examiner.
a terminal disclaimer and an presumption. Thus, the presumption of Comment 116: Several comments
explanation as to why the multiple § 1.78(f)(2)(i) does not impose an undue suggested that § 1.78(f)(1) would be
applications containing patentably burden on inventors. burdensome to applicants who file a
indistinct claims are necessary; or (2) None of the criteria under § 1.78(f)(1) large number of applications in related
explaining how the application contains for identifying certain related areas of research. These comments
only claims that are patentably distinct applications has anything to do with suggested that the examiners working in
from the claims of other related claims that could be filed in the initial these areas of technology will also
applications. Therefore, with the benefit application as suggested by the experience a significant burden. A
of § 1.78(f)(2), double patenting issues comment. Instead, § 1.78(f)(1) merely number of comments suggested that the
could be resolved more expeditiously requires identification of applications Office has not sufficiently justified how
before the first Office action on the that meet the identified criteria. the benefits of § 1.78(f) outweigh the
merits, thus saving the examiner time by Accordingly, there is no such burden added costs for both applicants and the
eliminating the need to search for placed on applicants. Office. These comments suggested that
related applications, analyze the Comment 114: Several comments the existing rules relating to double
potentially conflicting claims, and make requested clarification of the language patenting and the filing of terminal
the rejection. Merely identifying the ‘‘taking into account any filing date for disclaimers are sufficient to solve the
other applications under § 1.78(f)(1) which a benefit is sought under title 35, problems of patentably distinct claims,
would not result in these benefits. United States Code,’’ in § 1.78(f)(1). and that the Office’s searchable database
If the criteria set forth in § 1.78(f)(2) Those comments also inquired whether of applications makes the § 1.78(f)
are met, the rebuttable presumption this language includes provisional changes unnecessary. The comments
would apply regardless of whether a few applications for which benefit is sought, argued that examiners can perform
of the claims are patentably distinct merely the first nonprovisional common inventor searches as easily as
from the claims in the other related application for which benefit is sought, applicants. A number of comments
applications because § 1.78(f)(2) or every nonprovisional application for doubted the Office’s reasoning that
provides that ‘‘a rebuttable presumption which benefit is sought. duplicative applications containing
shall exist that a nonprovisional Response: Section 1.78(f)(1) requires ‘‘conflicting or patentably indistinct
application contains at least one claim applicant to consider all provisional, claims’’ are having a crippling effect on
that is not patentably distinct * * * .’’ nonprovisional, international, and the Office’s ability to examine non-
To rebut this presumption, applicant foreign applications for which benefit is continuing applications. A number of
must explain how the application sought. If the filing date of an comments making such an objection
stated that in fiscal year 2005, less than patenting issues must be considered in within two months of each other is not
three percent of the patents granted every application where the applicant a sufficient reason for the Office to not
contained a terminal disclaimer, and filed another related application, not require the information under
accordingly there is no basis for the only those applications in which § 1.78(f)(1) that would assist the Office
rebuttable presumption of patentably applicant filed a terminal disclaimer. in identifying applications that
indistinct claims. One comment For example, the statistic cited in the potentially have double patenting
suggested that § 1.78(f)(2) would not comment does not include applications issues. Practitioners should have the
reduce examiner workloads because in which the applicants canceled the required information even though their
examiners would still be required to patentably indistinct claims. docketing system may not keep track of
make their own separate determinations The burden on the examiner to applications with common inventors.
regarding whether claims are patentably evaluate arguments presented by Practitioners should have more reliable
distinct in order to evaluate and address applicant is less compared to the burden information regarding applications with
arguments made by applicants pursuant of independently identifying and common inventors than the Office’s
to § 1.78(f)(2). reviewing each application that meets database because many applications are
Response: Multiple applications with the criteria set forth in § 1.78(f)(2). filed without an executed oath or
patentably indistinct claims divert Furthermore, the issues would be declaration and the actual inventors are
patent examining resources from the resolved earlier in the prosecution. not often identified to the Office for a
examination of new applications. This Without the presumption of at least one number of months after the filing date.
final rule encourages applicants to patentably indistinct claim and Furthermore, ownership is not required
submit all of the claims that are applicant’s assistance under § 1.78(f)(2), to be identified when an application is
patentably indistinct in one single it is more difficult to resolve potential filed.
application. See §§ 1.78(f) and double patenting situations. Comment 120: One comment
1.75(b)(4). By presenting all of the Comment 117: Several comments questioned whether extensions of time
patentably indistinct claims in one suggested that the two-month window would be available for applicants
application, applicants can alleviate the between filing dates set forth in attempting to comply with the
Office’s burden of searching for multiple § 1.78(f)(1) is overly burdensome on requirements of § 1.78(f)(1).
applications containing patentably both the Office and the applicant.
Response: The identification Response: Section 1.78(i) as adopted
indistinct claims, analyzing the in this final rule provides that ‘‘[t]he
applications for double patenting issues, requirement under § 1.78(f)(1) is
consistent with the duty to disclose time periods set forth in [§ 1.78] are not
and requiring cancellation of the claims extendable.’’
or a terminal disclaimer. This will also information that is material to
patentability under § 1.56. The two- Comment 121: A number of
ensure that one single examiner will
month window set forth in § 1.78(f)(1) comments questioned why applicants
examine the same invention to provide
merely provides guidance to applicants would need to identify to the Office
consistent and focused examination.
for at least those applications that must applications with a common inventor
Furthermore, it will preclude applicant
be identified to the Office. Often, related under § 1.78(f)(1) that contain
from submitting multiple applications
applications filed outside the two- patentably distinct claims because those
to the same subject matter (with claims
that are patentably indistinct), each with month window should also be applications are not candidates for an
five or fewer independent claims or identified to the Office under § 1.56. obviousness-type double patenting
twenty-five or fewer total claims, for the Comment 118: One comment stated rejection.
purpose of avoiding the requirement to that compliance with § 1.78(f)(1) would Response: Applicant is in the best
submit an examination support be difficult for corporations that employ position to identify to the Office
document. multiple law firms to handle their applications with potentially conflicting
It is envisioned that many applicants patent prosecution portfolios. claims. By taking responsibility for
will be proactive by filing fewer Response: Each corporation typically identifying such applications, applicant
applications containing patentably has a person or a group of people who will be reducing the burden on the
indistinct claims, unless there is a good oversees its outside counsel and Office so that the Office can focus its
and sufficient reason to do so. By manages its patent portfolio. It is not limited examining resources on
minimizing such filings, applicants will unreasonable for the Office to assume examining new applications. The
reduce the Office’s burden of examining that the person(s) managing the patent ultimate determination of obviousness-
multiple applications containing portfolio is aware of the contents of the type double patenting remains with the
patentably indistinct claims. Applicants corporation’s applications being Office, which is why it is critical that
are in a far better position than the prosecuted by different law firms. In applications that meet the criteria of
Office to identify related applications any event, it is appropriate for the § 1.78(f)(1) be identified to the Office.
pursuant to § 1.78(f)(1). The Office’s corporation to bear the burden of Comment 122: A number of
searchable database is not a sufficient tracking applications for compliance comments suggested that while an
substitute for applicant’s knowledge of with § 1.78(f)(1). applicant is in a better position to know
related applications, particularly in Comment 119: One comment of related applications that have been
view of the fact that ownership suggested that some docketing systems filed, they are not in the position to
identification is not required when an currently used by practitioners do not determine whether the claims of these
application is filed, and the fact that permit searching by inventor names in applications are patentably distinct.
applications are often filed without a manner that would enable This is a function of the Office. One
executed declarations that correctly practitioners to identify applications comment argued that the Office is
name all of the inventors. with common inventors that were filed making an unsupported assumption that
The terminal disclaimer statistic cited within two months of each other. the applicant is in a far better position
in the comment covers all granted Response: The fact that some than the Office to determine whether
patents. It does not specifically relate to practitioners do not have a docketing there are one or more other applications
the limited situation covered by system to identify applications with or patents containing patentably
§ 1.78(f)(2). Furthermore, double common inventors that were filed indistinct claims.
Response: The applications whose even concern itself with obviousness- continuation application or
specifications possibly contain type double patenting rejections. They continuation-in-part application of a
patentably indistinct claims were made suggested that essentially no harm at all prior-filed application that has been
by or on behalf of the inventor or to the public exists through the grant of allowed.
applicant, and not the Office or the plural applications having the same, or Comment 127: One comment
examiner. See 35 U.S.C. 111(a). Thus, roughly the same, filing dates, while the suggested that examiners would not
the applicant is in a better position than technical traps for the unwary and the have any incentive to find claims
the Office or examiner to know when undue examination burdens established patentably distinct.
such related applications have been by double patenting rejections unduly Response: Examiners are
filed. While the ultimate determinations complicate procurement and burden the professionals who perform their duties
of double patenting and patentability Office. within the framework of the current
remain with the Office, the Office rejects Response: There are two reasons why patent laws, rules and examination
the position that the applicant has no the Office still needs to make practices. No persuasive explanation
responsibility to facilitate those obviousness-type double patenting was given in support of the suggestion
decisions. The information provided by rejections in applications filed on or that examiners would be less likely to
applicant in compliance with after June 8, 1995, and that are subject find claims patentably distinct.
§ 1.78(f)(1) is reasonably necessary for to a twenty-year term under 35 U.S.C. Comment 128: One comment
the Office to determine double patenting 154(a)(2). First, 35 U.S.C. 154 does not suggested that the rebuttable
issues. With the information provided ensure that any patent issuing on a presumption set forth in § 1.78(f)(2) was
before the first Office action on the utility or plant application will inconsistent with the Office’s restriction
merits, the Office could make the necessarily expire twenty years from the practice. The comment suggested that it
patentability determination more earliest filing date for which a benefit is was inconsistent to presume that claims
efficiently and thereby reduce claimed under 35 U.S.C. 120, 121, or are patentably indistinct when, if the
pendency. For example, the examiner 365(c) because 35 U.S.C. 154(b) includes claims were filed in one application,
could identify and resolve any double provisions for patent term extension they would be found to be patentably
patenting issues earlier in the based upon prosecution delays during distinct, and subject to a restriction
prosecution. the application process. Second, requirement.
Comment 123: One comment § 1.321(c)(3) requires that a terminal Response: The changes to § 1.78(f)(2)
suggested that the requirements of disclaimer filed to obviate an and restriction practice encourage
§ 1.78(f)(1) would raise inventorship obviousness-type double patenting applicant to file a single application for
and ownership issues when entities rejection based on commonly owned each patentably distinct invention. For
have entered into a confidential patentably indistinct claims include a example, if two or more independent
research agreement. provision that any patent granted on and distinct inventions are claimed in a
Response: The identification of such that application be enforceable only for single application, the examiner may
applications is reasonably necessary for and during the period that the patent is make a restriction requirement. See
an efficient and effective examination. commonly owned with the application § 1.142. The filing of multiple
This requirement is similar to that or patent which formed the bases for the applications that together claim only
imposed upon applicants having rejection. This requirement prevents the one patentable invention (i.e., the
knowledge of material prior art that potential for harassment of an accused applications contain patentably
became known to them via information infringer by multiple parties with indistinct claims), however, is diverting
covered by a confidentiality agreement. patents covering the same patentable the Office’s limited examining resources
In such an instance, the existence of a invention. See MPEP § 804.02. If from examining new applications.
confidentiality agreement does not applicant files all of the patentably Applicant should file a single
relieve applicants from their duty to indistinct claims in one application, application claiming one patentable
disclose this prior art information to the applicant could alleviate the Office’s invention rather than multiple
Office. In any event, § 1.78(f)(1) requires burden of searching for multiple applications claiming the same
identification of only the commonly applications containing patentably patentable invention. Applicant may
owned applications (if certain indistinct claims, analyzing the rebut the presumption that claims in
conditions are met), but not applications for double patenting issues, multiple applications are not patentably
identification of the owner. 35 U.S.C. and requiring cancellation of the claims distinct by explaining how the
115 requires that the inventors identify or a terminal disclaimer. application contains only claims that
themselves. Comment 126: One comment are patentably distinct from the claims
Comment 124: One comment suggested that § 1.78(f)(2) prevents an in each of the other applications.
suggested that § 1.78(f) will have the applicant from claiming different Similar to the restriction practice,
greatest adverse impact on small embodiments unless the embodiments applicant may maintain multiple
entities. are patentably distinct. applications if the applications contain
Response: The rules apply equally to Response: Under this final rule, patentably distinct claims (i.e., each
both non-small entities and small applicant may present claims during the application is claiming one patentably
entities. The comment did not provide prosecution of an initial application and distinct invention).
persuasive data or other evidence two continuation or continuation-in- Comment 129: One comment objected
supporting the conclusion. The Office’s part applications plus one request for that remarks by applicants under
experience is that small entities do not continued examination in the § 1.78(f)(2) to rebut the double patenting
file a larger percentage of multiple application family, without any presumption would create prosecution
applications than non-small entities. justification. Applicant therefore should history estoppel before the Office issued
Thus, it is doubtful that any impact, if have sufficient opportunity to present a rejection that could impact on the
adverse, will affect small entities the claims to different embodiments of an certainty and quality of the patent.
most. invention in these filings. Furthermore, Response: First, applicant remarks
Comment 125: Several comments applicant is not required to provide an under § 1.78(f)(2) would be akin to
questioned whether the Office should explanation under § 1.78(f)(2)(ii)(B) for a remarks set forth in response to a double
patenting rejection. The Office does not § 1.78(f)(2) represents an overreaction to terminal disclaimer in accordance with
consider the possibility of prosecution tactics engaged in by a small minority § 1.321(c) and explain why there are two
history estoppel to be a sufficient reason of applicants. Another such comment or more pending nonprovisional
to forego the presumption built into took offense to § 1.78(f)(2) as appearing applications which contain patentably
§ 1.78(f)(2). Second, such remarks to be based on underlying presumptions indistinct claims.
would not be required if all patentably that applicants are gaming the system Comment 133: One comment
indistinct claims are included in one and their representatives are acting in suggested that the rebuttable
application. bad faith whenever applications are presumption should be provisional as
Comment 130: One comment filed meeting the criteria of the rule. the scope of the claims in question may
suggested that the rebuttable Response: There is no presumption of change during the course of
presumption in § 1.78(f)(2) would bad faith on the part of applicant. The prosecution.
require applicants who normally file rebuttable presumption is simply a Response: Section 1.78(f)(2) as
multiple utility applications within two procedural tool requiring the applicant adopted in this final rule requires the
months of each other, each with more to help focus and consolidate the appropriate action within the later of:
than the threshold number of claims examination process. This will help (1) Four months from the actual filing
and each claiming benefit of the same examiners to resolve double patenting date of an application filed under 35
provisional application, to now file an issues early in the examination process U.S.C. 111(a) or four months from the
examination support document for their and contribute to examination efficiency date on which the national stage
applications. The comment suggested by eliminating the need to search for commenced under 35 U.S.C. 371(b) or
that this would be especially true for related applications. (f); or (2) the date on which a claim that
those applications forming a portfolio Comment 132: A number of is not patentably distinct from at least
being developed for a new technology. comments stated that the § 1.78(f)(2) one of the claims in the other
Response: The rebuttable criteria do not automatically lead to the applications is presented. For example,
presumption provision of § 1.78(f)(2) conclusion the claims are patentably if the presumption under § 1.78(f)(2)
would apply only if the nonprovisional indistinct and that applicants may
applies, applicant must rebut this
applications have the same filing date, easily maintain multiple applications by
presumption within four months from
taking into account any filing date for preparing claims that are uniquely
the actual filing date of an application
which a benefit is sought, name at least supported only in the application in
filed under 35 U.S.C. 111(a) for the
one inventor in common, are owned by which they appear. One comment
original claims presented on the filing
the same person or are subject to an objected that the mere presence of
date of the application. If applicant
obligation of assignment to the same specifications with overlapping
subsequently files an amendment that
person, and contain substantial disclosures does not create a prima facie
adds a new claim after four months from
overlapping disclosure. The rebuttable case of patentably indistinct claims as
the filing date of the application,
presumption provision of § 1.78(f)(2) evidenced by the fact that an
does not apply simply because obviousness-type double patenting applicant must rebut this presumption
commonly owned applications are filed rejection requires a comparison between for such a claim when applicant files
within two months of each other. In the claims of the application being the amendment.
addition, § 1.78(f)(2) provides for a examined and those of the co-owned Comment 134: One comment
rebuttable presumption that application or patent, not a comparison suggested that since the Office has
applications contain patentably of their disclosures. stated in MPEP § 804.02 that patent
indistinct claims. The applications thus Response: The § 1.78(f)(2) criteria lead applications which give rise to
will be treated as containing patentably to a rebuttable presumption, which is obviousness-type double patenting
indistinct claims for claim counting rebuttable that patentably indistinct rejections are in the public interest, it
purposes under § 1.75(b)(4) if the claims exist. The rebuttable stands to reason that the rules that seek
applicant does not explain how the presumption is not a merits to preclude such applications are
applications do not contain patentably determination of patentability, but is against public interest.
indistinct claims or if the examiner does simply a procedural tool requiring the Response: The Office stated that the
not agree with the explanation. If an applicant to help focus and consolidate use of a terminal disclaimer in
applicant files multiple applications the examination process. Further, an overcoming an obviousness-type double
that contain patentably indistinct overlapping disclosure is not the only patenting rejection is in the public
claims, there is no reason why the condition for the presumption under interest because it encourages the
Office should treat an applicant who § 1.78(f)(2). Section 1.78(f)(2) also disclosure of additional developments,
spreads patentably indistinct claims specifies that the applications must the earlier filing of applications, and the
among multiple applications differently have the same claimed filing or priority earlier expiration of patents whereby the
than an applicant who presents all of date, name at least one inventor in inventions covered become freely
the patentably indistinct claims in a common, and have common ownership. available to the public. See MPEP
single application. Accordingly, the presumption is limited § 804.02. The Office did not state that
Comment 131: Several comments so that it only applies to applications the public interest was served by all
suggested that the filing of multiple that most likely contain patentably applications that contain patentably
applications having at least one indistinct claims. The rebuttable indistinct claims.
common inventor and specifications presumption does not equate to a prima Comment 135: One comment
with overlapping disclosures cannot be facie case of patentably indistinct questioned whether applications subject
presumed to be bad faith prosecution claims. An applicant may rebut the to the requirements of § 1.78(f)(2) would
because these applications typically presumption by explaining how the increase examination pendency or add
claim distinct inventions that relate to application contains claims that are to the Office’s backlog since the
the same product or service and such patentably distinct from the claims in rejections set forth in applications with
applications are not used to delay each of the other applications or patentably indistinct claims are
prosecution. One such comment stated patents. If the applicant cannot rebut the typically overcome by a properly
that the rebuttable presumption under presumption, applicant must submit a drafted terminal disclaimer.
Response: The changes to § 1.78(f)(2) in § 1.75(b)(1) by filing multiple the claims would be subject to a
in this final rule are aimed at reducing applications. Such a strategy would be rejection under the one-way double
pendency and the Office’s backlog. ineffective as a result of the provisions patenting analysis. The Berg court stated
Specifically, § 1.78(f)(2) requires of § 1.75(b)(4) and § 1.78(f). For the that ‘‘[i]f a potential applicant is unsure
applicant to resolve the double purpose of determining whether each of whether it has more than one patentably
patenting issues early in the prosecution the multiple applications exceeds the distinct set of claims, the PTO advises
(e.g., four months from the actual filing five independent claim and twenty-five that it file all of the claims as one
date of the application) by either: (1) total claim threshold, the Office will application.’’ See id. at 1435, 46
Filing a terminal disclaimer and an treat each application as having the total U.S.P.Q.2d at 1232. The option
explanation as to why the multiple number of all of the claims (whether in presented by the Office was considered
applications containing patentably independent or dependent form) from by the court to be reasonable,
indistinct claims are necessary; or (2) all of the multiple applications. See notwithstanding the possibility that the
explaining how the application contains § 1.75(b)(4). examiner might not make a restriction
only claims that are patentably distinct Comment 137: Several comments requirement.
from the claims of other related objected that applicants are being Comment 139: One comment
applications. Therefore, double required to explain or justify why they suggested that applicants will be
patenting issues could be resolved are filing patent applications. Some of unfairly disadvantaged if they fail to
before the first Office action on the the comments stated that such a convince the examiner that the claims
merits, thus saving the examiner time by requirement is unnecessarily are patentably distinct, as they will
eliminating the need to search for burdensome and forces applicants to likely be simultaneously subject to a
related applications, analyze the make statements that could lead to final rejection with the probability of
potentially conflicting claims, and make prosecution history estoppel issues. One just a single continuation application to
the rejection. As a result, examination of the comments questioned why gain allowance of the claims.
can be more focused on prior art and § 1.78(f)(2)(ii) requires applicants to Response: This final rule permits
other patentability issues. explain why the filing of two applicant to file two continuation or
Without the rebuttable presumption applications is necessary if a terminal continuation-in-part applications and
of § 1.78(f)(2), it would be harder for the disclaimer has been filed. one request for continued examination
examiner to identify and resolve the Response: The filing of multiple in an application family, without any
potential double patenting situation. In applications containing patentably justification. If a timely rebuttal under
addition, if an Office action in an indistinct claims is impairing the § 1.78(f)(2) is filed before the application
application to which the rebuttable Office’s ability to examine new is taken up for initial examination, the
presumption applies must include a applications. Applicant has the applicant will not be subject to a final
double patenting rejection, it is because opportunity to avoid drafting and filing rejection in the first Office action on the
the applicant has not helped to resolve applications that satisfy the criteria of merits. Only if the rebuttal is not timely
the double patenting situation pursuant § 1.78(f)(2) by filing a single application filed would the applicant be subject to
to § 1.78(f)(2). Accordingly, a double containing all of the patentably a final rejection in the succeeding Office
patenting rejection made for the first indistinct claims. Furthermore, action in the event the examiner makes
time in a second or subsequent Office § 1.78(f)(2)(i) gives applicant the option a determination of patentably indistinct
action will not preclude the Office to rebut the presumption of patentably claims.
action from being made final (assuming indistinct claims rather than filing a Comment 140: One comment stated
that the conditions for making a second terminal disclaimer and an explanation. that the § 1.78(f)(2) rebuttable
or subsequent action final are otherwise Also note that the § 1.78(f)(3) provision presumption of patentably indistinct
met). Thus, applicants’ responsibility to was similarly set forth in former claims is overreaching and its burden on
take the initiative under § 1.78(f)(2) to § 1.78(b). the applicant cannot be justified since it
resolve double patenting situations will Comment 138: Several comments is very common for an applicant to file
expedite examination, even if this were critical of § 1.78(f)(2) and stated multiple applications having a single
responsibility does not result in the that the rule would merely result in specification and patentably distinct
prompt resolution of the double applicants filing jumbo patent claims drawn to different inventions.
patenting situation. Further, the Office applications with multiple claim sets Response: The rebuttable
envisions that many applicants will file drawn to patentably distinct inventions presumption of § 1.78(f)(2) is not
fewer applications containing in order to force the Office to issue overreaching as it applies only to
patentably indistinct claims in light of restrictions instead of filing multiple applications that have the same filing
§ 1.78(f)(2) unless there is a good and applications on the same day that meet date, taking into account any filing date
sufficient reason to do so. Therefore, the the criteria of § 1.78(f)(2). for which a benefit is sought, name at
Office expects that the requirements of Response: Section 1.78(f)(2) permits least one inventor in common, are
§ 1.78(f)(2) will not increase applicant to file multiple applications owned by the same person or are subject
examination pendency or add to the claiming patentably distinct inventions. to an obligation of assignment to the
Office backlog. Applicant may rebut the presumption same person, and contain substantial
Comment 136: One comment by arguing that the applications claim overlapping disclosure. Thus, it applies
suggested that the strategy for patentably distinct inventions. only to applications that most likely
circumventing the claim requirement set Applicant also has the option of filing contain patentably indistinct claims.
forth in § 1.75 by filing multiple a single application to claim patentably Applicant who files multiple
applications in order to receive distinct inventions or when applicant is applications claiming patentably
substantive examination on more than unsure whether the inventions are distinct inventions may simply rebut
the threshold number of claims conflicts patentably distinct. As noted in Berg, the presumption. Applicant also has the
with § 1.78(f)(2). 140 F.3d at 1434, 46 U.S.P.Q.2d at 1231, option of filing a single application to
Response: As suggested by the applicants achieve no advantage by claim patentably distinct inventions or
comment, some applicants might choosing to file patentably indistinct when applicant is unsure whether the
attempt to circumvent the requirements claims in separate applications because inventions are patentably distinct. If an
application claims two or more Comment 144: One comment stated or an incorporation by reference to
independent and distinct inventions, that by requiring more than a terminal another application.
the examiner may make a restriction disclaimer to overcome an obviousness- Response: As discussed previously,
requirement. See § 1.142. type double patenting rejection, the § 1.78(f)(2)(i) provides that substantial
Comment 141: Several comments Office is outside its authority. overlapping disclosure exists if the
requested clarification as to the standard Response: No more than a terminal other pending or patented
for ‘‘patentably indistinct’’ as the term disclaimer is required to overcome nonprovisional application has written
appears in § 1.78 and whether this obviousness-type double patenting if the description support under 35 U.S.C.
applies to ‘‘same invention’’ double reference is a patent. However, if the 112, ¶ 1, for at least one claim in the
patenting under 35 U.S.C. 101, or obviousness-type double patenting nonprovisional application. This
‘‘obviousness-type’’ double patenting, or reference is a pending application, written description support may be
something different. Several comments consideration of patentably indistinct either by express disclosure or by an
requested clarification concerning what claims can be expedited in a single incorporation by reference to another
would be an adequate explanation application. Such a requirement is application. A single common sentence
under § 1.78(f)(2)(i) to rebut the consistent with the Office’s statutory or disclosed element most likely would
presumption of patentably indistinct authority under 35 U.S.C. 2(b)(2). not, by itself, constitute ‘‘substantial
claims. Nothing in the patent statutes requires overlapping disclosure.’’
Response: The standard for the Office to accept patentably Comment 148: One comment was
‘‘patentably indistinct’’ as the term indistinct claims in multiple critical that § 1.78(f)(2)(i) will force
appears in § 1.78 is one-way applications absent a good and applicants to prove a negative in order
distinctness in an obviousness-type sufficient reason. to show that there are no patentably
double patenting analysis. See MPEP Comment 145: Several comments indistinct claims among the pending
§ 804(II)(B)(1)(a). The presumption suggested eliminating the presumption nonprovisional applications.
of double patenting in § 1.78(f)(2) and Response: To rebut the presumption
under § 1.78(f)(2) may be rebutted by
identification of similar applications in under 1.78(f)(2)(i), applicant could
showing that the application claims are
§ 1.78(f)(1) as such requirements are identify claim elements that patentably
directed to a separate invention, or by
already in the rules. distinguish the applications from one
pointing to a unique claim element(s) in Response: The former rules of practice
the independent claim(s) that patentably another. It is not required that the
did not expressly require the applicant prove a negative.
distinguishes them from the claims in identification of applications based on Comment 149: Several comments
the application(s) that gave rise to the filing dates, inventorship and objected that § 1.78(f)(3) could
§ 1.78(f)(2) presumption. ownership conditions. Some of the effectively promote a ban on
Comment 142: A number of applications identified pursuant to continuation applications with
comments questioned whether all § 1.78(f)(1) may be applications with the patentably indistinct claims, and may
patentably indistinct claims in multiple potential to be material to patentability unnecessarily limit claim broadening in
applications meeting the conditions of as prosecution progresses. Section continuation applications.
§ 1.78(f)(2) are required to be submitted 1.78(f)(2) as adopted in this final rule Response: Section 1.78(f)(3) is a
in a single application absent good and explicitly sets forth for the first time a restatement of former § 1.78(b), which
sufficient reason. presumption of patentably indistinct previously gave the Office the same
Response: If all patentably indistinct claims among related applications discretion to require elimination of
claims can be filed in a single meeting certain conditions. patentably indistinct claims in all but
application and there is no good and Comment 146: Several comments one of the pending nonprovisional
sufficient reason for the patentably suggested permitting ‘‘voluntary’’ applications. The only difference is that
indistinct claims to be filed in multiple divisional applications instead of the Office will now have the benefit of
applications, then applicant should file requiring an explanation adequate to § 1.78(f)(2)(i) to evaluate when to
the patentably indistinct claims in a rebut the § 1.78(f)(2) presumption of properly exercise that discretion.
single application. Section 1.78(f)(3) patentably indistinct claims. Comment 150: A number of
provides that the Office may require Response: It is unclear how such a comments noted that § 1.78(f)(3)
elimination of the patentably indistinct strategy would reduce pendency and essentially restates former § 1.78(b) and
claims meeting the conditions of promote quality. Anytime a terminal questioned whether § 1.78(f)(3) would
§ 1.78(f)(3) in all but one of the disclaimer is filed under the conditions achieve anything beyond what former
applications in the absence of a good of § 1.78(f)(2), the applicant would also § 1.78(b) achieved during its existence
and sufficient reason for there being two have to file a satisfactory explanation of for over thirty-five years.
or more applications containing why there are two or more commonly Response: This provision will be more
patentably indistinct claims. owned pending nonprovisional effectively utilized with the other
Comment 143: Several comments applications naming at least one changes to § 1.78(f).
suggested that § 1.78(f)(2) be changed to inventor in common which contain Comment 151: A number of
provide that the presumption of patentably indistinct claims. The comments requested clarification of the
patentably indistinct claims be applied alternative to filing a terminal procedure for reviewing a determination
to all related applications only when a disclaimer with the explanation is to of multiple applications with patentably
double patenting rejection is made in rebut the § 1.78(f)(2) presumption with indistinct claims. One comment
one of the related applications. a showing that the application contains requested clarification as to whether an
Response: The suggested change only patentably distinct claims. adverse determination is redressed by
would delay triggering the presumption Comment 147: Several comments way of appeal to the BPAI or to a district
of patentably indistinct claims and not requested clarification as to what court.

help reduce the burden on examiners constitutes ‘‘substantial overlapping Response: Applicants may petition
with respect to reviewing and analyzing disclosure’’ and whether it the Director for review of administrative
related applications with potentially encompasses, for example, a single requirements by an examiner or other
conflicting claims. common sentence or disclosed element, Office official, such as a requirement for
an examination support document Response: As discussed previously, it See Conflicting Claims, 36 FR 7312
under § 1.265 when claims in multiple is envisioned that many applicants will (April 17, 1971) (final rule).
applications are determined to be file fewer applications containing Comment 158: One comment stated
patentably indistinct thus causing the patentably indistinct claims unless there that the patentably indistinct claims in
involved applications to exceed the five is a good and sufficient reason to do so. multiple applications are a necessary
independent claim and twenty-five total Because any requirement under and desirable component of United
claim threshold set forth in § 1.78(f)(3) would be made during States patent law.
§§ 1.75(b)(1), (b)(3), and (b)(4), as well as examination, there can be no petitions Response: The comment did not
a requirement that claims in multiple to the Director, or appeals, filed before provide a reason why the need for
applications that are determined to be examination as suggested by the applicants to have separate applications
patentably indistinct be canceled from comment. The comment provided no with patentably indistinct claims
all but one application. reasoning as to why § 1.78(f)(3) would outweighs the needs of the Office to
The BPAI’s jurisdiction and appeal have the negative impact anticipated by reduce the resources exhausted during
procedure in general has not been the comment when § 1.78(f)(3) is a the examination of different
changed as a result of this final rule. As restatement of former § 1.78(b). applications with patentably indistinct
before, applicant may appeal the Comment 154: One comment claims.
decision of the examiner to the BPAI suggested allowing multiple related Comment 159: One comment stated
under 35 U.S.C. 134 and § 41.31 if at applications, keeping the requirement to that § 1.78(f)(3) imposes an overly
least one claim has been twice rejected identify related applications, and stringent standard that jeopardizes
(see § 41.31(a)), including an adding a requirement for applicant to applicant’s ability to ensure patented
obviousness-type double patenting briefly explain the subject matter claims will be held valid if challenged
rejection. claimed in each related application. during litigation. One comment stated
Comment 152: A number of Response: The proposed solution that the § 1.78(f) changes are based on
comments were critical of the ‘‘may would not meet the objectives of these the presumption that all patentably
require elimination’’ in § 1.78(f)(3), rules and would not prevent the Office indistinct claims can be supported and
suggesting that the discretion would be from unnecessarily expending the examined in the same application, but
arbitrarily applied by individual Office’s resources in the examination of that is not always the case.
Response: Section 1.78(f)(3) is a
examiners and inconsistently applied by multiple applications with patentably
restatement of former § 1.78(b), which
the Patent Examining Corps. Some indistinct claims.
previously gave the Office the same
comments requested clarification of the Comment 155: Several comments
discretion to require elimination of
procedure and questioned whether the questioned whether excess claim fees
patentably indistinct claims in all but
Office will make a double patenting would be refunded upon elimination of
one of the pending nonprovisional
rejection and/or require elimination of patentably indistinct claims pursuant to
applications. Therefore, § 1.78(f)(3) does
patentably indistinct claims. Some § 1.78(f)(3).
not introduce a new standard as
comments questioned whether a Response: Applicant may request a
suggested in the comment. Applicant
requirement to eliminate patentably refund of any excess claims fees paid on
may file multiple applications, but
indistinct claims would apply to all but or after December 8, 2004, if applicant
applicant must, in each application,
a single application. cancels the claim before an examination
submit a terminal disclaimer in
Response: Section 1.78(f)(3) provides on the merits has been made of the
accordance with § 1.321(c) and explain
that, in the absence of good and application. See § 1.117.
why there are two or more pending
sufficient reason for there being Comment 156: Several comments
nonprovisional applications containing
multiple commonly owned applications questioned why there is different
patentably indistinct claims.
that contain patentably indistinct language in §§ 1.78(f)(3) and 1.75(b)(4), Comment 160: One comment
claims, the Office may require and questioned whether the language suggested allowing applicants to add
elimination of the patentably indistinct should be the same. patentably indistinct claims to an
claims from all but one of the Response: As the comment noted, the application after determination that an
applications. The term ‘‘may’’ provides proposed provisions that the Office may original set of claims is allowable.
both the Office and applicants with the require elimination of the patentably Response: Patentably indistinct
necessary discretion and flexibility indistinct claims from all but one of the claims should not be added to an
either to eliminate the identified claims applications in §§ 1.78(f)(3) and application upon allowance of the
found to be patentably indistinct, or to 1.75(b)(4) were duplicative and might original claims, but should instead be
merge multiple applications into one. have appeared different. In view of the presented earlier.
Substantively, § 1.78(f)(3) is a comment, the Office did not adopt the Comment 161: One comment
restatement of former § 1.78(b). proposed provision that the Office may questioned whether it is really a burden
Comment 153: A number of require elimination of the patentably on the examiner to search two
comments stated that requirements to indistinct claims from all but one of the applications with patentably indistinct
eliminate patentably indistinct claims applications in § 1.75(b)(4). The Office claims versus one application with the
from all but one of the applications will adopted this provision in § 1.78(f)(3) claims of both.
lead to applicant appeals or petitions which is substantively a restatement of Response: It is less burdensome to the
before examination resulting in a former § 1.78(b). See the discussion of Office to have patentably indistinct
substantial increase in pendency while §§ 1.75(b)(4) and 1.78(f)(3). claims in a single application. A related
consuming Office and applicant Comment 157: Several comments application with conflicting claims
resources. Some comments stated that requested that implementation of would have to be identified, reviewed
§ 1.78(f)(3) requirements will discourage § 1.78(f)(3) be delayed until other rule and analyzed for double patenting
applicants from acknowledging claims changes can be evaluated. issues.
that are patentably indistinct and result Response: Section 1.78(f)(3) is a Comment 162: One comment
in increased challenges to double restatement of former § 1.78(b) which suggested providing for immediate and
patenting rejections. has been in effect since April 30, 1971. expedited review of all decisions
relating to new submissions required by adversely affect the treatment given to application to the ‘‘representative
§ 1.78. dependent claims in court. One claims’’ (the independent claims and
Response: The Office will strive to comment argued that the Office’s the dependent claims that are expressly
promptly act on all petitions related to statistics on applications having more designated by the applicant for initial
the changes to § 1.78 in this final rule. than ten independent claims ignore how examination). The Office is instead
Comment 163: One comment many total claims had to be presented making the presentation of more than
suggested that § 1.78(g) should be to lead to those independent claims. five independent claims or more than
amended to require that in response to Several comments argued that since twenty-five total claims (rather than the
a statutory or obviousness-type double excess claim fees have presumably been presentation of more than ten
patenting rejection, the Office may determined based on the resources representative claims) the threshold for
require the assignee to state whether the necessary to carry out search and invoking the examination support
claimed inventions were commonly examination of all of the claims, it is not document requirement. Thus, this final
owned or subject to an obligation of appropriate for the Office to neglect to rule provides that if the number of
assignment to the same person at the fully search and examine the entire independent claims is greater than five
time the later invention was made, and application for which all fees have been or the number of total claims is greater
if not to indicate which named paid. One comment stated that there is than twenty-five, the applicant must
inventor(s) is/are the prior inventor, no basis for limiting the consideration of provide additional information to the
unless applicant traverses the rejection. a dependent claim during examination Office in an examination support
Response: Section 1.78(g) contains the because under 35 U.S.C. 112, ¶ 4, a document covering all of the claims in
provisions of former § 1.78(c). The dependent claim is treated as a claim the application (whether in independent
Office believes that these provisions, as that incorporates all the limitations of or dependent form).
well as the information that may be the preceding claims. Although, the ‘‘representative claims’’
required, are currently sufficient for the A number of comments argued that examination approach is not being
Office to achieve its goals with respect the ‘‘representative claims’’ examination adopted, the Office disagrees that such
to identifying commonly owned cases approach may be appropriate in other an approach amounts to piecemeal
that come within the provisions of 35 proceedings (such as before the BPAI) or examination or that it would be less
U.S.C. 103(c) or with respect to even during examination, but not before efficient than the current examination
determining the prior invention. first Office action on the merits. One process. Under such an approach, the
F. Changes to Practice for Examination comment argued that statistical data Office would have examined a claim
of Claims from the appeal stage is misleading before applicant could seek review of
because there are fewer issues during an any rejection of the claim on appeal,
Comment 164: Several comments appeal than during prosecution of an regardless of whether the claim was
supported the concept of representative application before the examiner. Several designated or non-designated under the
claims. One comment stated that the comments stated that the BPAI would ‘‘representative claims’’ examination
rules promote more focused be forced to perform examination on the approach.
examination, reduce delay and help merits of the non-representative claims. Regarding escalating fees, the Office
conserve scarce Office resources, require A number of comments suggested that previously proposed a system of
little effort on the part of most the Office should address excessive escalating fees and it was
applicants, and still make certain that claiming concerns in a simple and overwhelmingly opposed by user
no patent claims will issue without a straightforward manner by limiting the groups. The Office has also determined
complete examination. The comments number of claims permitted and fully that charging higher fees for large
also expressed support for limiting the examined under the basic fee structure numbers of claims would likely still not
number of claims that need to be to, for example, six independent and result in the desired increase in quality
examined and encouraged the Office to thirty total numbered claims, and since many applicants would simply
reduce overwhelming numbers of allowing multiple dependent claims pay the higher fees. Furthermore, claim
claims in favor of quality examinations. that depend on other multiple fees are set by statute, not the Office. As
One comment suggested that the Office dependent claims. Several comments discussed previously, 35 U.S.C. 112, ¶ 5,
should adopt a rule that only suggested that the Office specify that prohibits multiple dependent claims
independent claims are examined. excess claims over a certain number will depending on other multiple dependent
A number of comments, however, only be examined if accompanied by an claims.
argued in a variety of terms that the independent search report, rather than Comment 165: One comment stated
‘‘representative claims’’ examination burdening all applicants with the that examining many claims aids in
approach would lead to piecemeal requirement to designate claims. Several understanding the invention.
examination and prolonged comments suggested that instead of Response: The experience of those
examination, would require additional representative claims, applicants should who actually examine applications is
searching when features from non- be allowed to select claims that stand or that examining a large number of claims
designated dependent claims are added fall together. does not aid in understanding the
to designated dependent or independent Finally, a number of comments also invention but rather obfuscates the
claims, and would lead to additional raised implementation issues, requested invention. In addition, the issuance of
filings, increased appeals, and less clarification concerning implementation patents containing an excessive number
thorough examination. Several issues, or provided suggestions of claims has also long been considered
comments suggested that the number of concerning the implementation of the an abuse of the courts and the public,
claims examined should not be limited ‘‘representative claims’’ examination rather than an aid in understanding the
per se because the line of novelty in a approach. invention. See Carlton v. Bokee, 84 U.S.
claim family often falls between the Response: As a result of the public (17 Wall) 463, 471–72 (1873) (needless
broad independent claims and the comment, the Office is not adopting the multiplication of nebulous claims
narrowest dependent claim. One ‘‘representative claims’’ examination deemed calculated to deceive and
comment stated that the ‘‘representative approach under which the Office would mislead the public); Wahpeton Canvas
claims’’ examination approach may limit the initial examination of an Co. v. Frontier, Inc., 870 F.2d 1546, 1551
n.6, 10 U.S.P.Q.2d 1201, 1206 n.6 (Fed. claims), the applicant must provide a six independent claim and forty total
Cir. 1989) (presentation of the additional information to the Office in claim threshold; and (3) 5.0 percent of
infringement issue on an overgrown an examination support document small entity applicants exceeded a ten
claims jungle to a jury and judge at trial under § 1.265. The overall goal of these independent claim and fifty total claim
is an unprofessional exercise in changes is to promote early presentation threshold where only 4.1 percent of all
obfuscation). of claimed inventions, enhance quality applications exceeded a ten
Comment 166: A number of and improve pendency. The rules do independent claim and fifty total claim
comments argued that more claims are not impose a per se limit on the number threshold.
needed to protect an applicant’s of claims which can be presented to The remaining explanations (post-
invention adequately, especially in light protect applicant’s inventions. Rather, Festo patent-drafting techniques, not
of restrictions on the doctrine of applicant may file any desired number wanting the responsibility of
equivalents, decisions by the Federal and scope of claims necessary to determining the differences between the
Circuit on unclaimed subject matter, the adequately protect the applicant’s prior art and the invention, and
proposed limitations on continuation invention as long as an examination attempts to induce a restriction
practice, and because the complexity of support document is provided before requirement) may be ‘‘reasons’’ why
some inventions requires more claims to the issuance of the first Office action on some applicants submit a large number
protect the subject matter appropriately. the merits of an application that present of claims. These reasons, however, do
One comment argued that the effects of more than five independent claims or not justify not going forward with a
prosecution history estoppel and the twenty-five total claims. change to the rule of practice to require
constraints put on reissue applicants by applicants who place an extensive
The Office notes that, during fiscal
the recapture doctrine demand a broad burden on the Office to help focus
year 2006, the percentage of small entity
range of claims. Several comments examination by providing additional
applications that exceeded the five
argued that the proposed changes information in the form of an
independent claim and twenty-five total
disproportionately affect the examination support document to the
claim threshold appeared slightly higher
biotechnology and pharmaceutical Office.
than the percentage of total applications
industries. One comment argued that in
that exceeded the five independent Comment 167: One comment argued
chemical or pharmaceutical
claim and twenty-five total claim that choosing dependent claims to
applications full protection requires
threshold (24.4 percent as opposed to designate at the outset of prosecution
applicant to claim a chemical substance,
23.7 percent). The Office does not forces applicant to make a threshold
a composition containing the substance,
consider this slight differential as decision regarding claim scope without
method of making the substance, the
establishing that the changes in this the benefit of analyzing cited prior art
chemical substance prepared by a
final rule have a disproportionate following an Office action. Thus,
claimed process and at least one method
economic impact on small entities. applicants either have to guess, or
of use, where there is varying scope
While it is possible to engage in a perform their own prior art search prior
within each category of invention. The
comments argued that individuals and mathematical exercise to exaggerate the to filing, which puts a burden on
small businesses would be unable to significance of any slight differential, applicant and results in the need to file
afford the costs of pursuing their these percentages are based upon data a previously unnecessary information
inventions and may be discouraged that is available in the Office’s PALM disclosure under § 1.56.
from using the patent system due to the system for applications filed during the Response: The Office is not adopting
financial and procedural burdens they most recent fiscal year, and this slight the proposed ‘‘representative claim’’
must overcome to obtain adequate differential is not sufficient to establish approach. Therefore, no designation is
patent protection of their invention. that the changes in this final rule have required by this final rule. This final
Several comments argued that the a disproportionate economic impact on rule requires applicants who present
proposed rules would have a small entities. In addition, there is no more than five independent claims or
disproportionate impact on small apparent reason why small entity more than twenty-five total claims to
entities. One comment stated that in the applicants would inherently require file an examination support document
post-Festo environment, patent-drafting more claims to adequately cover their before the issuance of a first Office
techniques would suggest filing a large inventions. Thus, even higher action on the merits of an application.
number of picture claims in multiple differences in these percentages could Applicants are encouraged to conduct a
statutory classes for easy understanding easily be explained by the fact that preexamination search and review the
of the invention by the Federal Circuit. small entity applicants pay only one- references uncovered from the
One comment stated that the primary half of the fees that other applicants pay preexamination search so applicants can
reason why large numbers of claims are for excess claims. Moreover, the five better understand where their invention
filed is that the applicants or their independent claim and twenty-five total fits in the overall patent landscape.
representatives do not want the effort claim threshold adopted in this final Such action would facilitate
and responsibility of determining the rule has a smaller differential than other presentation of claims more likely to be
differences between the prior art and the alternatives suggested in the comments. patentable over the closest prior art,
invention, and that another reason is For example, in fiscal year 2006: (1) 17.1 thereby alleviating some of the burden
that attorneys who are paid a flat fee for percent of small entity applicants on Office resources. Nevertheless, if
applications attempt to induce a exceeded a six independent claim and applicant chooses not to conduct a
restriction requirement. thirty total claim threshold where only preexamination search and does not
Response: This final rule provides 15.7 percent of all applications submit an examination support
that if the number of independent exceeded a six independent claim and document before the first Office action
claims is greater than five or the number thirty total claim threshold; (2) 10.3 on the merits of the application, this
of total claims is greater than twenty- percent of small entity applicants does not constitute a justification for
five (a strategy based upon whether an exceeded a six independent claim and filing more than five independent
application contains more than a given forty total claim threshold where only claims or more than twenty-five total
number of independent and total 9.2 percent of all applications exceeded claims.
Comment 168: One comment stated Comment 170: One comment argued filing practice do not by themselves act
that it is unclear as to whether all that the rule will create more work for to lessen the examiner’s burden when
claims, or only independent (or examiners by requiring review of all faced with a large number of claims for
designated) claims, are counted for the patents and applications assigned to one examination.
purposes of § 1.75(b)(4). assignee of an application under Comment 173: One comment
Response: Pursuant to § 1.75(b)(4) as examination, and that if certain questioned how the Office will
adopted in this final rule, the Office will examiners fail to do so, the rule will be implement review of two applications
count all of the claims in copending unfairly applied within the Office. One containing claims to the same invention.
applications containing patentably comment argued that implementation of Response: If two or more commonly
indistinct claims (including the rules will have a disproportionate assigned applications contain
applications having a continuity effect on assignees holding small patent patentably indistinct claims, the Office
relationship) but not in issued patents portfolios because due to time will track the applications via the PALM
containing patentably indistinct claims, constraints, examiners will be able to system. The applicant may explain why
in determining whether each such review small patent portfolios more the claims of one application are
application contains more than five thoroughly than large ones. patentably distinct from the claims of
independent claims or more than Response: The rules do not require the other(s). If at least one claim is not
twenty-five total claims and thus examiners to review all patents and patentably distinct and there are a total
whether an examination support applications assigned to the same of more than five independent claims or
document in compliance with § 1.265 is assignee, but rather require applicant to more than twenty-five total claims in
required. Claims withdrawn from identify certain commonly assigned the applications, the applicant will be
consideration under §§ 1.141 through applications having a common inventor. required to file an examination support
1.146 or § 1.499 as drawn to a non- See § 1.78(f)(1). Examiners already face document before the first Office action
elected invention or inventions, the situation of having to evaluate a on the merits in each application.
however, will not, unless they are potentially large number of commonly Applicant may file a terminal disclaimer
reinstated or rejoined, be taken into assigned patents and applications for to obviate an obviousness-type double
account in determining whether an the purpose of determining whether a patenting rejection.
prior art or double patenting rejection is Comment 174: One comment
application exceeds the five
warranted. The rules will enable the suggested that the requirement that
independent claim and twenty-five total
examiners to do this analysis more claims differ substantially according to
claim threshold set forth in
thoroughly and in less time, thus § 1.75(b) should only apply to
§§ 1.75(b)(1), (b)(3), and (b)(4). See
enhancing quality and reducing independent claims.
§ 1.75(b)(5). As discussed previously, Response: The provision that ‘‘[m]ore
pendency.
this final rule does not implement a than one claim may be presented
Comment 171: One comment argued
‘‘representative claims’’ examination provided they differ substantially from
that implementation of the rules will
approach. create an additional area of contention each other and are not unduly
Comment 169: One comment stated between examiners and applicants, and multiplied’’ has been set forth in
that the rules do not provide speedy and an additional drain on examiners’ time. § 1.75(b) even prior to this final rule.
economical administrative relief when The comment further argued that the The comment provides no reason why
the Office errs in determining whether drain will be greater than that associated the requirement that claims differ
claims are patentably indistinct, or with double patenting because double substantially from each other and not be
whether there is adequate support in an patenting rejections can be overcome by unduly multiplied should not also
application for a claim filed in another filing terminal disclaimers. apply to dependent claims.
application. Response: No new issues between the Comment 175: One comment inquired
Response: As discussed previously, examiner and the applicant are about designation of claims during
the Office already has timely and introduced by the changes being reexamination. The comment stated that
efficient procedures in place that adopted in this final rule. Rather, the the rules should not apply to
provide for an applicant to seek relief rules allow the examiner to identify and reexaminations of patents granted prior
with respect to matters subject to appeal address issues more thoroughly. to enactment of the rules.
(e.g., the rejection of claims) by way of Furthermore, as a result of the rules, Response: The changes to § 1.75
an appeal to the BPAI under 35 U.S.C. applicants will be made aware of issues adopted in this final rule do not apply
134 and § 41.31 et seq., and to seek earlier in the prosecution, thus giving to reexamination proceedings.
relief with respect to actions or applicants more time to formulate Furthermore, this final rule does not
requirements not subject to appeal by appropriate responses. Terminal adopt the ‘‘representative claims’’
way of a petition to the Director under disclaimers will continue to be available examination approach (which provided
§ 1.181. For example, if a double for use as appropriate to obviate non- for a designation of dependent claims).
patenting rejection is made because the statutory double patenting rejections. Comment 176: A number of
claims of two applications are Comment 172: One comment argued comments argued that the changes limit
patentably indistinct, applicant may that the changes concerning claims are the protection paid for by applicant.
seek relief by way of an appeal to the superfluous in view of the rule changes One comment argued that as a result of
BPAI. If the Office issues a notice under concerning continuation practice, and the limitation on the number of claims,
§ 1.75(b) requiring an examination that a penalty for filing excessive companies that invest in research and
support document in each of the continuations is already provided in the development could be expected to keep
multiple applications that contain continuations rules. more inventions as trade secrets due to
patentably indistinct claims, applicant Response: The changes to the practice the threat posed by ‘‘free riders’’ who
may seek relief by way of a petition to for examination of claims will operate make minor modifications in an attempt
the Director under § 1.181. A grant of in concert with the changes to the to avoid infringement.
relief in a petition, however, does not practice for continuing applications and Response: The patent statute requires
preclude a subsequent double patenting requests for continued examination. The that an applicant pay certain filing fees
rejection. changes for the continued examination (the filing, search, examination, excess
claims, and application size fees) on or obscure the invention can be limiting claims before initial
filing an application for patent. See 35 adequately handled through the use of examination is also not inappropriate.
U.S.C. 41(a). The payment of these undue multiplicity rejections. Response: The previous proposal was
patent filing fees does not amount to a Response: Undue multiplicity not abandoned because it was deemed
purchase of patent protection but are rejections based on 35 U.S.C. 112, ¶ 2, inappropriate; rather, it was abandoned
simply to help cover the costs of are rare. See MPEP § 2173.05(n). The because it was unpopular. The Office
examination and application processing. rule changes are designed to provide a subsequently sought increases in excess
Section 1.75 does not limit the more focused quality examination of all claims fees via legislative change. There
number of claims that applicant can applications. The Office would not be was insufficient public support for all
present in an application. Section able to obtain the desired gains in the fee increases that the Office
1.75(b)(1) permits an applicant to efficiency and quality by merely relying considered necessary and the current
present five independent claims and on the use of undue multiplicity fees are not adequately addressing the
twenty-five total claims for examination rejections. problem of large numbers of claims. The
without the need for an examination Comment 179: One comment argued comments submitted in response to the
support document. An applicant who that the impact of the rules on the Claims Proposed Rule indicate that
considers five independent claims or backlog will be minimal and referred to many view an approach similar to that
twenty-five total claims to be the Inspector General Report of 2004 proposed in 1998 to be preferable. The
insufficient may present more than five which identified suboptimal incentives changes being adopted in this final rule
independent claims or twenty-five total for examiners as the cause of the (in contrast to the changes proposed in
claims by submitting an examination backlogs, not the excess number of 1998) do not place a limit on the
support document under § 1.265 before claims. number of claims (independent or
the first Office action on the merits of Response: The September 2004 dependent) that may be presented in an
an application. Inspector General Report (Final application. These changes adopted in
Comment 177: One comment this final rule simply require the
Inspection Report No. IPE–15722),
suggested that if the rules are submission of an examination support
available at http://www.oig.doc.gov/oig/
implemented, the Office should reduce document if an applicant chooses to
reports/2004/USPTO–IPE–15722–09–
the examination fee and wait to charge present more than five independent
the excess claim fees, or refund the 04.pdf, concluded that the Office should
claims or more than twenty-five total
excess claim fees if the application goes reevaluate patent examiner production
claims in an application. Furthermore,
abandoned. goals, appraisal plans, and award
the backlog of unexamined applications
Response: The basic filing, search, systems. The September 2004 Inspector
has increased from 224,446 at the end
examination, and excess claims fees are General Report was not the result of a
of fiscal year 1998 to 701,147 at the end
set by statute, which the Office cannot general study of the causes of the
of fiscal year 2006. The Office expects
change by rule making. The filing fees growing backlog of unexamined patent the backlog of unexamined applications
are due upon filing of the application applications, but was the result of a to continue to increase without
and the excess claims fees are due when review of only patent examiner significant changes to the patent
the claims are presented. See 35 U.S.C. production goals, appraisal plans, and examination process. In addition, the
41. Applicant may request a refund of award systems. Thus, the September average number of claims per
any previously paid search and excess 2004 Inspector General Report does not application has not decreased since
claims fees if applicant expressly discuss other causes of the growing 1998. Thus, the Office does not consider
abandons an application filed under 35 backlog of unexamined patent the fact that the changes being adopted
U.S.C. 111(a) on or after December 8, applications (e.g., changes in applicant in this final rule may not be popular to
2004, by filing a petition under filing tendencies) and does not warrant be an adequate reason for not going
§ 1.138(d) before an examination has the conclusion that the September 2004 forward at this time.
been made of the application. An Inspector General Report identifies Comment 181: One comment pointed
‘‘examination has been made of the suboptimal incentives for examiners as out inconsistencies between proposed
application’’ for purposes of § 1.138(d) the sole cause of the growing backlog of § 1.75(b)(3)(iii), which requires a
once there has been a requirement for unexamined patent applications. In any suggested restriction to be drawn to ‘‘no
restriction including an election of event, the Office is in the process of more than ten’’ claims, and the
species, requirement for information reassessing patent examiner production preamble to the proposed rule, which
under § 1.105, first Office action on the goals, appraisal plans, and award requires the restriction to be drawn to
merits, notice of allowability or systems as recommended in the ‘‘fewer than ten’’ claims.
allowance, or action under Ex parte September 2004 Inspector General Response: Proposed § 1.75(b)(3)(iii)
Quayle. Applicant may also request a Report. Absent significant changes to provided that an applicant may file a
refund of any excess claims fees paid on the patent examination process, the suggested requirement for restriction
or after December 8, 2004, if an Office does not consider it reasonable to accompanied by an election without
amendment canceling the excess claims expect that changes to patent examiner traverse of an invention to which there
is filed before an examination on the production goals, appraisal plans, and are drawn no more than ten
merits has been made of the application. award systems alone will be sufficient independent claims and no more than
See § 1.117. An ‘‘examination on the to address the growing backlog of ten representative claims. This final rule
merits has been made of the unexamined patent applications while did not adopt the proposed
application’’ for purposes of § 1.117(a) maintaining a sufficient level of quality. ‘‘representative claims’’ examination
once there has been a first Office action Comment 180: One comment argued approach, but requires applicant to file
on the merits, notice of allowability or that the Office admitted to previously an examination support document when
allowance, or action under Ex parte abandoning a proposal to limit the the application contains more than five
Quayle. number of total and independent independent claims or more than
Comment 178: One comment argued claims. The comment argued that if twenty-five total claims. Under
that the small number of problematic such a proposal was deemed § 1.142(c) as adopted in this final rule,
cases with excessive claims that confuse inappropriate, it is difficult to see how applicant may file a suggested
requirement for restriction accompanied Response: The current rules will only not provided any study or anecdotal
by an election without traverse of an impact those applications that are filed evidence that identifies an abuse of
invention to which there are no more with more than five independent claims Markush practice. One comment stated
than five independent claims and no or more than twenty-five total claims. If that the MPEP has never required that
more than twenty-five total claims. applicant presents more than five individual elements in a Markush group
Comment 182: One comment argued independent claims or more than be treated separately, and that it is
that applicants would circumvent the twenty-five total claims, then applicant unfair to an applicant to use up claim
proposed rules by designating a ‘‘picture will be required to submit an designations on the individual elements
claim’’ in all applications, thereby examination support document under of a Markush group because a reference
forcing the examiner to perform a § 1.265. If an application is so teaching one element is applied to all.
complete search and examination, thus significant that the applicant must Several comments argued that the
obviating any time or effort saved present more than five independent proposed rule relating to determining
through the proposed changes. claims or more than twenty-five total the presence of separate claims in a
Response: The Office has no objection claims, then the additional costs should Markush grouping will slow down
to an applicant presenting a claim that not be a deterrent. prosecution, in part due to an increased
recites in detail all of the features of an Comment 185: One comment number of petitions to review.
invention (i.e., a ‘‘picture’’ claim) in an suggested that if the Office were to Response: The Office requested
application. Nevertheless, the mere fact follow Muncie Gear Works v. Outboard comments on how claims written in the
that a claim recites in detail all of the Marine & Mfg Co., late claiming of alternative form, such as claims in an
features of an invention is never, in applications would likely decrease. alternative form permitted by Ex parte
itself, justification for the allowance of Response: In Westphal v. Fawzi, 666 Markush, 1925 Dec. Comm’r Pat. 126
such a claim. See MPEP § 706. F.2d 575, 577 (C.C.P.A. 1981), the Court (1924), should be counted for purposes
Comment 183: One comment argued of Customs and Patent Appeals of proposed § 1.75(b). See Changes to
that according to In re Wakefield, 422 discredited the idea that Muncie Gear Practice for the Examination of Claims
F.2d 897, 164 U.S.P.Q. 636 (C.C.P.A. Works v. Outboard Marine & Mfg. Co., in Patent Applications, 71 FR at 64,
1970), applicant should be allowed to 315 U.S. 759 (1942) should be read as 1302 Off. Gaz. Pat. Office at 1331. This
determine the necessary number and announcing a new ‘‘late claiming’’ final rule does not change the practice
scope of claims. doctrine. Rather, the Court of Customs of the Office with regard to claims
Response: The changes adopted in and Patent Appeals interpreted the containing Markush or other alternative
this final rule do not set a per se limit Muncie Gear Works holding of language. That is, a claim containing
on the number of claims that an invalidity as grounded in the statutory Markush or other alternative language
applicant may file in an application. prohibition against new matter. would be considered as one claim for
The applicant is free to file as many Comment 186: A number of the purposes of determining whether an
claims as necessary to adequately comments suggested that claims written application exceeds the five
protect the invention. Applicant may in alternative form should not be treated independent claim and twenty-five total
present more than five independent differently from other claims, and that claim threshold set forth in § 1.75(b).
claims or more than twenty-five total the Office should use election of species However, the Office is evaluating
claims in an application if applicant practice to identify alternatives to be changes to Markush practice, which
files an examination support document used as representative claims. Several could be implemented in a separate rule
before the first Office action on the comments stated that claims drafted making.
merits of the application. The using Markush or other alternative The Office is also clarifying second
information provided by the applicant language should be treated as single action final practice with respect to
in the examination support document claims rather than treating each using alternative language (e.g.,
will assist the examiner in alternative as a separate claim. One Markush claims). MPEP § 803.02
understanding the claimed invention, comment stated that if members of indicates that if an applicant amends a
determining the effective filing date of Markush groups are counted separately, rejected Markush claim to exclude
each claim and the claim interpretation biotechnology and chemical applicants species anticipated or rendered obvious
before the prior art search, will file more multiple parallel by the prior art, a second action on the
understanding the state of the art and applications. One comment requested rejected claims can be made final unless
the most closely related prior art cited clarification as to whether each element the examiner introduces a new ground
by the applicant, and determining the of a Markush claim would be of rejection that is neither necessitated
patentability of the claims. Thus, the considered to be an independent claim. by applicant’s amendment of the claims
examiner will be able to perform a better One comment stated that Markush nor based on information submitted in
examination on the claims. claims are beneficial to both the Office an information disclosure statement
Comment 184: A number of and applicants, and stated that the filed under § 1.97(c) with the fee set
comments argued that the rules would proposed changes would unfairly forth in § 1.17(p). MPEP § 803.02
lessen the applicant’s ability to file disadvantage members of the provides this instruction in the context
applications due to budget constraints pharmaceutical community. One of the situation in which the examiner
and would increase costs for counseling comment suggested that encouraging has determined that the Markush claim
applicants to get the best patent applicants to adhere more closely to encompasses at least two independent
protection. One comment argued that existing 35 U.S.C. 112, ¶ 1 and 35 U.S.C. or distinct inventions, has required
the rules will increase applicant’s costs 101 requirements is a better means of applicant to make a provisional election
to such an extent that individual managing the breadth of Markush of a single species, and has rejected the
inventors and small companies will not claims than individualized claim Markush claim on prior art grounds.
be able to afford patent protection. counting schemes and required This has led to some confusion as to
Furthermore, the costs to comply with showings. One comment suggested that when a second action on the rejected
the rules will cause many people with the Office should treat a Markush claim claims can be made final when the
technology that can spur innovation to as a broad or generic claim. One examiner has not found that the claim
be frozen out of the patent process. comment asserted that the Office has encompasses at least two independent
or distinct inventions and applicant apparent where the specification of the in effect during fiscal year 2007. The
amends a claim to exclude unpatentable application provides support under 35 Office is implementing § 1.117 in this
alternatives. If a Markush claim or other U.S.C. 112, ¶ 1, for a claim or a final rule.
claim that sets forth alternatives is limitation of a claim. This is Comment 192: Several comments
rejected under 35 U.S.C. 102 or 103 on information that the applicant should be questioned whether excess claim fees
the basis of prior art that anticipates or aware of and should be able to provide would be refunded if claims are
renders obvious the claim with respect to the examiner. The Office considers eliminated pursuant to § 1.78(f)(3).
to any one of the alternatives or on any this authority to be inherent under the Response: Applicant may request a
other basis (e.g., 35 U.S.C. 101 or 112) patent statute and rules existing prior to refund of any excess claims fees paid on
with respect to any one of the this rule change, including the previous or after December 8, 2004, if an
alternatives, a second or any subsequent version of § 1.105, and thus there is no amendment canceling the excess claims
Office action on the merits may be made reason to expect such provision to be is filed before an examination on the
final. However, such an Office action abused. The Office agrees that merits has been made of the application.
may not be made final if it contains a examiners inherently have the authority See § 1.117. Applicant may also request
new ground of rejection that is not: (1) to request this information. See Star a refund of any previously paid search
Necessitated by applicant’s amendment Fruits S.N.C. v. United States, 393 F.3d and excess claims fees if applicant
of the claims (including amendment of 1277, 73 USPQ2d 1409 (Fed. Cir. 2005). expressly abandons an application filed
a claim to eliminate unpatentable The Office is amending § 1.105 to make under 35 U.S.C. 111(a) on or after
alternatives); (2) necessitated by the authority explicit. December 8, 2004, by filing a petition
applicant’s providing a showing that a Comment 189: One comment under § 1.138(d) before an examination
claim element that does not use the suggested that the Office should has been made of the application.
phrase ‘‘means for’’ or ‘‘step for’’ is encourage examiners to use § 1.105 to Comment 193: One comment
written as a function to be performed require a concise, plain-English suggested that the Office should refund
and does not otherwise preclude explanation of the invention and claim eighty percent of the fees for claims that
application of 35 U.S.C. 112, ¶ 6; (3) set when the application contains large are withdrawn because of a restriction
based on information submitted in an claim sets or the invention cannot be requirement.
information disclosure statement filed understood. Response: The Office does not have
during the period set forth in § 1.97(c) Response: The examination support the statutory authority to refund the
with the fee set forth in § 1.17(p); or (4) document will assist the examiner when excess claims fees for claims that are
based upon double patenting (statutory there are large numbers of claims. If the still pending in an application where
or obviousness-type double patenting). invention cannot be understood, the the fees were properly paid. The
The provision in MPEP § 904.02 that a examiner could use § 1.105 to require an Consolidated Appropriations Act, 2005,
search should cover the claimed subject explanation. authorizes a refund only for a claim that
matter and should also cover the Comment 190: Several comments has been canceled before an
disclosed features which might suggested that language should be examination on the merits has been
reasonably be expected to be claimed added to the rules to indicate that the made of the application under 35 U.S.C.
does not preclude an examiner from information required by § 1.105(a)(1)(ix) 131. See 35 U.S.C. 41(a)(2)(C). Claims
making the second or any subsequent is not to be used to read limitations into that are withdrawn due to a restriction
Office action on the merits final if the the claims. requirement are still pending in the
Office action contains a new ground of Response: Such a change is not application. Applicant may cancel the
rejection that was necessitated solely by necessary. It is well established that the withdrawn claims prior to a first Office
applicant’s amendment of the claims to meaning of the terms in the claims is to action on the merits of the application
eliminate the unpatentable species. be ascertained in light of the and request for a refund of any excess
Comment 187: A number of specification but that limitations from claims fees paid on or after December 8,
comments supported the appropriate the specification are not to be read into 2004. See § 1.117.
use of the proposed requirement in the claims. See Phillips v. AWH Corp., Comment 194: A number of
§ 1.105(a)(1)(ix) where this information 415 F.3d 1301, 1316, 75 U.S.P.Q.2d comments noted that since very few
is needed to resolve a reasonable 1321, 1329 (Fed. Cir. 2005); In re examination support documents are
question which is relevant to the American Academy of Science Tech likely to be filed, there is not likely to
determination of a patentability issue Center, 365 F.3d 1359, 1369, 70 be any opportunity to reduce a patent
before the examiner. USPQ2d 1827, 1834 (Fed. Cir. 2004); In term adjustment.
Response: The Office is adopting the re Zletz, 893 F.2d 319, 321, 13 USPQ2d Response: The Office is not adopting
change to § 1.105. 1320, 1322 (Fed. Cir. 1989). the changes in this final rule for the
Comment 188: One comment argued Comment 191: A number of purpose of reducing patent term
that the provision in § 1.105(a)(1)(ix) comments supported the extension of adjustment. The Office simply does not
serves no purpose and may be abused. the Office’s refund authority beyond the want an applicant to obtain patent term
The comment argued that examiners expiration date of the legislation and adjustment by delaying compliance
could simply shift the burden on encouraged the Office to accelerate with the examination support document
applicant to prove support when there implementation of § 1.117. requirements.
is no basis for making a rejection under Response: The Office is working to Comment 195: Several comments
35 U.S.C. 112, ¶ 1. One comment argued make the patent fee and fee structure argued that it was unfair to reduce
that the changes to § 1.105(a)(1)(ix) are provisions of the Consolidated patent term adjustment for not
unnecessary since examiners already Appropriations Act, 2005 (Pub. L. 108– complying with the rules for
have the power to request such 447, 118 Stat. 2809 (2004)), permanent. applications pending before the
information. The Revised Continuing Appropriations effective date.

Response: One purpose of the Resolution, 2007 (Pub. L. 110–5, 121 Response: Section 1.704(c)(11) as
provision in § 1.105(a)(1)(ix) is to assist Stat. 8 (2007)), keeps the patent fee and adopted in this final rule is applicable
the examiner in properly examining the fee structure provisions of the only to applications under 35 U.S.C.
application when it is not readily Consolidated Appropriations Act, 2005, 111(a) filed on or after November 1,
2007, or international applications that the merits when the application procedures before the international
have commenced the national stage after contains or is amended to contain more searching authorities. The changes to
compliance with 35 U.S.C. 371 on or than five independent claims or more § 1.75 do not apply to international
after November 1, 2007. Thus, other than twenty-five total claims. See searching authorities and, accordingly,
applications for which an examination § 1.75(b)(1). Therefore, § 1.704(c) do not conflict with Article 17.
support document (or other appropriate provides for a reduction of any patent
G. Number of Independent and Total
action) is required would not encounter term adjustment when there is a failure
Claims Permitted Without an
a patent term adjustment reduction to comply with § 1.75(b), e.g., a failure
Examination Support Document
unless the applicant failed to properly to file an examination support
reply to an Office notice requiring an document in compliance with § 1.265 Comment 199: A number of
examination support document (or other when necessary under § 1.75(b). The comments argued that the proposed
appropriate action) within three months Office does not issue a notice requiring change in the definition of an
of the date the notice was mailed to the an examination support document (or independent claim for determining the
applicant. other appropriate action) until the number of designated claims and
Comment 196: One comment argued Office has determined that an calculating additional claims fees would
that § 1.704(c)(11) is contrary to statute examination support document is be complicated and confusing. A
because 35 U.S.C. 154(b)(2)(C)(ii) required under § 1.75(b), but applicant number of comments argued that the
guarantees a minimum of three months failed to submit an examination support statutory classes of invention are not
to respond before patent term document. necessarily mutually exclusive. A
adjustment is lost. Comment 197: Several comments number of comments expressed the
Response: 35 U.S.C. 154(b)(2)(C)(ii) argued that § 1.704(c)(11) would opinion that the proposed changes to
provides that ‘‘[w]ith respect to adversely affect small businesses. One the way claims are treated for fee
adjustments to patent term made under comment argued that some patents purposes will further burden the Office.
the authority of [35 U.S.C. 154(b)(1)(B)], owned by universities and small One comment stated that it would cause
an applicant shall be deemed to have biotechnology companies have values of disputes and slow down the
failed to engage in reasonable efforts to one million dollars per day, and these examination process. One comment
conclude processing or examination of patents often have hundreds of days of argued that it would likely produce
an application for the cumulative total patent term extension. The comment inconsistent results. One comment
of any periods of time in excess of 3 argued that the proposed reductions in argued that the rule change makes it
months that are taken to respond to a patent term would easily cost small very difficult to calculate claim fees for
notice from the Office making any businesses one hundred million dollars anyone other than a registered
rejection, objection, argument, or other per year. practitioner. Several comments opined
request, measuring such 3-month period Response: An applicant can avoid a that as a result of the proposed rule, the
from the date the notice was given or reduction in patent term adjustment fee calculation process would no longer
mailed to the applicant.’’ See 35 U.S.C. simply by providing an examination be merely administrative, but would
154(b)(2)(C)(ii). The patent term support document in compliance with involve a legal opinion. The comments
adjustment reduction provision of 35 § 1.265 before the first Office action on questioned whether fee calculations will
U.S.C. 154(b)(2)(C)(ii) is applicable the merits or taking other appropriate be handled by examiners, and what the
where the applicant’s failure to engage action (if necessary) in a timely manner. process for dispute resolution will be. A
in reasonable efforts to conclude Comment 198: One comment number of the comments also argued
processing or examination of an questioned whether the proposed that the change would effectively
application involves a failure to reply to changes to § 1.75 (the ‘‘representative increase fees.
an Office action or notice within three claims’’ examination approach) as Response: Designation of claims for
months of the date the Office action or applied to national stage applications initial examination is not required
notice is mailed or given to the violate the PCT. Another comment because this final rule did not adopt the
applicant. 35 U.S.C. 154(b)(2)(C), suggested that the proposed changes to ‘‘representative claims’’ examination
however, contemplates other § 1.75 are contrary to PCT Article 17. approach. This final rule, however,
circumstances that may constitute an Response: As discussed previously, requires applicant to file an examination
applicant’s failure to engage in this final rule does not implement a support document in compliance with
reasonable efforts to conclude ‘‘representative claims’’ examination § 1.265 before the issuance of a first
processing or examination, by further approach. Nevertheless, nothing in the Office action on the merits of an
providing that ‘‘[t]he Director shall PCT or the regulations under the PCT application that contains more than five
prescribe regulations establishing the requires a designated Office to examine independent claims or twenty-five total
circumstances that constitute a failure of all claims presented (in any particular claims, counting all of the claims in any
an applicant to engage in reasonable order or at a particular stage) in a other copending application having a
efforts to conclude processing or national stage application. Furthermore, patentably indistinct claim. If an
examination of an application.’’ See 35 PCT Article 27(6) provides that the examination support document in
U.S.C. 154(b)(2)(C)(iii). The provisions national law may require that the compliance with § 1.265 is not filed
of § 1.704(c), including § 1.704(c)(11), applicant furnish evidence in respect of before the issuance of a first Office
are promulgated under the Office’s any substantive condition of action on the merits of the application,
authority in 35 U.S.C. 154(b)(2)(C)(iii) to patentability prescribed by such law. the application may not contain or be
prescribe regulations establishing the Under this final rule, applicant is free to amended to contain more than five
circumstances that constitute a failure of submit as many claims as he or she independent claims or more than
an applicant to engage in reasonable chooses, as long as applicant files an twenty-five total claims.
efforts to conclude processing or examination support document before This final rule adopts the proposed
examination of an application. For the first Office action on the merits if changes to § 1.75(b)(2) to provide that a
example, an examination support there are more than five independent claim that refers to a claim of a different
document is required to be filed before claims or more than twenty-five total statutory class of invention will also be
the issuance of a first Office action on claims. Article 17 of the PCT concerns treated as an independent claim for fee
calculation purposes and for purposes the Office. One comment suggested that similar kind such as a method limitation
of determining whether an application the changes to § 1.75(b)(2) (e.g., treating for a method claim or an apparatus
exceeds the five independent claim and a claim that refers to a claim of a limitation for an apparatus claim. One
twenty-five total claim threshold under different statutory class of invention as comment stated that § 1.75(b)(2)
§ 1.75(b). Section 1.75(b) (introductory an independent claim for fee calculation provides clarification that claims which
text) as adopted in this final rule purposes and for purposes of refer to a claim of a different statutory
clarifies that a dependent claim must determining whether an examination class would be regarded as independent.
contain a reference to a claim previously support document is required) might be One comment stated that § 1.75(b)(2)
set forth in the same application, contrary to judicial precedent set forth appears to be a statement of the current
incorporate by reference all the in In re Ochiai, 71 F.3d 1565, 37 state of the law.
limitations of the previous claim to U.S.P.Q.2d 1127 (Fed. Cir. 1995). The Response: The statutory classes of
which such dependent claim refers, and comment also argued that these changes invention are set forth in 35 U.S.C. 101.
specify a further limitation of the would create a ‘‘tricky fee structure’’ If a method claim depends from another
subject matter of the previous claim. See and a ‘‘trap for the unwary’’ and would method claim, incorporates by reference
35 U.S.C. 112, ¶ 4; see also Pfizer, 457 increase the administrative/non- all of the limitations of the method
F.3d at 1291–1292, 79 U.S.P.Q.2d at substantive workload on the examiner. claim from which it depends, and adds
1589–1590. If a claim does not Response: A claim that merely refers additional method limitations, such a
incorporate by reference all the to another claim is not a dependent claim will be considered as a dependent
limitations of the previous claim to claim in compliance with 35 U.S.C. 112, claim. However, if a method claim refers
which it refers, it is not a dependent ¶ 4. A proper dependent claim must to a composition claim (e.g., ‘‘A method
claim under 35 U.S.C. 112, ¶ 4. It would also incorporate by reference all the of using the composition of claim 1
be proper for the Office to consider such limitations of the claim to which it comprising * * *’’), it will be treated as
a claim as an independent claim for fee refers and specify a further limitation of an independent claim. The Office will
calculation purposes and for purposes the subject matter in the claim to which issue any guidance as necessary and
of determining whether an examination the dependent claim refers. Some appropriate for the implementation of
support document is required. The applicants present claims that refer to a the rules.
determination of whether a claim is previous claim, but fail to comply with Comment 202: Several comments
independent or dependent could be the requirements of 35 U.S.C. 112, ¶ 4. argued that § 1.75(b) is a problem for
difficult when applicant did not clearly See e.g., Pfizer, 457 F.3d at 1291–1292, software-based inventions because it is
draft the claim as an independent claim 79 U.S.P.Q. 2d at 1589–1590. The common for applications to include
or a dependent claim under 35 U.S.C. provisions of § 1.75(b)(2) are consistent claims to different classes of invention.
with 35 U.S.C. 112, ¶ 4, and judicial The comments argued that there is no
112, ¶ 4. Applicant may minimize
precedent including Ochiai (the use of reason to discourage a claim drawn to
issues related to fee calculation for
per se rules in determining one class of invention which depends
claims by drafting claims that are in
nonobviousness under 35 U.S.C. 103). A from a claim drawn to another class
compliance with 35 U.S.C. 112, ¶ 4, and
claim that refers to a previous claim of when little additional work is required
§ 1.75(b) (e.g., not presenting claims that
a different statutory class of invention of the examiner to examine both claims,
refer to another claim of a different
could require a separate search and citing the example of a claim drawn to
statutory class of invention or claims
patentability determination because the a manufacture which depends from a
that refer to another previous claim but
patentability of such a claim might not claim drawn to a process for making a
do not incorporate by reference all of
stand or fall together with the previous manufacture.
the limitations of the previous claim). Response: The rule does not
claim. For example, if claim 1 recites a
Once a determination of whether a discourage an applicant from submitting
specific product, a claim for method of
claim is independent or dependent has whatever claims may be considered
making the product of claim 1 in a
been made, the fee calculation is simple. desirable for protection of the invention,
particular manner would require a
If applicant disagrees with the Office’s and does not discourage submission of
separate patentability determination
determination that a claim is an claims to any statutory class of
because in accordance with Ochiai,
independent claim, applicant should invention. Rather, the rule clarifies how
there is no per se rule in applying the
provide a showing of how the claim is test for obviousness under 35 U.S.C. claims will be treated for the purposes
a dependent claim in compliance with 103. Furthermore, a claim that refers to of fee calculation and determination
35 U.S.C. 112, ¶ 4, and § 1.75(b) either a previous claim of a different statutory whether an examination support
in a reply to a notice requiring a claim class of invention does not comply with document is required under § 1.75(b)(1).
fee or a request for a refund. 35 U.S.C. 112, ¶ 4, because such a claim Comment 203: A number of
Comment 200: One comment stated does not further limit the subject matter comments argued that ten representative
that a claim that does not make of the previous claim. claims are not sufficient for adequate
reference to another claim is an Comment 201: A number of patent protection and suggested various
independent claim, and a claim that comments recommended that the Office numbers for the representative claim
does make reference to another claim is issue guidance for use by Office limit including at least twenty claims,
a dependent claim. One comment stated employees as well as the public in twenty-five claims, or at least thirty
that the Office cannot charge distinguishing among statutory classes claims. Several comments suggested
independent claim fees for dependent of invention. One comment stated that twenty claims, with a maximum of three
claims because to do so would violate it is unclear how ‘‘a different statutory independent claims, as being more
statute. One comment questioned how a class of invention’’ will be applied. The consistent with the fee schedule.
claim can fail to incorporate by comment questioned whether the last Several comments suggested that the
reference all of the limitations of the sentence of § 1.75(b)(2) would apply limit should be six independent and
claim to which it refers, and yet be only to combination method-apparatus forty total claims. One comment
statutory. The comment suggested that claims or whether it might also be suggested that the limit should be
the proposed rule is unnecessary and applied to regular dependent claims twelve independent claims and fifty
not supported by the case law cited by which add additional limitations of a total claims. One comment suggested
that the limit should be ten independent claim threshold primarily for the requires applicant to file an examination
claims and sixty total claims. Several following reasons. support document in compliance with
comments suggested that there should First, a significant number of § 1.265 before the issuance of a first
be no limit. One comment suggested comments suggested a threshold of six Office action on the merits of an
that there should be no limit on independent claims and thirty total application that contains more than five
dependent claims. claims, but did not suggest such a independent claims or twenty-five total
Several comments stated that the threshold if it were not considered claims, counting all of the claims in any
rules affect the vast majority of sufficient to provide adequate patent other copending application having a
applications that contain an ordinary protection for an invention. patentably indistinct claim. If an
number of claims, rather than targeting Second, the majority of applications examination support document in
the small number of problem contain no more than five independent compliance with § 1.265 is not filed
applications with excessive claims. One claims and no more than twenty-five before the issuance of a first Office
comment stated that it was unclear why total claims. Specifically, over 92 action on the merits of the application,
all applicants should be limited to percent of the applications filed in fiscal the application may not contain or be
representative claims when year 2006 contained no more than five amended to contain more than five
approximately ninety percent of all non- independent claims, and over 78 independent claims or more than
provisional applications currently filed percent of the applications filed in fiscal twenty-five total claims.
contain six or fewer independent claims year 2006 contained no more than Comment 204: A number of
and forty or fewer total claims. The twenty-five total claims. These figures comments suggested that the Office
comment argued that examining forty or do not take into account that many should explore the possibility of
fewer claims does not appear to applications contained claims to more examining multiple dependent claims
constitute an undue examination than one distinct invention, and the that are dependent on other multiple
burden. One comment suggested that changes in this final rule permit an dependent claims to reduce
the rule changes should be more applicant to suggest a restriction examination burden and better focus the
narrowly tailored with respect to the requirement and elect an invention to examination process. The comments
technology areas where the inventions which there are drawn no more than argued that most foreign countries
are not capable of being adequately five independent and twenty-five total permit such claims and that this would
protected using only twenty claims. One claims. In addition, the majority of significantly reduce the number of
comment inquired about the need for applications in every Technology Center claims. One comment argued that if the
establishing a separate procedure for contain five or fewer independent Office adopts representative claims
examination of claims if only 1.2 claims and twenty-five or fewer total rules, it will move towards the
percent of applications fall within the claims. Therefore, there is no support European style of claim sets, but
category of excess claims. Several for the position that there are without the benefit of multiple
comments argued that there is a lack of technology areas that are just not dependent claims and claims stated in
statistical analysis relating to the capable of being adequately protected the alternative. Several comments
number of applications containing more with five or fewer independent claims expressed the opinion that multiple
than ten total claims. and twenty-five or fewer total claims. dependent claims should be encouraged
Response: The Office notes the Finally, the Office notes that the most because examining a multiple
concerns expressed in the public common number of independent claims dependent claim is no more work than
comments concerning the proposed presented in an application is three, and examining a single dependent claim.
‘‘representative claims’’ examination the most common number of total Response: As discussed previously,
approach. The Office did not adopt this claims presented in an application is the Office did not adopt the
approach in this final rule. This final twenty. ‘‘representative claims’’ examination
rule provides that if the number of Third, an applicant may present up to approach in this final rule. Further, 35
independent claims is greater than five fifteen independent claims and seventy- U.S.C. 112, ¶ 5, prohibits multiple
or the number of total claims is greater five total claims via an initial dependent claims that are dependent on
than twenty-five, the applicant must application and two continuation or other multiple dependent claims.
provide additional information to the continuation-in-part applications that Moreover, the examination of multiple
Office in an examination support are prosecuted serially without dependent claims that are dependent on
document under § 1.265 covering all of providing either an examination support other multiple dependent claims would
the claims in the application (whether document or a justification as discussed be at least as burdensome as if these
in independent or dependent form). previously. Only about five percent of claims were presented as a plurality of
The Office received a significant the applications filed in fiscal year 2006 single dependent claims or as permitted
number of comments suggesting a were in an application family that multiple dependent claims. The Office
threshold of six independent claims and contained more than fifteen disagrees that permitting multiple
thirty total claims. The Office also independent claims or more than dependent claims that depend on other
received a number of comments seventy-five total claims. multiple dependent claims would
suggesting independent claim Finally, this final rule does not reduce the examination burden or better
thresholds ranging from three to ten and preclude an applicant from presenting focus the examination process. The
total claim thresholds ranging from more than five independent claims or Office’s experience is that multiple
twenty to sixty (or no limit). The more than twenty-five total claims. dependent claims are significantly more
comments, however, provided no Rather, an applicant may present more difficult to search and evaluate than a
justification for deeming any particular than five independent claims or more plurality of single dependent claims.
independent and total claim threshold than twenty-five total claims in an Multiple dependent claims that depend
to be the ideal threshold or even application with an examination on other multiple dependent claims
superior to any other possible support document in compliance with would be even more burdensome. While
independent and total claim threshold. § 1.265 if the applicant considers it the use of multiple dependent claims
The Office arrived at the five necessary or desirable in the particular may be a convenient shorthand
independent claim and twenty-five total application. Specifically, this final rule mechanism, a multiple dependent claim
is considered to be that number of permitted to designate a number of Comment 208: One comment
claims to which direct reference is made claims, without an examination support suggested that one of the representative
therein and must be considered in the document, that varies with the filing fee claims should be in Jepson format.
same manner as a plurality of single paid. One comment suggested that Another comment suggested that fees
dependent claims. See MPEP applicants should be charged in should be increased on all non-Jepson
§ 608.01(n), paragraph I. The same proportion to the number of designated claims. One comment suggested that the
would be true for multiple dependent claims, and that, optionally, an upper Office should charge less for claims
claims that are dependent on other bound on the number of claims (e.g., written in Jepson format.
multiple dependent claims. twenty-five total claims, no more than Response: There is no persuasive
Comment 205: One comment twelve independent claims) could be explanation as to why Jepson claims
suggested that there should be a limit of established. should be treated differently from non-
twenty claims in every application with Response: Excess claims fees are set Jepson claims. Furthermore, fees are set
no exceptions and no requirement for an by statute. See 35 U.S.C. 41(a). The by statute and the statute does not
examination support document. Office sought a legislative change to provide the authority to charge higher or
Another comment suggested that the increase excess claims fees, and while lower fees for Jepson claims.
Office should limit the number of some increases were made in the Comment 209: One comment
claims of any application to twenty or Consolidated Appropriations Act, 2005, suggested that there should be an
thirty total claims, and two or three the Office did not obtain the increases expedited procedure for an application
independent claims. One comment that it considered necessary. In any with a limit of five claims, a 1200-word
suggested that there should simply be a event, the changes adopted in this final specification, and four drawings, (with
hard cap without an option to file an rule will help to focus examination and the filing fee being $1000 for a small
examination support document to have increase quality. entity or $3000 for a non-small entity),
additional claims examined. The where the application could issue as a
comment argued that this would not patent in fifteen months or less. One
suggested that excessive claiming
take away any substantive rights, as long comment argued that the representative
should be dealt with on a case-by-case
as applicant’s right to file continuing claim proposal should be an option for
basis, rather than by penalizing all
applications and requests for continued applicants and those applications with
applicants. One comment suggested that ten or fewer representative claims
examination is preserved.
Response: This final rule the Office should consider strategies should be assigned a higher priority for
appropriately balances applicants’ under present § 1.105 to address examination. One comment argued that
interests to have an adequate number of problem applications on a case-by-case the examination support document
claims to protect their inventions and basis. A number of comments suggested should only be used as an optional
the need to reduce the large and that the requirement for an examination procedure for an applicant to advance
growing backlog of unexamined patent support document should be imposed the application out of turn.
applications, improve the quality of on a case-by-case basis, only in those Response: The proposed
issued patents, and make the patent situations that impose a unique burden ‘‘representative claims’’ examination
examination process more effective. The on the Office. approach is not adopted in this final
changes to § 1.75 in this final rule Response: As discussed previously, rule. Further, the Office has revised its
permit an applicant to present five or the Office is not adopting the accelerated examination program with
fewer independent claims and twenty- ‘‘representative claims’’ examination the goal of completing examination
five or fewer total claims in the approach under which the majority of within twelve months of the filing date
application without submitting an applicants would have been required to of the application. The application must
examination support document in either designate dependent claims for contain three or fewer independent
compliance with § 1.265. The changes to initial examination or file an claims and twenty or fewer total claims,
§ 1.75 in this final rule also permit an examination support document. The and the applicant must provide an
applicant to present more than five changes adopted in this final rule accelerated examination support
independent claims or more than require the applicant to file an document and meet a number of other
twenty-five total claims if the applicant examination support document under requirements. See Changes to Practice
files an examination support document § 1.265 only if the applicant presents for Petitions in Patent Applications To
in compliance with § 1.265. more than five independent claims or Make Special and for Accelerated
Comment 206: Several comments more than twenty-five total claims. If an Examination, 71 FR 36323 (June 26,
suggested that the Office should adjust examination support document in 2006), 1308 Off. Gaz. Pat. Office 106
the fees if excess claims fees are compliance with § 1.265 is not filed (July 18, 2006) (notice). However,
insufficient to permit examination of the before the issuance of a first Office requiring an examination support or
claims for which they are paid. One action on the merits of the application, similar document only as an optional
comment suggested that there should be the application may not contain or be procedure for applicant to advance the
higher fees for claims in excess of ten. amended to contain more than five application out of turn would not result
Several comments suggested that there independent claims or more than in the desired gains in efficiency and
should be higher fees for claims in twenty-five total claims. The majority of quality.
excess of twenty. One comment applications do not contain more than Comment 210: One comment
suggested higher fees for independent five independent claims or more than suggested that if examination is limited
claims in excess of three. One comment twenty-five total claims. Therefore, as a to a certain number of claims, the Office
suggested that there should be a higher result of the public comment, this final should not be allowed to make a
fee for independent claims in excess of rule adopts an approach that avoids restriction requirement that is not
ten and total claims in excess of fifty. requiring a majority of applicants to linked to the burden of searching. Thus,
Several comments suggested that there make the choice between designating the comment suggested that where
should be escalating fees for increasing dependent claims for initial different statutory classes or
numbers of claims. One comment examination and filing an examination independent claims within a class do
argued that applicants should be support document. not really impose an additional burden,
they should not be counted against the restriction requirement and it is not such that it contains no more than five
examination limit. accepted by the Office. independent claims and no more than
Response: Under the current Response: Since the examination twenty-five total claims to the elected
restriction practice, the burden of the support document is required whenever invention and/or species; or (2) file an
search and examination in an applicant presents more than five examination support document in
application is considered before a independent claims or more than compliance with § 1.265 that covers
requirement for restriction is made. See twenty-five total claims and the notice each claim (whether in independent or
MPEP section 803. This includes where only applies when it appears that the dependent form) to the elected
there are different statutory classes of omission of the examination support invention and/or species.
invention or independent claims within document was inadvertent, the Office Comment 214: Several comments
a class that do not impose a search expects that the number of notices argued that the rules should provide
burden. would be relatively low. Furthermore, guidance on how the non-extendable
Comment 211: A number of the Office plans to have a notice under deadline would be treated in the event
comments argued that the one-month § 1.75(b)(3) generated by someone other of a petition or appeal relating to the
time period to reply to a notification of than the examiner. While it may be requirement for an examination support
more than ten representative claims was necessary on occasion for the examiner document. Several comments
too short to prepare and submit an to communicate with the applicant if a questioned how the notice and time
adequate examination support suggested restriction requirement is not period would be set when there are
document. One comment suggested that accepted, this additional multiple applications that have
the time period should be at least two communication is far outweighed by the patentably indistinct claims that are
months with extensions of time being benefits of focused examination and being considered together for purposes
permitted. One comment suggested that increased quality. of determining the number of claims in
Comment 213: Several comments an application.
the time period should be three months
requested that the Office explain the Response: Applicant may file a
with extensions of time being permitted.
procedures for how the Office will petition under § 1.181 if the applicant
Response: The proposed
evaluate a suggested restriction disagrees with a determination that an
‘‘representative claims’’ examination requirement. Some comments application contains more than five
approach is not adopted in this final questioned how an examiner will independent claims or more than
rule. Under this final rule, applicant is approve a suggested restriction twenty-five total claims, or a
required to provide an examination requirement. One comment questioned determination that an examination
support document if applicant presents what would occur if the restriction support document does not comply
more than five independent claims or requirement was not accepted by the with § 1.265. As stated in § 1.181(f), the
more than twenty-five total claims in an examiner. mere filing of a petition will not stay
application. If an examination support Response: As discussed previously, if any time period that may be running
document in compliance with § 1.265 is the applicant submits a suggested against the application. Applicant must
not filed before the issuance of a first restriction requirement, the suggested file a reply in compliance with
Office action on the merits of the restriction requirement is accepted, and § 1.75(b)(3) within the two-month time
application, the application may not there are five or fewer independent period to avoid abandonment even
contain or be amended to contain more claims and twenty-five or fewer total when applicant files a petition under
than five independent claims or more claims to the elected invention, the § 1.181. If there are multiple
than twenty-five total claims. The time Office will simply treat the non-elected applications with at least one patentably
period provided in the notice requiring claims as withdrawn from consideration indistinct claim, the Office will issue a
an examination support document is and proceed to act on the application notice under § 1.75(b)(3) in each
only applicable where it appears that (assuming the application is otherwise application and set a separate time
the omission of an examination support ready for action). The Office action will period in each application.
document was inadvertent. Therefore, set out the requirement for restriction Comment 215: Several comments
applicant should prepare and file an under § 1.142(a), e.g., in the manner that argued that applicants would file more
examination support document when an Office action on the merits would applications in parallel with fewer
applicant presents more than five contain a written record of a claims to avoid having to file an
independent claims or more than requirement for restriction previously examination support document and this
twenty-five total claims in an made by telephone. See MPEP section would create more work for the Office.
application. Applicant should not rely 810. Response: This final rule provides
on the notification from the Office and The refusal to accept a suggested that if multiple applications contain at
a new period within which to prepare requirement for restriction may result in least one patentably indistinct claim,
an examination support document. the examiner making a different the Office will treat the multiple
Nevertheless, the Office is revising this restriction requirement or making no applications as a single application for
provision to provide a two-month time restriction requirement. If the examiner purposes of determining whether each
period that is not extendable under makes a restriction requirement of the multiple applications exceeds the
§ 1.136(a), which should be sufficient (different from the suggested restriction five independent claim and twenty-five
for those situations in which an requirement), the applicant will be total claim threshold. See § 1.75(b)(4).
applicant inadvertently omitted an notified (a notice under § 1.75(b)(3) For example, if one of the claims in an
examination support document. coupled with a restriction requirement) application is patentably indistinct from
Comment 212: A number of and given a time period within which at least one of the claims in another
comments argued that the notice to the the applicant must make an election. In application, the Office will treat each
applicant under § 1.75(b)(3) would addition, if there are more than five application as containing the total of all
impose costs because it would have to independent claims or more than of the claims in both applications when
be generated by an examiner and twenty-five total claims to the elected determining whether each application
another round of communications invention and/or species, the applicant exceeds the five independent claim and
would be needed if applicant suggests a must also: (1) Amend the application twenty-five total claim threshold. This
provision is intended to prevent an submit an examination support document, which ranged from $5,000 to
applicant from submitting multiple document in compliance with § 1.265. $30,000. One comment argued that it
applications to the same subject matter, Although claims in an issued patent are would cost a minimum of $30,000 for a
each with five or fewer independent not counted for the purposes of biotechnology application. One
claims or twenty-five or fewer total § 1.75(b)(4), the pending application comment argued that even if the Office’s
claims, for the purposes of avoiding the may still be subject to a double estimate is accurate, it would cost a
requirement to submit an examination patenting rejection. small entity applicant $3,000 to have
support document. Furthermore, under Comment 217: One comment twenty claims examined, which would
§ 1.78(f), applicant is required to questioned how the Office would be a six hundred percent increase over
identify such applications if they: (1) determine when an examination current costs and would have a
Have filing dates that are the same as or support document was ‘‘inadvertently’’ significant economic impact.
within two months of each other, taking omitted. Response: As discussed previously,
into account any filing date for which a Response: If the omission of an the Office has modified the proposed
benefit is sought under title 35, United examination support document is an rules with respect to claims. Under the
States Code; (2) name at least one isolated instance, then generally the proposed rules, applicants who wished
inventor in common; and (3) are owned omission would be considered to have more than ten representative
by the same person, or subject to an inadvertent. Where, however, a claims examined in the initial Office
obligation of assignment to the same particular individual (e.g., applicant or action would have had to file an
person. If the applications also have the attorney) has a pattern of not including examination support document. Under
same claimed filing or priority date and an examination support document when the changes in this final rule, applicants
substantially overlapping disclosures, required, then the Office would be less may have up to five independent and
applicant must rebut a presumption that inclined to consider such an omission twenty-five total claims examined in an
the applications contain patentably as being inadvertent. The Office will not application without filing an
indistinct claims or file a terminal generally question whether the omission examination support document.
disclaimer and provide good and of an examination support document The Office was given feedback that
sufficient reasons why two or more such was inadvertent unless there is a reason the costs for preparing an examination
pending applications are required rather to do so. support document could be anywhere
than one. See §§ 1.78(f)(2) and (f)(3). from $5,000 to $100,000. No data to
H. Examination Support Document
Comment 216: One comment support the alleged costs were
Requirements
questioned whether the Office would submitted. Contrary to some of the
require an examination support Comment 218: Several comments comments, the Office is not requiring a
document if a parent application issues supported the concept of an validity search and opinion. The pre-
as a patent with ten claims and a examination support document. One filing preparation of an application that
continuation application is filed with comment agreed that the examination contains more than five independent
indistinct claims. support document would help the claims or more than twenty-five total
Response: The Office has revised Office to reduce the backlog. claims should involve obtaining a
§ 1.75(b)(4) to provide that if there are Response: The Office is adopting the patent novelty search, analysis and
multiple applications containing at least concept of an examination support opinion. Preparation of an examination
one patentably indistinct claim the document in this final rule. Under this support document requires that this
Office will treat each of such final rule, an examination support information be reduced to writing in a
applications as containing the total of document is required if applicant particular format.
all of the claims (both independent and presents more than five independent The Office commissioned a detailed
dependent) present in all of the multiple claims or more than twenty-five total analysis of the final rule’s impacts on
applications containing patentably claims in an application. small entities. This analysis indicated
indistinct claims for purposes of Comment 219: A number of that the cost of an examination support
determining whether each such comments argued that the search and document is likely to be in the range of
application contains more than five analysis necessary to prepare an $2,563 to $13,121. This analysis also
independent claims or more than examination support document would concludes that this final rule is not
twenty-five total claims. Under add significant cost to the preparation of expected to result in a significant
§ 1.75(b)(4), the Office will count the an application, that the cost would be economic impact on a substantial
claims in copending applications significantly more than the $2,500 number of small entities. This final rule
containing patentably indistinct claims predicted by the Office, and that this does provide an exemption from the
(including applications having a would significantly disadvantage requirement (§ 1.265(a)(3)) that an
continuity relationship) but not in independent inventors and small examination support document must,
issued patents containing patentably businesses. Several comments argued for each reference cited in the listing of
indistinct claims, in determining that it would be unaffordable for the references required under
whether each such application contains independent inventors and small § 1.265(a)(2), include an identification
more than five independent claims or entities. Several comments argued that of all the limitations of each of the
more than twenty-five total claims and the patentability search done by most claims that are disclosed by the
thus whether an examination support practitioners is limited to United States reference that applies to applications by
document in compliance with § 1.265 is patents and United States published a small entity as defined by the
required. As discussed previously, this applications and does not generally set Regulatory Flexibility Act (5 U.S.C. 601
provision is to preclude an applicant forth in detail the patentability of each et seq.). See § 1.265(f).
from submitting multiple applications claim element by element. A number of Comment 220: Several comments
to the same subject matter (with claims comments argued that the examination argued that the examination support
that are patentably indistinct), each with support document was more like a document is substantially more
five or fewer independent claims or validity search and opinion and burdensome than the current procedure
twenty-five or fewer total claims, for the included various estimates of the cost of for accelerated examination because the
purposes of avoiding the requirement to preparing an examination support search and examination support
document must separately address every may be disqualified as prior art under Office in examining the excess claims.
claim for which examination is sought, 35 U.S.C. 103(c) as amended by the One comment suggested that the excess
and the rule contains substantial Cooperative Research and Technology claims fee should be increased rather
additional burdens. One comment Enhancement (CREATE) Act (Pub. L. than requiring applicants to submit an
argued that the accelerated examination 108–43, 118 Stat. 3596 (2004)). examination support document.
procedure is too onerous as shown by Comment 221: Several comments Response: Applications which
the very small number of applicants argued that due to the cost and ‘‘duty to contain a large number of claims absorb
who used the procedure, and the search,’’ the requirement for an an inordinate amount of patent
examination support document is even examination support document is examining resources, and such
more stringent. Several comments tantamount to imposing a de facto limit applications are extremely difficult to
argued that a petition to make special is on the number of claims in an process and examine properly. An
voluntary, not mandatory. Furthermore, application. applicant who presents more than five
such a petition does not foreclose Response: The Office has not placed independent claims or more than
applicant’s opportunity to pursue a de facto limit on the number of claims. twenty-five total claims will be required
additional inventive subject matter to If an applicant wants to present more to assist the Office with the examination
protect against design-arounds, as than five independent claims or more by providing an examination support
would happen in view of the concurrent than twenty-five total claims, the document in compliance with § 1.265.
continuation proposed rule changes. applicant simply needs to submit an The Office will still conduct a search
Response: The Office has reduced the examination support document in and examine an application in which an
requirements for an examination compliance with § 1.265 before the first examination support document is filed.
support document under § 1.265 as Office action on the merits. As Furthermore, the search and
adopted in this final rule. The Office discussed previously, the accelerated examination fees and excess claims fees
proposed to require applicants to examination procedure has more do not recover the costs of searching
provide a detailed explanation of how requirements than are contained in and examining an application. The
each independent and dependent claim § 1.265. However, over four hundred higher cost estimates provided in the
was patentable over the cited art applications have been filed under the comments on the Claims Proposed Rule
(proposed § 1.261(a)(4)). Section revised accelerated examination confirm that the cost of conducting a
1.265(a)(4) as adopted in this final rule procedure in the last nine months.
search and preparing an analysis far
requires applicants to provide the same Comment 222: One comment
exceeds the search and examination
explanation for the independent claims suggested that § 1.265 should be
replaced by a requirement that applicant fees. The Office, however, cannot
only. The Office also proposed to increase these fees because they are set
require applicants to provide statements comply with the rules for a petition to
make special. Another comment argued by statute.
of utility of the invention as defined in
that applicants will file a petition to Comment 224: Several comments
each independent claim (proposed
make special after going through the argued that the examination support
§ 1.261(a)(5)). Section 1.265 as adopted
effort and expense to prepare and file an document imposes extra burdens on the
in this final rule does not include such
examination support document. applicants that are not performed by the
a requirement. These changes reduce
Response: As discussed previously, Office since applicants are required to
the requirements for applicants who
the Office has recently revised its translate any foreign documents not in
wish to file an examination support
document while still providing accelerated examination program with the native language of the applicant and
examiners with valuable information to the goal of completing examination rejections by the Office do not comply
assist in the examination of within twelve months of the filing date with most of the requirements imposed
applications. of the application. An application under the rule.
Furthermore, an examination support containing more than five independent Response: Examiners frequently
document in compliance with § 1.265 is claims or more than twenty-five total obtain translations of foreign documents
required under § 1.75(b) only when an claims would not be eligible for the that they consider to be pertinent.
applicant presents more than five revised accelerated examination Examiners must obtain a translation of
independent claims or more than program. Nevertheless, the Office has no any document that is in a language other
twenty-five total claims. It is not objection to every applicant filing his or than English if the examiner seeks to
required in applications that contain her application under the revised rely on that document in a rejection. See
five or fewer independent claims and accelerated examination program. MPEP § 706.02. During examination,
twenty-five or fewer total claims. Thus, Comment 223: A number of examiners cite references that are most
the majority of applications would not comments argued that the requirement closely related to the subject matter of
need an examination support document for an examination support document the claims, identify the limitations of
since a majority of applications contain transfers to the applicant the costs and the claims that are disclosed by the
five or fewer independent claims and responsibilities of the examination references being relied upon in a
twenty-five or fewer total claims. process for which fees have been paid. rejection, explain how each of the
In addition, the accelerated One comment questioned why applicant independent claims are being rejected
examination procedure was recently must pay a search fee and perform a over the references being applied, and
revised. The accelerated examination search of their own in order to prepare make determinations regarding utility
procedure has more requirements than an examination support document. One and 35 U.S.C. 112, ¶ 1, support and
are contained in § 1.265. See Changes to comment suggested that the Office enablement. The requirements in
Practice for Petitions in Patent should consider eliminating the search § 1.265 are intended to assist the
Applications To Make Special and for and examination fee when an examiner with the examination process.
Accelerated Examination, 71 FR at examination support document is Comment 225: Several comments

36323–27, 1308 Off. Gaz. Pat. Office provided. One comment argued that the stated that the costs and requirements of
106–09. For example, the accelerated excess claims fees that are paid are more an examination support document
examination support document must than enough to cover the associated would encourage applicants to seek the
also identify any cited references that extra expense and burden placed on the services of the least qualified searchers.
Response: The Office is not beyond the resources that are publicly Finally, a statement that applicant has
encouraging applicants to seek the available in the Office’s search room. searched on the Office’s database and
services of the least qualified searchers. One comment suggested that the the resources available to examiners
An applicant who decides to file an Office’s search room would need to be would not be sufficient. A mere
examination support document has the upgraded to allow access to all foreign statement that the applicant has
option to seek the services of any patents, periodicals and publications as searched on the Office’s database and
searcher he or she chooses or to conduct well as all United States patents to meet the resources available to examiners
the preexamination search on his or her the examination support document would not identify the field of search,
own. Applicant should have an requirements. Several comments argued the date of the search, and, for database
incentive to hire the most qualified that applicant would be required to searches, the search logic or chemical
searchers since a better search is more conduct a search that is beyond the structure or sequence used as a query,
likely to result in a more thorough scope of the searches performed by the name of the file or files searched and
examination. The requirements of an examiners and that this was unfair and the database service, and the date of the
examination support document are burdensome to the applicants. Some search. See § 1.265(a)(1).
clearly set forth in § 1.265 and an comments argued that the information Comment 228: One comment argued
applicant who chooses to file an that must be identified is significantly that the fact that foreign search reports
examination support document must more than what the Office provides to are not sufficient for the preexamination
satisfy these requirements. If the an applicant for a search and that a search or examination support
preexamination search is poor, then requirement for a statement that document seemed at odds with the
applicant runs the risk that the applicant has searched on the Office’s objective of promoting greater reliance
preexamination search or the database, the resources available to on and use of work done by other
examination support document will be examiners, should be sufficient. competent patent offices. One comment
deemed insufficient. If the Response: The standard for the questioned whether an international
preexamination search or examination preexamination search that is required search report is sufficient to satisfy the
support document is deemed is the same standard that the Office uses search requirement, and if it is, then
insufficient, applicant will be given to examine patent applications, which is why are foreign patent office searches
only a two-month time period that is not set forth in MPEP §§ 904–904.03. The not sufficient.
extendable under § 1.136(a) in which to information that applicant must identify Response: Neither foreign search
file a corrected examination support is the same information that the reports nor international search reports
document to avoid abandonment of the examiner must record in the application are per se excluded. If a foreign search
application. See § 1.265(e). file as set forth in MPEP § 719.05. If report or an international search report
Comment 226: One comment argued applicant follows the search guidelines satisfies the requirements for a
that the Office’s estimate that the set forth in the MPEP, then the preexamination search set forth in
burden imposed by the rule change will preexamination search should be § 1.265, then it would be accepted.
equate to an additional one minute and sufficient. The Office has published Comment 229: One comment argued
forty-eight seconds to twelve hours was patent search templates to define the that the preexamination search
unrealistic for applications having field of search, search tools, and search requirement that the search must cover
multiple independent claims and methodologies that should be all the features of the designated
hundreds of pieces of prior art to be considered when performing a search. dependent claims separately from the
reviewed. The search templates are published on claim or claims from which the
Response: The one minute and forty- the Office’s Internet Web site at http:// dependent claim depends makes no
eight seconds to twelve hours response www.uspto.gov/web/patents/ sense. The comment argued that if a
time provided in the notice of proposed searchtemplates/. The Office has dependent claim adds an element to the
rule making covered each activity that requested comments on the patent combination in an independent claim, a
may occur during the processing of an search templates. See Request for search for prior art references that
application for patent (OMB control Comments on Patents Search disclose the additional element
number 0651–0031). The specific Templates, 71 FR 94 (May 16, 2006), separately from the elements of the
estimate for an examination support 1307 Off. Gaz. Pat. Office 22 (Jun. 6, independent claim is likely to produce
document was twelve hours (which has 2006). many references that have no relation to
subsequently been increased to twenty- The accelerated examination the invention. The comment suggested
four hours). While the Office received procedure has more requirements than that the language of the rule be revised
comments suggesting that the Office’s are contained in § 1.265. See Changes to to clarify that the preexamination search
cost estimate for an examination Practice for Petitions in Patent must include a separate search for each
support document was low, these Applications To Make Special and for independent claim and each designated
comments provided only conclusory Accelerated Examination, 71 FR 36232 dependent claim.
statements and contained few facts or (June 26, 2006), 1308 Off. Gaz. Pat. Response: As discussed previously,
information. Office 106 (July 18, 2006) (notice). Thus, the Office did not adopt the
Comment 227: A number of the information concerning the ‘‘representative claims’’ examination
comments argued that it was almost requirements for a preexamination approach. Under this final rule, if the
impossible to determine the extent to search document under the revised application contains more than five
which the prior art must be searched to accelerated examination procedure can independent claims or more than
satisfy the preexamination search be applied to fulfill the requirements for twenty-five total claims, applicant is
requirement. Several comments argued a preexamination search under § 1.265. required to file an examination support
that there is no way to meet the search See samples of a preexamination search document in compliance with § 1.265
requirements. One comment argued that document and an accelerated that covers each of the claims (whether
it would be impossible to prove the examination support document on the in independent or dependent form)
‘‘non-existence’’ of more pertinent art. A Office’s Internet Web site at http:// before the first Office action on the
number of comments argued that the www.uspto.gov/web/patents/ merits. If an examination support
search should not be required to go accelerated/. document in compliance with § 1.265 is
not filed before the issuance of a first claims in an application. This final rule, potential litigation costs would
Office action on the merits of the however, provides that a small entity as outweigh any potential speed of
application, the application may not defined by the Regulatory Flexibility examination benefit. One comment
contain or be amended to contain more Act (5 U.S.C. 601 et seq.) may claim an argued that forcing applicant’s
than five independent claims or more exemption from the requirement in representatives to limit the claims to an
than twenty-five total claims. The Office § 1.265(a)(3) for an identification of all arbitrary number is akin to asking them
has revised § 1.265(b) to delete the of the limitations of each of the claims to commit what amounts to malpractice.
phrase ‘‘separately from the claim or that are disclosed by the references cited One comment stated that the rules put
claims from which the dependent claim in the listing of the references required applicants in a triple-jeopardy situation
depends.’’ Section 1.265(b) as adopted under § 1.265(a)(2). See § 1.265(f). for losing patent rights. First, because
in this final rule requires that the Comment 232: One comment examiners will not consider all initially
preexamination search must encompass suggested that the Office should hire filed claims, applicants are put in
all of the features of the claims (whether experienced searchers to perform the jeopardy of having to file continuations
independent or dependent), giving the searching function. for unexamined claims. Second, if
claims the broadest reasonable Response: The Office has recently applicants choose to have more than the
interpretation. For example, if conducted a pilot using PCT threshold number of claims, applicants
independent claim 1 recites elements international applications for risk inequitable conduct charges. Third,
ABC and dependent claim 2 depends on competitively sourcing search functions if only the threshold number of claims
claim 1, incorporates all the limitations to commercial entities, each of which is pursued, applicants will be unable to
of claim 1 and additionally recites had experience in providing patent adequately protect their inventions.
element D, then, even if applicant searches. The purpose of the pilot Response: Applicants may present as
cannot find elements ABC and believes program was to demonstrate whether many claims as they feel are necessary
elements ABC to be novel, applicant searches conducted by commercial to adequately protect their invention.
must still search for element D. entities could meet or exceed the Under this final rule, applicant may
Comment 230: One comment argued standards of searches conducted and present up to five independent claims
that the requirement that the search used by the Office during the patent and twenty-five total claims for
encompass the ‘‘disclosed features that examination process. The pilot was not examination in an application without
may be claimed’’ should be deleted proved successful and was concluded providing an examination support
because it gives examiners carte blanche after six months. document. As discussed previously, the
to reject preexamination searches on Comment 233: A number of Office has also modified the proposed
essentially arbitrary grounds. comments argued that the rules changes to continuing application
Response: The Office notes the requiring an examination support practice and continued examination
concerns expressed in the public document are fraught with dangers in practice to permit an applicant to file
comment. The Office has modified the the form of inequitable conduct two continuation or continuation-in-
proposed provision such that § 1.265(b) allegations and malpractice. One part applications plus one request for
as adopted in this final rule does not comment argued that there would be continued examination in an
require that the preexamination search challenges on the sufficiency of the application family, without any
must encompass the disclosed features examination support document, the justification. Thus, an applicant is
that may be claimed. For any scope of the search of the examination permitted to present up to fifteen
amendment to the claims that is not support document, and the timing of the independent claims and seventy-five
encompassed by the examination search for the examination support total claims for each patentably distinct
support document, however, applicants document. A number of comments invention via an initial application and
are required to provide a supplemental argued that even a good faith attempt is two continuation or continuation-in-
examination support document that likely to be attacked on the grounds of part applications that are prosecuted
encompasses the amended or new inequitable conduct, and that such a serially without providing either an
claims at the time of filing the duty is contrary to Frazier v. Roessel examination support document or a
amendment. Cine Photo Tech., Inc., 417 F.3d 1230, justification. Applicant may also present
Comment 231: Several comments 75 U.S.P.Q.2d 1822 (Fed. Cir. 2005). A additional claims by submitting an
suggested that there should be an number of comments argued that the examination support document under
exemption from the limits on the risk of inequitable conduct allegations § 1.265 before the first Office action on
number of claims for independent in litigation would effectively force the merits.
inventors. One comment argued that applicants to file ten or fewer claims, The changes in this final rule do not
many individual inventors lack the which would deny them the right to force an applicant to carry any
skills and requisite knowledge to adequately protect their inventions. affirmative duty that may expose him or
perform an adequate preexamination Several comments argued that each her to a greater risk of inequitable
search and prepare an examination patent that includes an examination conduct. The submission of an
support document. support document in its file history examination support document to assist
Response: The applicant of a patent would be inherently weak given current the Office in gathering information for
application should have sufficient inequitable conduct practices. Several use during examination does not expose
knowledge of his or her own invention. comments argued that the likelihood of an applicant to a greater risk of
Performing a preexamination search and having to defend against inequitable inequitable conduct. Inequitable
preparing an examination support conduct would reduce perceived public conduct is a doctrine based, in part,
document should be no more difficult confidence in the validity of issued upon ‘‘intent to deceive.’’ See Molins
than preparing and prosecuting the patents. Several comments also argued PLC v. Textron, Inc., 48 F.3d 1172, 1178,
patent application. Furthermore, the examination support document will 33 U.S.P.Q.2d 1823, 1826 (Fed. Cir.
applicants can avoid the need to file an increase litigation costs. Several 1995). To establish inequitable conduct,
examination support document by not comments also argued that the added a party must provide clear and
presenting more than five independent costs in terms of the perceived convincing evidence of: (1) Affirmative
claims or more than twenty-five total reduction in patent quality and the misrepresentations of a material fact,
failure to disclose material information, e.g., Weatherchem Corp. v. J.L. Clark, patent. Several comments argued that
or submission of false material Inc., 163 F.3d 1326, 1336, 49 U.S.P.Q.2d the requirement for an examination
information; and (2) an intent to 1001, 1009 (Fed. Cir. 1998) (a finding support document places applicant in a
deceive. See, e.g., Impax Labs., Inc. v. that the patentee acted without any precarious position of having to provide
Aventis Pharm. Inc., 468 F.3d 1366, intent to deceive disposes of the as much information as possible to
1374, 81 U.S.P.Q.2d 1001, 1006 (Fed. inequitable conduct issue), and Manville support patentability of the claimed
Cir. 2006) (citing Alza Corp. v. Mylan Sales Corp. v. Paramount Systems Inc., invention while avoiding statements
Labs., Inc., 391 F.3d 1365, 1373, 73 917 F.2d 544, 552, 16 U.S.P.Q.2d 1587, that can be easily manipulated in
U.S.P.Q.2d 1161, 1167 (Fed. Cir. 2004)). 1593 (Fed. Cir. 1990) (materiality does litigation. One comment argued that
Absent such ‘‘intent to deceive’’, not presume intent, which is a separate applicants would be put in a position of
inequitable conduct cannot be proven. and essential component of inequitable having to make statements against
Unless the applicant has an ‘‘intent to conduct). The comments also expressed interest long before the scope of their
deceive’’ when submitting an concern that any ‘‘safe harbor’’ would invention is realized. One comment
examination support document, the possibly create new requirements with argued that requiring applicant to
simple submission of an examination respect to an applicant’s duty of examine his or her own application
support document, even one containing disclosure under § 1.56. It is the Office’s creates a conflict of interest, which
erroneous information, to the Office position that an applicant’s duty of would raise a question of concealment
does not by itself raise an intent to disclosure under § 1.56 with respect to or understatement.
deceive or mislead the Office. See an examination support document Response: The best way to avoid
Frazier, 417 F.3d at 1236 n.1, 75 under § 1.265 is satisfied if an prosecution history estoppel is by
U.S.P.Q.2d at 1826 n.1 (the mere individual as defined in § 1.56(c) acted knowing what the prior art is and filing
submission of erroneous information to in good faith to comply with the claims that initially define patentable
the Office does not by itself raise an requirements in § 1.265 for an subject matter without having to file an
inference of intent to deceive or examination support document. The amendment. Conducting a
mislead). Moreover, frivolous Office, however, is not adopting changes preexamination search and preparing an
allegations in litigation are subject to to § 1.56 in this final rule to provide a examination support document will
professional responsibility rules and ‘‘safe harbor’’ to applicants because help applicants to draft a better written
Rule 11 of the Federal Rules of Civil such a provision would be unnecessary. disclosure and more focused claims,
Procedure. The Office notes that patent reform thereby minimizing any prosecution
Comment 234: A number of legislation is pending in the 110th history estoppel.
comments argued that the Office must Congress before both the Senate and Comment 236: Several comments
create a ‘‘safe harbor’’ that appropriately argued that the one-month non-
House of Representatives. See Patent
protects the applicant from inequitable extendable time period to respond to a
Reform Act of 2007, S. 1145, 110th
conduct allegations when identifying notice requiring a corrected or
Cong. (2007), and H.R. 1908, 110th
and characterizing important prior art. supplemental examination support
Cong. (2007). The Department of
Several comments argued that changes document is insufficient. Some
Commerce submitted a letter on May 18,
to § 1.56 would need to be made to comments suggested that a three-month
2007, to the Chairman of the House
exempt examination support documents time period, which is extendable up to
Subcommittee on Courts, the Internet,
from it. One comment argued that six months with an extension of time,
and Intellectual Property recommending
legislative reform is needed. Several should be given. Some comments
that H.R. 1908 be amended to address
comments argued that implementation suggested that the time period should be
the doctrine of inequitable conduct and at least three months or extensions of
of the examination support document
unenforceability to ensure that patent time should be permitted.
should be delayed until changes to
applicants are not discouraged from Response: The Office notes the
inequitable conduct are made. A
fully and fairly sharing relevant concerns expressed in the public
number of comments suggested that
information with the Office. comment regarding the time period set
more meaningful participation by
applicants in prosecution of the Comment 235: A number of forth in a notice requiring a corrected or
application requires adequate ‘‘safe- comments argued that the examination supplemental examination support
harbor’’ provisions from inequitable support document would require the document when an examination support
conduct. applicant to make binding admissions document is deemed to be insufficient.
Response: The Office proposed as to the scope of the claims and how The Office has revised the proposed
revising § 1.56 to provide a ‘‘safe they relate to the prior art references provision such that § 1.265(e) provides
harbor’’ to applicants who make a and thus force applicant to create a two-month time period that is not
reasonable good faith effort to comply prosecution history estoppel and extendable under § 1.136(a). The two-
with the proposed requirements. See address rejections that would never month time period should be more than
Changes To Information Disclosure have occurred during prosecution. sufficient to correct any minor
Statement Requirements and Other Several comments argued that such a deficiencies. Applicants, however,
Related Matters, 71 FR at 38811–12, requirement shows a complete lack of should not rely on the two-month time
38820, 1309 Off. Gaz. Pat. Office at 27, understanding of the pitfalls that period in § 1.265(e) to prepare an
34. Most of the comments indicated that admissions can have in litigation. examination support document or a
such a ‘‘safe harbor’’ at best sets out the Several comments argued that such supplemental examination support
current state of the law of inequitable statements can be misinterpreted and document. The requirements for an
conduct, in that a ‘‘safe harbor’’ is distorted in unforeseen ways. One examination support document are
unnecessary for applicants who act in comment argued that this may cause the clearly set forth in § 1.265. Applicant
good faith (i.e., without an intent to practitioner to unintentionally and should prepare the examination support
deceive or mislead the Office) because unnecessarily narrow the claims document in compliance with the
an intent to deceive or mislead the through the effect of prosecution history requirements before presenting more
Office is a separate and essential estoppel, which will decrease the than five independent claims or more
component of inequitable conduct. See commercial value and the quality of the than twenty-five total claims. Applicant
should also conduct the preexamination Response: The Office notes the regarding literal support for the claim
search to encompass all of the disclosed concerns expressed in the public elements; (2) the Office does not
features that applicant expects to claim comment regarding the proposed indicate that examiners will receive
in order to avoid the need to update the provision that requires a corrected or additional time to review the
preexamination search. Applicant supplemental examination support examination support document; and (3)
should file a supplemental examination document when an examination support the Office has not indicated that it will
support document at the time applicant document is deemed insufficient. The rely on the external search.
presents any amendment to the claims Office has modified this proposed Response: Upon taking up an
that is not covered by the previous provision such that § 1.265(e) provides application for examination, the
examination support document. that if an examination support examiner will consider the prior art
Applicant also has the option of document is insufficient, the Office will submitted in an information disclosure
canceling the requisite number of claims notify the applicant and give the statement in compliance with §§ 1.97
(independent or total) that necessitate applicant the options of either: (1) Filing and 1.98 (see § 1.97(b)) and those filed
an examination support document, a corrected or supplemental with an examination support document
rather than submitting a corrected or examination support document in in compliance with § 1.265 (required
supplemental examination support compliance with § 1.265 that covers under § 1.75(b)), and make a thorough
document. Furthermore, extensions of each of the claims (whether in investigation of the available prior art
this two-month time period in § 1.265(e) independent or dependent form); or (2) related to the subject matter of the
are available to those for which there is amending the application such that it claimed invention (see § 1.104(a)(1)).
sufficient cause (§ 1.136(b)). contains no more than five independent The examiner will make an independent
Comment 237: One comment claims and no more than twenty-five patentability determination in view of
suggested that if applicant’s total claims. However, applicants will the prior art on the record, other
examination support document is not be given the option to submit a information in the examination support
deemed insufficient, applicant should suggested requirement for restriction. document, and any other relevant prior
be afforded an opportunity to Such an option would not be art or evidence. The examination
undesignate claims, and if applicant appropriate after applicant has already support document will assist the
fails to undesignate the claims or file a submitted an examination support examiner in the examination process
corrected examination support document. and the determination of patentability of
document, then the examiner should the claims by providing the most
Comment 239: A number of relevant prior art and other useful
undesignate claims and proceed with comments requested clarification on
examination, rather than holding the information. It will help the examiner in
how the Office would use an understanding the invention and to
application abandoned. examination support document. Some focus on the relevant issues. The
Response: The Office is not adopting comments questioned whether an examination support document will also
the ‘‘representative claims’’ examination independent search would be assist the examiner in evaluating the
approach in this final rule. Thus, conducted and whether the cited prior art cited by the applicant and in
designation (or ‘‘undesignation’’) of references would be independently determining whether a claim limitation
dependent claims for initial evaluated by the examiner. One has support in the original disclosure
examination is not required in this final comment noted that if the examiner and in any prior-filed application. The
rule. Under this final rule, if applicant simply adopts the results of the search requirement for an examination support
wants to present more than five and the conclusions of patentability, document is not a punitive measure, nor
independent claims or more than there would be a wide variation in is it a substitute for the Office’s
twenty-five total claims in an quality and thoroughness of the examination. The information required
application, applicant simply needs to searches performed, and in the quality in an examination support document is
submit an examination support of analysis of the search results. The to assist the examiner with the more
document in compliance with § 1.265 comment further argued that if the extensive examination of an application
before the first Office action on the examiner will perform further having more than five independent
merits. If applicant files an examination searching, then it was difficult to claims or more than twenty-five total
support document and it is insufficient, understand how the objective of claims.
the Office will notify the applicant and ‘‘sharing the burden’’ is accomplished, The Office has reduced the
give the applicant the options of either: since it would not seem to yield time or requirements for an examination
(1) Filing a corrected or supplemental cost savings for the Office. Several support document under § 1.265 as
examination support document in comments argued that examiners should adopted in this final rule. The Office
compliance with § 1.265 that covers not give any faith and credit to the proposed to require applicants to
each of the claims (whether in information in an examination support provide a detailed explanation of how
independent or dependent form); or (2) document. One comment argued that if each independent and dependent claim
amending the application such that it the examiner does rely on the external was patentable over the cited art
contains no more than five independent search, the uncertainty of the patent will (proposed § 1.261(a)(4)). Section
claims and no more than twenty-five be increased. Another comment argued 1.265(a)(4) as adopted in this final rule
total claims. that the submission of an examination requires applicants to provide the same
Comment 238: One comment argued support document may motivate explanation for the independent claims
that applicant should be given the examiners to skip doing a thorough only. The Office also proposed to
options available under § 1.75(b)(3) and search, thus leading to lower patent require applicants to provide statements
not be limited to submission of a quality. One comment argued that of utility of the invention as defined in
corrected or supplemental examination requiring an examination support each independent claim (proposed
support document when an examination document was a punitive measure § 1.261(a)(5)). Section 1.265 as adopted
support document is deemed to be because: (1) The examination support in this final rule does not include such
insufficient or in other situations under document requires information that is a requirement. These changes reduce
§ 1.265(e) (§ 1.261(c) as proposed). rarely if ever required, such as details the requirements for applicants who
wish to file an examination support complies with the requirements of provided in § 1.181(f), the mere filing of
document while still providing § 1.265. a petition will not stay any period for
examiners with valuable information to Section 1.265(a)(2) requires a listing reply that may be running against the
assist in the examination of of references deemed most closely application. The Office will make every
applications. related to the subject matter of each of effort to decide petitions in a timely
Comment 240: Several comments the claims (whether in independent or manner.
questioned how the Office would dependent form). As discussed Comment 241: A number of
determine if an examination support previously, the references that would be comments argued that it was unfair and
document is insufficient. Some most closely related to the subject inconsistent for the Office to require
comments also questioned what would matter of each of the claims include: (1) applicants to produce an examination
happen if the Office knows of closer A reference that discloses the greatest support document when the Office is
prior art than that cited by applicant. number of limitations in an not effectively using foreign search
One comment questioned whether the independent claim; (2) a reference that reports. One comment argued that since
examiner could hold the examination discloses a limitation of an independent the Office is unwilling to accept a
support document non-compliant if the claim that is not shown in any other foreign search report or use
examiner objects to the search or the reference in the listing of references international search reports prepared by
claim scope and also what would be required under § 1.265(a)(2); and (3) a the Office itself, the examination
applicant’s remedy. Several comments reference that discloses a limitation of a support document would not reduce
argued that applicants currently dependent claim that is not shown in pendency. Another comment argued
disregard §§ 1.56, 1.97 and 1.98 and fail any other reference in the listing of that since examiners ignore
to cite their own work. The comments references required under § 1.265(a)(2). international search reports they would
argued that applicant will cite generic References that are only relevant to the not consider an examination support
references to comply with § 1.265 and general subject matter of the claims document.
will likely not reveal the most pertinent would not be most closely related as Response: The Office will consider
art. One comment argued that the long as there are other references that any prior art submitted by applicant in
examination support document are more closely related to the subject an examination support document in
requirements are subjective. One matter of the claims. Applicant may not compliance with § 1.265 (required
comment suggested that the Office exclude a reference from an under § 1.75(b)) and an information
should institute a petition process for examination support document simply disclosure statement in compliance with
disputing the requirement for an because the reference was not the result §§ 1.97 and 1.98 including those that are
examination support document or the of the preexamination search provided filed with a foreign search report or an
holding that an examination support for in § 1.265(a)(1). References, from international search report. Any
document is insufficient. The comment whatever source, that have been brought relevant prior art will assist the
suggested that the requirement should to the applicant’s attention must be examiner in the determination of
be stayed pending the outcome of the considered in determining the patentability of the claims. The
petition, or applicants should at least be references most closely related to the examiner, however, must make an
given sufficient time for the petition to subject matter of each of the claims. independent determination of
be heard. Accordingly, if applicant merely cites patentability of the claims in the
Response: The Office will review an generic references and does not cite the application. The examiner cannot
examination support document to most pertinent art (including applicant’s accept the determination of
determine if it meets all the own work), then the examination patentability by another examiner in a
requirements set forth in § 1.265. As support document would most likely foreign application or an international
discussed previously, the accelerated not be compliant with § 1.265. Simply application because the patentability
examination procedure has more because the Office knows of a closer standard of a foreign or international
requirements than are contained in prior art reference (that is not application is different than the
§ 1.265. The Office has provided applicant’s own work) than the prior art standard in a U.S. application.
guidelines for examination support cited by the applicant is generally not Comment 242: A number of
documents filed under the accelerated enough to hold a preexamination search comments argued that the requirement
examination procedure. The Office’s insufficient. for an examination support document
guidelines concerning the accelerated An examination support document would create more work for the
examination support document may be could be deemed insufficient based on examiner since the examiner would
helpful to applicants who are preparing an insufficient search. If the have to determine the adequacy of the
an examination support document preexamination search or examination examination support document. One
under § 1.265. The guidelines under the support document is deemed comment argued that complex cases
accelerated examination procedure, insufficient, applicant will be given would continue to be complex and the
search templates, and samples of a only a two-month time period that is not Office would just have the additional
preexamination search document and extendable under § 1.136(a) in which to tasks of determining whether or not an
an examination support document are file a corrected examination support examination support document should
available on the Office’s Internet Web document or amend the application to be required, and whether or not an
site at http://www.uspto.gov/web/ contain five or fewer independent examination support document is
patents/accelerated/. The Office will claims and twenty-five or fewer total sufficient. One comment argued that
provide similar guidelines for claims to avoid abandonment of the examiners will not have sufficient time
examination support documents under application. See § 1.265(e). Any to review the examination support
§ 1.265, including the preexamination applicant who disagrees with a documents and that examiners would
search statement, and will post such requirement for an examination support need more time for reviewing the
guidelines on the Office’s Internet Web document or the holding that an examination support documents. The
site. These guidelines should minimize examination support document or comment questioned whether this
subjectivity in evaluating whether an preexamination search is insufficient would take the place of the examiner
examination support document may file a petition under § 1.181. As reviewing the specification. Several
comments argued that determining the Response: Changes to patent examiner specification.’’) (citations omitted).
adequacy of examination support production goals are beyond the scope Therefore, the reference in § 1.265(b) to
documents would divert resources from of the proposed changes to the rules of giving the claims ‘‘the broadest
examination and prolong pendency. practice. Therefore, whether examiners reasonable interpretation’’ is consistent
One comment argued that there would should be given less time to examine with case law.
be additional burdens on the examiner certain applications is not discussed in Comment 245: One comment agreed
in having to impose the requirement for this final rule. The Office expects that that the requirements relating to the
designation of claims, issue these rule changes will result in a more concise statement of utility and the 35
communications challenging the focused quality examination. The U.S.C. 112 showing is sharing the
sufficiency of the examination support information provided in the burden of examining all of the claims in
document, perform a different search examination support document will the application, but argued that
after claims are amended in response to assist the examiner with the more requiring applicant to characterize the
an Office action, and search and extensive examination of the prior art goes too far and is best left to
examine the non-designated claims after application. This information will be the examiner since it is the examiner’s
allowance of designated claims. One available to the examiner up front and role to review and analyze the prior art
comment argued that the number of will include the most closely related for patentability purposes in view of
petitions would increase because of references and a detailed explanation of § 1.104. Several comments argued that
petitions regarding whether an how the claims are patentable over these the burden of the examination belongs
examination support document was references. As a result, the exchanges with the Office and that it is against the
needed or defective. between examiners and applicants public interest to shift the burden from
Response: Under this final rule, should be more efficient and effective, the examiner to the applicant. One
applicant is required to file an the number of Office actions should be comment argued that the examination
examination support document under reduced, prosecution should be support document requirement asks
§ 1.75(b)(1) if applicant presents more concluded faster, and the need to file a applicant to prove that patent claims are
than five independent claims or more continuation application or request for patentable, which is essentially
than twenty-five total claims in an continued examination should be impossible. One comment argued that
application. If an examination support reduced. Thus, the Office’s workload the only purpose of an examination
document in compliance with § 1.265 is would be reduced. support document is to force applicants
Comment 244: Several comments to do what they already should be
not filed before the issuance of a first
argued that the requirement for the doing, that is, carefully comparing their
Office action on the merits of the
broadest reasonable interpretation of the claims to every close prior art reference
application, the application may not
claims in conducting the search for an and adding limitations to distinguish
contain or be amended to contain more
examination support document is
than five independent claims or more the claims.
inconsistent with current case law citing
than twenty-five total claims. The Response: Ultimately it is the Office’s
In re Johnston and In re Donaldson that
majority of the applicants would not responsibility to determine
require the Office to interpret the claims
need to file an examination support patentability. Nevertheless, it is
reasonably in light of the specification.
document. The requirements of an Response: The requirement in appropriate for applicants to provide
examination support document are § 1.265(b) is consistent with current case information regarding an initial review
clearly set forth in § 1.265. Applicants law. The current case law requires that of claims to assist the Office in
should comply with the requirements at during examination the claims must be determining patentability in
the time applicant presents more than given their broadest reasonable applications where they feel they need
five independent claims or more than interpretation consistent with the to have more than five independent
twenty-five total claims in an specification. According to case law, claims or more than twenty-five total
application. As discussed previously, however, the broadest ‘‘reasonable’’ claims. There is no reasonable
any relevant prior art and other interpretation is necessarily one that is explanation as to why it is against
information provided in an examination consistent with the specification. See, public interest for an applicant who
support document will assist the e.g., Phillips, 415 F.3d at 1316, 75 presents more than five independent
examiner in the examination process U.S.P.Q.2d at 1329; In re Morris, 127 claims or more than twenty-five total
and in the determination of F.3d 1048, 1054, 44 U.S.P.Q.2d 1023, claims to provide additional
patentability of the claims. During the 1027 (Fed. Cir. 1997) (‘‘Some cases state information to the Office. The Office is
examination process, the examiner will the standard as the broadest reasonable not requiring applicants to prove that
consider all relevant prior art and interpretation, others include the their claims are patentable. The Office is
information, and interpret the claims in qualifier consistent with the simply requiring applicants who present
light of the specification. The examiner specification or similar language. Since more than five independent claims or
will review the specification even when it would be unreasonable for the PTO to more than twenty-five total claims to
applicant files an examination support ignore any interpretive guidance provide additional information to the
document. Thus, the benefits obtained afforded by the applicant’s written Office by conducting a preexamination
by the examination support document description, either phrasing connotes search and submitting an examination
would outweigh the Office’s additional the same notion: As an initial matter, support document. The Office agrees
task of determining whether or not it is the PTO applies to the verbiage of the that applicants should be comparing
sufficient or is required. proposed claims the broadest reasonable their claims to every close prior art
Comment 243: One comment meaning of the words in their ordinary reference and adding limitations to
questioned whether the Office would usage as they would be understood by distinguish the claims.
give examiners less time to examine one of ordinary skill in the art, taking Comment 246: One comment stated
those applications in which an into account whatever enlightenment by the Office should require a showing of
examination support document is filed way of definitions or otherwise that may precise written description (35 U.S.C.
and, if not, then how would the be afforded by the written description 112, ¶ 1) support for all amendments
workload be reduced. contained in the applicant’s made by applicants.
Response: Applicant should the rules, but were amended out of the Part 1 that were in effect at the time that
specifically point out the support for rules in 1992 when they were found to was relevant to these particular cases.
any amendments made to the be unworkable. The case law does not stand for the
disclosure. See e.g., MPEP § 2163.06. Response: The Office proposed a proposition that the Office cannot
Furthermore, when applicant adds a number of changes to the rules of change the rules in 37 CFR Part 1 to
new claim limitation in an application practice around 1990 related to the duty require a preexamination search, either
that contains more than five of disclosure and the filing of generally or, when an applicant presents
independent claims or more than information disclosure statements. See more than five independent claims or
twenty-five total claims, applicant is Duty of Disclosure, 56 FR 37321 (Aug. more than twenty-five total claims in an
required to submit a supplemental 6, 1991), 1129 Off. Gaz. Pat. Office 52 application. Indeed, commentators have
examination support document that (Aug. 27, 1991) (proposed rule), and suggested that, especially after Festo X,
includes a showing of where such new Duty of Disclosure and Practitioner a practitioner who declines to conduct
claim limitation finds support under 35 Misconduct, 54 FR 11334 (Mar. 17, any pre-filing search as a matter of
U.S.C. 112, ¶ 1, in the written 1989), 1101 Off. Gaz. Pat. Office 12 practice may be falling short of the
description of the specification and in (Apr. 4, 1989) (proposed rule). The responsibility under 37 CFR part 10 to
any parent application. In addition, the Office ultimately adopted changes to the perform services with competence. See
examiner may require the applicant to duty of disclosure provisions of § 1.56 Schneck, The Duty to Search, 87
show where the specification of the and the information disclosure J.P.T.O.S. 689, 696–701 (2005).
application or a parent application statement provisions of §§ 1.97 and 1.98 Comment 250: One comment argued
provides written description support (and deleted § 1.99) in 1992. See Duty of that an examination support document
under 35 U.S.C. 112, ¶ 1, for a new Disclosure, 57 FR 2021 (Jan. 17, 1992), is not properly compared to an appeal
limitation. See § 1.105(a)(1)(ix) (as 1135 Off. Gaz. Pat. Office 13 (Feb. 13, brief since, in an appeal brief, the focus
adopted in this final rule). 1992) (final rule). The changes adopted is on the examiner’s rejection and
Comment 247: One comment argued in the 1992 final rule concerning the interpretation of the references, whereas
that the concise statement of utility and duty of disclosure provisions of § 1.56 in an examination support document,
the 35 U.S.C. 112 showing required in and the information disclosure applicant is required to provide a
an examination support document make statement provisions of §§ 1.97 and 1.98 search, interpret claims, and identify all
no sense. The comment argued that did not eliminate, or decline to adopt as issues related to the search results with
cross-referencing each line of the claims final, provisions similar to the respect to each element of each claim.
back to the specification is a waste of provisions of § 1.265(a). Response: The Office did not compare
time. One comment argued that Comment 249: One comment argued an examination support document to an
applicants should not have to admit that the requirement for an examination appeal brief. The Office simply
what is disclosed, but rather they support document was contrary to case indicated that the proposed
should only have to admit what is not law (citing In re Wilder, 736 F.2d 1516, ‘‘representative claim’’ examination
disclosed. 222 U.S.P.Q. 369 (Fed. Cir. 1984)) that approach was similar to the BPAI’s
Response: In view of the comments, applicant is not under a duty to search. representative claim practice.
the Office is not adopting the Response: Initially, it is noted that Nevertheless, the Office is not adopting
requirement that an examination Wilder does not stand for the the ‘‘representative claims’’ examination
support document contain a concise proposition that applicant does not have approach in this final rule.
statement of the utility of the invention a duty to search. Wilder involved a Comment 251: One comment argued
as defined in each of the independent reissue application. That case held that that the rule changes, especially the
claims. The showing of where each an attorney’s statement that his error requirement for an examination support
limitation of the claims finds support was a misunderstanding of the scope of document, are not rationally related to
under 35 U.S.C. 112, ¶ 1, however, the invention arose resulting from a lack achieving the stated goals of improving
would be helpful to the examiner. The of a prior art search was a sufficient patent quality and increasing efficiency.
examiner is responsible for determining explanation to satisfy the requirements Response: The Office is requiring an
whether or not there is 35 U.S.C. 112, of the reissue rule regarding how the examination support document in those
¶ 1, support in the written description error arose. There is some case law, cases where applicants feel they need to
for claimed subject matter. If applicant however, that indicates that applicant have more than five independent claims
provides this information, it will assist does not have a duty to search. See or more than twenty-five total claims
the examiner in the examination of the Nordberg, Inc. v. Telesmith, Inc., 82 because these applications are the most
application by making it easier for the F.3d 394, 397, 38 U.S.P.Q.2d 1593, burdensome for the Office. An
examiner to make the necessary 1595–96 (Fed. Cir. 1996); FMC Corp. v. examination support document will
determinations. See Hyatt v. Dudas, Hennessy Indus., Inc., 836 F.2d 521, 526 help the Office improve quality and
2007 U.S. App. LEXIS 15350 (Fed. Cir. n.6, 5 U.S.P.Q.2d 1272, 1275–76 n.6 increase efficiency because it will assist
Jun. 28, 2007). The applicant should be (Fed. Cir. 1987); FMC Corp. v. the examiner with the examination of
aware of where each limitation of the Manitowoc Co., 835 F.2d 1411, 1415, 5 the application. It should provide the
claims finds support under 35 U.S.C. U.S.P.Q.2d 1112, 1115 (Fed. Cir. 1987); examiner with the most pertinent prior
112, ¶ 1, in the written description by Am. Hoist & Derrick Co. v. Sowa & Sons, art and an analysis of that art. Therefore,
virtue of having prepared the Inc., 725 F.2d 1350, 1362, 220 U.S.P.Q. the changes being adopted in this final
application. There is no justification for 763, 772 (Fed. Cir. 1984), cert. denied, rule are related to the goals of improving
requiring the examiner to duplicate this 469 U.S. 821, 224 U.S.P.Q. 520 (1984). quality and increasing efficiency.
effort in an application that exceeds the In view of these cases, the Office has Comment 252: One comment argued
five independent claim and twenty-five stated that ‘‘[a]n applicant has no duty that the examination support document
total claim threshold set forth in to conduct a prior art search as a requirement will increase demand for
§ 1.75(b). prerequisite to filing an application for public searchers and this may drain the
Comment 248: One comment argued patent.’’ See MPEP § 410. The case law, examining pool and worsen retention.
that § 1.265(a)(2) through (a)(4) however, only discusses applicant’s Response: It is the Office’s experience
resurrects provisions that used to be in responsibility under the rules in 37 CFR that only a small number of examiners
who leave the Office do so to become admission of prior art; nothing in the Response: The Office is not adopting
public searchers. examination support document would the ‘‘representative claims’’ examination
Comment 253: One comment argued be considered as affecting the scope of approach in this final rule. Under this
that practitioners do not draft patent the claims; and the examination support final rule, applicant is required to file an
applications to claim subject matter that document would not be published and examination support document when
they believe is not supported by the examiners would make no references to applicant presents more than five
specification and thus it should be it in correspondence. One comment independent claims or more than
sufficient to merely assert that the supported the use of a limited twenty-five total claims in an
claims are supported by the ‘‘entire examination support document that application. In order to best assist in
specification.’’ would require applicants to identify examination, the examination support
Response: The purpose of the where in the specification the document must cover all of the claims
requirement for a showing of where corresponding structure, material or acts (in independent or dependent form) in
each limitation of the claims finds for functional claim elements may be the application, and not just the
support under 35 U.S.C. 112, ¶ 1, is to found since this would improve independent claims in excess of five or
assist the examiner in determining examination efficiency and have the total claims in excess of twenty-five.
where the specification provides written minimal effects in litigation.
description support for each claim Response: Providing assurances that I. The Office’s Authority To Promulgate
limitation. An assertion by the the examination support document the Changes in This Final Rule
practitioner that the claims are would not affect the scope of the claims Comment 258: A number of
supported by the entire specification would not be appropriate. The showing comments argued that the changes to
would not be of any assistance to the of where each limitation of the claims the rules of practice being adopted in
examiner. finds support under 35 U.S.C. 112, ¶ 1, this final rule are beyond the Office’s
Comment 254: Several comments in the written description of the rulemaking authority under 35 U.S.C.
argued that an examination support specification and the showing that 2(b)(2). The comments argued that the
document should not be required until includes the structure, material, or acts proposed §§ 1.75(b), 1.78(d), and 1.78(f)
after the time for issuing a restriction in the specification that correspond to are substantive and not procedural in
requirement has passed because it is each means-(or step-) plus-function nature because they affect an applicant’s
unfair to require applicant to prepare claim element that invokes right to receive a patent for an invention
and file an examination support consideration under 35 U.S.C. 112, ¶ 6, or an applicant’s ability to claim what
document when claims may be may affect the interpretation of the the applicant regards as the invention.
restricted such that fewer than ten claims. The determination on Response: The Office has the
representative claims are pending for patentability is made on the entire authority under 35 U.S.C. 2(b)(2) to
examination. One comment suggested record of the application. In order to establish regulations, not inconsistent
that a time period should be set in provide a complete application file with law, which shall govern the
which the examiner must issue a history, the examiner may find that it is conduct of proceedings in the Office.
restriction requirement or indicate that necessary to state on the record any The ‘‘conduct of proceedings in the
there will be none, and then the time agreement or disagreement with Office’’ provision of 35 U.S.C. 2(b)(2) (as
period for submission of an examination applicant’s explanation of how the well as former 35 U.S.C. 6(a)), however,
support document should be set after claims are patentable over the references is not limited to what might be
that. or applicant’s explanation of where each characterized as ‘‘procedural’’ rather
Response: As discussed previously, limitation of the claims finds support than ‘‘substantive’’ rules. See United
an applicant may submit a suggested under 35 U.S.C. 112, ¶ 1, in the written States v. Haggar Apparel Co., 526 U.S.
restriction requirement accompanied by description. The application record is 380, 387–88 (1999). Simply contending
an election without traverse of an available to the public upon the that a regulation is ‘‘substantive and not
invention to which there are no more publication of the application under 35 procedural’’ fails to address the issue
than five independent claims and no U.S.C. 122(b) and the issuance of a because a regulation that relates to
more than twenty-five total claims. See patent on the application. application processing within the Office
§ 1.142(c) and the discussion of Comment 256: One comment and that is not inconsistent with law
§ 1.142(c). In this situation, an suggested that the Office require falls within the Office’s rulemaking
examination support document will not applicants to provide claim charts that authority. See In re Van Ornum, 686
be required if the suggested restriction illustrate the differences between F.2d 937, 945, 214 U.S.P.Q.2d 761, 768
requirement is accepted. An claims. The comment also suggested (C.C.P.A. 1982) (‘‘Appellants say the
examination support document will be that applicants could be required to regulation is ‘invalid on its face’ but
required only if the suggested restriction identify where support exists in the they do not explain why beyond
requirement is not accepted, and the specification for the claims, or to contending it is ‘substantive and not
application contains more than five identify groups of claims that are similar procedural.’ We can give no weight to
independent claims or more than and define similar limitations. that contention. True, the rule is
twenty-five total claims, or more than Response: There is no prohibition substantive in that it relates to a
five independent claims or more than against applicants submitting claim condition under which a patent will be
twenty-five total claims to the elected charts to illustrate the differences granted which otherwise would have to
invention and/or species if the examiner between claims. The Office does not be denied for double patenting. Much of
makes a restriction requirement that is consider it necessary at this time to the content of the PTO rules is
different from the suggested restriction make claim charts a requirement. ‘substantive’ in this respect. The
requirement. Comment 257: One comment inquired regulation clearly relates to application
Comment 255: One comment why, when claims in excess of ten are processing within the PTO in a manner
suggested that the Office should give designated, a justification for all consistent with statutory and case law,
assurances that: Like an information designated claims must be supplied and which is its principal business.’’).
disclosure statement, nothing in an not just the number in excess of ten The regulations at issue in this final
examination support document is an representative claims. rule concern application processing
exclusively within the Office. The right to receive a patent for an the number of continuing applications
changes to § 1.75 being adopted in this invention. The modification to under 35 U.S.C. 2(b)(2) because the
final rule govern the requirements continuation practice simply improves proposed rules are inconsistent with the
relating to the examination of the claims the procedures under which an law, and specifically do not ‘‘facilitate
in an application, as is provided for in applicant may file a continuation and expedite the processing of patent
35 U.S.C. 131. The changes to § 1.78(d) application by focusing and applications’’; (3) the changes to § 1.78
being adopted in this final rule govern consolidating the examination process. cut off substantive rights for reasons
the conditions under which an Furthermore, as an alternative, an other than patentability (as set forth in
application may contain or be amended applicant may choose to file an appeal 35 U.S.C. 102, 103 and 112 of title 35,
to contain a claim under 35 U.S.C. 120, when confronted with a rejection that United States Code) and procedural
121, or 365(c) to the benefit of a prior- he or she feels is improper. The changes misconduct, and thus are in violation of
filed application. The changes to adopted in this final rule to the 35 U.S.C. 131; (4) the changes to § 1.78
§ 1.78(f) being adopted in this final rule continuing application practice prevent are inconsistent with 35 U.S.C. 131 or
govern the requirements relating to the applicants from unnecessarily 132, because the Director does not have
filing and examination of multiple prolonging prosecution of applications the statutory discretion under these
applications by a common owner. The before the Office. provisions to refuse to examine or to
filing of an application for patent, The changes to the examination of reexamine any application; (5) the
amendment of an application, and the claims practice adopted in this final rule requirement for a ‘‘showing’’ is contrary
examination of an application are do not prevent an applicant from to law because the Office has no
proceedings that take place exclusively presenting as many claims as are authority to deny an applicant the right
within the Office. Therefore, regulations considered necessary or desirable to to file a continuation application or a
governing requirements relating to the protect the full scope of the invention. request for continued examination; (6)
filing, amendment, and examination of The changes to the examination of no justification or legal basis exists for
an application fall squarely within the claims practice adopted in this final rule the petition requirements set forth in the
Office’s authority under 35 U.S.C. simply provide that if an applicant rules to get the benefit of an earlier
2(b)(2) to establish regulations which exceeds or contemplates exceeding a filing date under 35 U.S.C. 120 or 365;
‘‘govern the conduct of proceedings in specified threshold (five independent (7) the Office has no statutory authority
the Office.’’ claims or twenty-five total claims), the to delete a claim to priority in a
The substantive right at issue during applicant can provide for that continuing application filed according
the patent examination process involves eventuality by submitting additional to the statutory provisions; and (8)
whether the applicant has met the information to the Office in an applicants have a right to file a
conditions and requirements under title examination support document in order continuation application, as long as the
35, United States Code, to be entitled to to facilitate effective examination of the reason is not improper, unduly
a patent, rather than the ability to file application. The submission of an successive or repetitive, citing Godfrey
and maintain an unlimited number of examination support document does not v. Eames, 68 U.S. (1 Wall.) 317, 325–26
continuing applications or requests for change the substantive criteria applied (1864). Other comments, however,
continued examination or the ability to during examination (i.e., the statutory suggested that the proposed rules are
refrain from obtaining and providing standards of patentability set forth in consistent with both statute and case
information pertinent to the title 35, United States Code) to law given that: (1) The Office is not
examination of the application to the determine the applicant’s entitlement to instituting a per se numerical limit on
Office. See, e.g., 35 U.S.C. 101 a patent. the number of continuation applications
(‘‘[w]hoever invents or discovers any The patentably indistinct claims that an applicant may file; and (2)
new and useful process, machine, provisions do not affect applicant’s applicants are afforded an opportunity
manufacture, or composition of matter, patent rights because once the required to justify by a showing the need to file
or any new and useful improvement explanation of patentable indistinctness additional continuation applications.
thereof, may obtain a patent therefor, has been provided, the claimed Response: None of the statutory
subject to the conditions and invention is examined on the merits and provisions or case law cited by the
requirements of this title’’). The changes patentability is determined by the comments provides that an applicant
in this final rule do not preclude Office. The requirement that applicant may file an unlimited number of
applicants from obtaining a patent on an show that claims are patentably distinct continuing applications or requests for
invention, discourage, impede, or block up front is simply a tool to focus and continued examination.
an applicant’s statutory right to a patent, consolidate the examination of multiple None of the statutory provisions
or stifle inventors’ rights to protect their applications. related to continuing applications cited
inventions. Comment 259: A number of by the comment provide that an
The changes to continuing application comments suggested that a requirement applicant may file an unlimited number
practice adopted in this final rule do not of a showing to obtain an additional of continuing applications. 35 U.S.C.
set a per se limit on the number of continuation application is contrary to 120 simply provides that an applicant
continuing applications that an 35 U.S.C. 120, 121, 365, 132(b), and may claim the benefit of the filing date
applicant may file. That is, applicant other sections of title 35, United States of a prior-filed application provided that
may automatically file a first and second Code, under which an applicant has a certain conditions are satisfied. 35
continuation application without any right to file an unlimited number of U.S.C. 121 provides that if the Director
justification and may file any number of continuation applications. The requires that an application containing
additional continuation applications as comments suggested that: (1) The claims to two or more independent and
long as he or she justifies each filing by proposed rules disregard case law, in distinct inventions be restricted to one
a showing as to why the amendment, particular, In re Hogan, 559 F.2d 595, of the inventions and a non-elected
argument or evidence sought to be 194 U.S.P.Q. 527 (C.C.P.A. 1977), and In invention is made the subject of a
entered could not have been previously re Henriksen, 399 F.2d 253, 158 divisional application, the applicant in
presented. Therefore, the changes to the U.S.P.Q. 224 (C.C.P.A. 1968); (2) the the divisional application may claim the
final rule do not affect an applicant’s Office does not have authority to limit benefit of the filing date of prior-filed
application provided that the conditions application.’’ 35 U.S.C. 120 (1952). 35 so doing make some changes in the
specified in 35 U.S.C. 120 are satisfied. U.S.C. 120 was amended in 1975 to add concepts involved.’’ Patent Law
35 U.S.C. 365(c) provides that an ‘‘or as provided by section 363 of this Codification and Revision, 82d Cong. 39
applicant in an international application title’’ to provide for claims under 35 (June 13, 1951) (statement of P.J.
designating the United States may claim U.S.C. 120 to the benefit of an Federico, Examiner-In-Chief, United
the benefit of the filing date of a prior- international application filed under the States Patent Office). Additionally, as
filed national application or a prior-filed PCT (i.e., international applications noted in the congressional record for the
international application designating filed under 35 U.S.C. 363). Pub. L. 94– 1952 Patent Act, 35 U.S.C. 120 codified
the United States, and that an applicant 131, section 9, 89 Stat. 685, 692 (1975). existing patent practice. 98 Cong. Rec. 7,
in a national application may claim the 35 U.S.C. 120 was amended again in 9323 (June 28, 1952 to July 7, 1952)
benefit of the filing date of a prior-filed 1984 to substitute ‘‘by an inventor or (statements of Senators Saltonstall and
international application designating inventors named in the previously filed McCarran). In particular, ‘‘[t]he
the United States, again provided that application’’ for ‘‘by the same inventor’’ provisions set out in section 120 giving
the conditions specified in 35 U.S.C. for consistency with the changes to the the applicant the benefit of the date of
120 are satisfied. inventorship provisions of 35 U.S.C. an earlier application by him for the
Since 35 U.S.C. 120, 121 and 365(c) 116. Public Law 98–622, section 104(b), same invention constitute a restatement
all hinge upon 35 U.S.C. 120, the 98 Stat. 3383, 3385 (1984). 35 U.S.C. 120 of the former practice which was not,
response focuses on that provision. 35 was finally amended in 1999 to give the however, spelled out in the former law.’’
U.S.C. 120 provides that: Director greater authority with respect Charles L. Zinn, Commentary on New
An application for patent for an invention to setting forth the time period within Title 35, U.S. Code ‘‘Patents’’ 2515.
disclosed in the manner provided by the first which claims to the benefit of a prior- Secondary sources providing
paragraph of section 112 of this title in an filed application must be submitted by information about 35 U.S.C. 120 also do
application previously filed in the United adding: not offer guidance with respect to
States, or as provided by section 363 of this whether an applicant may file an
title, which is filed by an inventor or No application shall be entitled to the
unlimited number of continuing
inventors named in the previously filed benefit of an earlier filed application under
this section unless an amendment containing applications. The 1952 Patent Act was
application shall have the same effect, as to drafted by: (1) P.J. Federico, Examiner-
such invention, as though filed on the date the specific reference to the earlier filed
application is submitted at such time during In-Chief of the Patent Office; (2) Giles S.
of the prior application, if filed before the
patenting or abandonment of or termination the pendency of the application as required Rich, then an attorney of some twenty
of proceedings on the first application or on by the Director. The Director may consider years representing the National Council
an application similarly entitled to the the failure to submit such an amendment of Patent Law Associations; (3) Paul
benefit of the filing date of the first within that time period as a waiver of any Rose, chairman of the laws and rules
application and if it contains or is amended benefit under this section. The Director may
committee of the American Patent Law
to contain a specific reference to the earlier establish procedures, including the payment
of a surcharge, to accept an unintentionally Association; and (4) Henry Ashton, a
filed application. No application shall be representative of the coordinating
entitled to the benefit of an earlier filed delayed submission of an amendment under
this section. committee on revision and amendment
application under this section unless an
amendment containing the specific reference
of the patent laws of the National
Public Law 106–113, 113 Stat. 1501,
to the earlier filed application is submitted at Council of Patent Law Associations. See
1501A–563 through 1501A–564 (1999).
such time during the pendency of the generally, Giles S. Rich, Congressional
Thus, 35 U.S.C. 120 has never contained
application as required by the Director. The Intent—Or, Who Wrote the Patent Act of
any language either expressly or 1952, Patent Procurement and
Director may consider the failure to submit
such an amendment within that time period implicitly stating that an applicant may Exploitation (BNA 1963), reprinted in
as a waiver of any benefit under this section. file an unlimited number of continuing Nonobviousness—The Ultimate
The Director may establish procedures, applications. Condition of Patentability (John F.
including the payment of a surcharge, to Turning to the legislative history of Witherspoon ed., 1983) (hereinafter
accept an unintentionally delayed the 1952 Patent Act, it does not mention
submission of an amendment under this ‘‘Rich on Congressional Intent’’).
whether an applicant may file an Following enactment, Federico gave a
section.
unlimited number of continuing series of lectures to teach the patent bar
35 U.S.C. 120 (2000). applications. The Senate Report simply about the new law. Federico’s lectures
35 U.S.C. 120 has been revised documents that ‘‘[s]ections 120 and 121 were transcribed, consolidated, and
significantly since its codification as express in the statute certain matters reprinted for many years in title 35,
part of the 1952 Patent Act. 35 U.S.C. which exist in the law today but which United States Code Annotated. See 35
120 as codified in the 1952 Patent Act had not before been written into the U.S.C.A. sections 1 to 110 (1954). The
provided that: ‘‘[a]n application for statute, and in so doing make some Federal Circuit has considered
patent for an invention disclosed in the minor changes in concepts involved.’’ S. Federico’s Commentary to be ‘‘an
manner provided by the first paragraph Rep. No. 1979, at 2400 (June 27, 1952). invaluable insight into the intentions of
of section 112 of this title in an The House Report contains basically the the drafters of the Act.’’ Symbol I, 277
application previously filed in the same description for 35 U.S.C. 120. The F.3d at 1366, 61 U.S.P.Q.2d at 1519.
United States by the same inventor shall testimony from hearings before a Federico explained that 35 U.S.C. 120
have the same effect, as to such Subcommittee of the Committee on the was ‘‘not specified in the old statute but
invention, as though filed on the date of Judiciary, House of Representatives, for was developed by decisions of the
the prior application, if filed before the the 82nd Congress, held on June 13, 14, courts beginning with a decision of the
patenting or abandonment of or and 15, 1951, contains the same Supreme Court of 1864, Godfrey v.
termination of proceedings on the first description for 35 U.S.C. 120 and little Eames.’’ P.J. Federico, Commentary on
application or on an application else of substance. For example, P.J. the New Patent Act, 75 J. Pat. &
similarly entitled to the benefit of the Federico testified: ‘‘Sections 120 and Trademark Off. Soc’y 3, 192 (Mar. 1993)
filing date of the first application and if 121 express in the statute certain things (hereinafter ‘‘Federico’s Commentary’’).
it contains or is amended to contain a which exist in the law today that have After offering this opening statement, he
specific reference to the earlier filed not been written into the statute, and in then set forth the three requirements for
a continuation application required by application was filed to pursue further having more than three family members
35 U.S.C. 120 and elaborated on the protection for the invention of the were actually uncommon, if they
meaning of each of these three patent on the first application. At the existed at all, before the 1952 Patent
requirements. time of the 1952 Patent Act the double Act. Thus, if anything, the drafters of
Although Federico’s Commentary did patenting doctrine did not permit a the Act, seeking to codify existing
not expressly mention any limits or patentee to obtain more than one patent practice, did not envision that an
conditions on an applicant’s ability to on patentably indistinct subject matter. applicant would use the provisions of
file a continuation, it also did not state See e.g., Miller v. Eagle Mfg. Co., 151 35 U.S.C. 120 to file and maintain an
that the drafters contemplated allowing U.S. 186, 199 (1894) (the ‘‘a patent’’ for unlimited number of continuing
an applicant to file an unlimited an invention provision does not permit applications.
number of continuation applications. a patentee to obtain more than one Following the enactment of the 1952
Thus, there is nothing which indicates patent on patentably indistinct subject Patent Act, case law has specifically
that the drafters intended to permit an matter). Even after the 1952 Patent Act, addressed the imposition of limits or
applicant to file an unlimited number of the double patenting provision of 35 conditions on continuation practice in
continuing applications. What is more, U.S.C. 101 (‘‘a patent’’ for an invention), the two cases cited by the comments
Federico described examples of like its predecessor, was interpreted as (Henriksen and Hogan). In Henriksen
situations where continuations were precluding a patentee from obtaining and Hogan, the Court of Customs and
used before the codification of the 1952 more than one patent on patentably Patents Appeals (C.C.P.A.) overturned
Patent Act: indistinct subject matter. See, e.g., In re rulings by the Board denying an
Ockert, 245 F.2d 467, 469, 114 U.S.P.Q. applicant’s priority claim to earlier—
Continuing applications are utilized in a
number of different situations; for example, 330, 332 (C.C.P.A. 1957)). It was not filed applications. In Hogan, the Board
in the case of a requirement to restrict an until 1970 that the Court of Customs sought—without prior warning—to limit
application to a single invention a second and Patent Appeals held that the double the number of continuations by
application might be filed for the invention patenting provision of 35 U.S.C. 101 restricting the applicant from claiming
excluded from the the [sic] first application precluded only ‘‘same invention’’ priority where the continuation
as explained in connection with the next applications covered a pendency period
section of the law, or a second application double patenting (i.e., two patents
containing claims to identical subject of twenty-four years. In Henriksen, the
might be filed for a separable invention even Board took the position that 35 U.S.C.
though no requirement was made. A matter) and permitted the use of a
continuing application with the disclosure terminal disclaimer to overcome double 120 imposed a per se limit on the
the same as a first application might patenting unless the application and number of permissible continuations.
sometimes be filed for procedural reasons patent were claiming identical subject The changes adopted in this final
with the first application thereafter being rule, however, do not set a limit on the
matter. See In re Vogel, 422 F.2d 438,
abandoned. And a continuing application applicant’s ability to claim the benefit of
441, 164 U.S.P.Q. 617, 622 (C.C.P.A.
with added subject matter may sometimes be a prior-filed application regardless of
filed when the inventor has additional details 1970). Thus, applicants today frequently
the pendency period, nor do they set a
relating to the invention which he wishes to do not abandon the initial application,
per se limit on the number of continuing
disclose in the application; in such cases the but instead prosecute the initial
applications that an applicant may file.
second application would be entitled to the application in parallel with the
See Changes to Practice for Continuing
date of the first application only as to the continuation application. Because of the
common subject matter. Applications, Requests for Continued
development of terminal disclaimer
Examination Practice, and Applications
Federico’s Commentary, 5 J. Pat. & practice, the authors of the 1952 Patent
Containing Patentably Indistinct Claims,
Trademark Soc’y at 194. Act would not have contemplated a 71 FR at 50, 1302 Off. Gaz. Pat. Office
Federico’s list, albeit not exhaustive, continuing application system under at 1320 (‘‘No limit is placed on the
suggests that patent practitioners used which an applicant would file an number of continuing applications.’’).
continuing applications in more limited unlimited number of continuing Applicant may automatically file a first
circumstances before the 1952 Patent applications. and second continuation application
Act than today. His first example Moreover, both before and long after and further extend examination by filing
focuses on the divisional-type situation the 1952 Patent Act applicants did not a request for continued examination.
where a continuing (divisional) file long strings of continuation After these options are exhausted an
application is pursued to protect a applications as is often done today. applicant may also file any number of
second invention as a result of a Indeed, the Board of Patent Appeals third and subsequent continuation
restriction in the initial application. His (Board) in Henriksen attempted to applications as long as the applicant
third example focuses on a identify cases involving a series of more justifies each filing by a showing that
continuation-in-part situation where a than three patents from cases litigated in amendment, argument, or evidence
continuing application is filed to enable the courts and patents issued by the sought to be entered could not have
an applicant to add subject matter to the Office during the week of April 26, been presented earlier. The Henriksen
application. Only his second example 1966. Ex parte Henriksen, 154 U.S.P.Q. court objected to the approach taken by
contemplates anything like current 53, 58–59 (Pat. Off. Bd. App. 1966). The the Board in changing continuing
continuation practice where a Board in Henriksen was unable to application practice retroactively. The
continuing application is filed to pursue isolate a single case involving a priority Henriksen court objected to the Board
protection for an invention disclosed in chain longer than three applications, changing the interpretation of the
the initial application. Federico with one exception that the Board provisions of 35 U.S.C. 120 and
nevertheless explained that the first nevertheless dismissed because the case applying that interpretation to
application to which the continuing was quite old, dating to 1867, and previously filed applications. The
application claims priority is abandoned because the factual record was Henriksen court specifically stated that:
after the continuation is filed. developed under different law. Id. at 58, The action of the board is akin to a
Federico did not include the then-rare n.2 (referring to the case as ‘‘an antique retroactive rule change which may have the
situation in which the first application curiosity’’). Based on the Board’s effect of divesting applicants of valuable
issued as a patent and the continuing research, it appears that priority chains rights to which, but for the change in Patent
Office position brought about by the board’s continuation applications, the Office is Pat. Office 47 (Apr. 11, 2000) (interim
decision, they were entitled. Nothing appears seeking to encourage the prompt rule).
in the Patent Office Rules of Practice or the presentation of amendment, argument The AIPA is title IV of the Intellectual
Manual of Patent Examining Procedure Property and Communications Omnibus
which sanction such a result.
and evidence in patent prosecution. To
do so, the Office has determined that it Reform Act of 1999 (S. 1948), and was
Henriksen, at 399 F.2d at 261–62, 158 must, at some point, change the incorporated and enacted into law as
U.S.P.Q. at 231. In Henriksen and continuing application practice that has part of Public Law 106–113. The
Hogan, the Office had not promulgated facilitated the past dilatory presentation Conference Report for H.R. 3194, 106th
any rules, let alone given the public of amendment, argument and evidence Cong., 1st. Sess. (1999), which resulted
notice of, or an opportunity to respond that could have been presented earlier. in Public Law 106–113, does not
to, the ad hoc limits imposed. By The changes adopted in this final rule contain any discussion (other than the
contrast, the Office here is pursuing allow an applicant the flexibility to incorporated language) of S. 1948. See
prospective rule making, having given choose between filing a continuing H.R. Conf. Rep. No. 106–497, at 37 and
the public notice of the changes to application and filing an appeal, but do 1089–174 (1999). A section-by-section
§ 1.78 and an opportunity to comment. not permit an applicant to persist analysis of S. 1948, however, was
Although the Court of Customs and indefinitely before the examiner rather printed in the Congressional Record at
Patent Appeals in a ‘‘post script’’ than seek an appeal. Therefore, this the request of Senator Lott. See 145
mentioned congressional resolution to final rule does not preclude an Cong. Rec. S14,708–26 (1999) (daily ed.
remedy the abuses associated with applicant from obtaining a patent on an Nov. 17, 1999). This section-by-section
continuation applications in both invention when requirements of title 35, analysis of S. 1984 provides with
Henriksen and Hogan, the court seemed United States Code, are satisfied. As respect to 35 U.S.C. 132(b) that:
more concerned with the openness of explained in the Continuing Section 4403 amends section 132 of the
the process for effecting change. Applications Proposed Rule, the Patent Act to permit an applicant to request
Henriksen, 399 F.2d at 262, 158 changes to § 1.78 will ‘‘make the that an examiner continue the examination of
U.S.P.Q. at 231. Here, the Office is exchange between examiners and an application following a notice of ‘‘final’’
adopting the prospective and open applicants more efficient, get claims to rejection by the examiner. New section 132(a)
process missing in Hogan and issue faster, and improve the quality of authorizes the Director to prescribe
Henriksen. The Office has given the regulations for the continued examination of
issued patents.’’ See Changes to Practice an application notwithstanding a final
public the opportunity to participate in for Continuing Applications, Requests
shaping the rules for continuing rejection. The Director may also establish
for Continued Examination Practice, appropriate fees for continued examination
application practice, received hundreds and Applications Containing Patentably proceedings, and shall provide a 50% fee
of comments, and has modified the Indistinct Claims, 71 FR at 50, 1302 Off. reduction for small entities which qualify for
proposed rules in response to those Gaz. Pat. Office at 1320. such treatment under section 41(h)(1) of the
public comments. Patent Act.
More recent case law demonstrates Like the statutory provisions for
that an applicant does not have the right continuing applications, the statutory 145 Cong. Rec. S14,718.
to file an endless stream of continuing provision for requests for continued 35 U.S.C. 132(b) does not specify the
applications. See Symbol I, supra, In re examination, namely, 35 U.S.C. 132(b), conditions and requirements for
Bogese II, 303 F.3d 1362, 64 U.S.P.Q.2d does not provide that an applicant may continued examination under 35 U.S.C.
1448 (Fed. Cir. 2002), and Symbol file an unlimited number of requests for 132(b), but rather authorizes the
Techs. v. Lemelson Medical, Educ. & continued examination. As discussed Director to ‘‘prescribe regulations to
Research Found., 277 F.3d 1361, 61 previously, the provisions of 35 U.S.C. provide for the continued examination
U.S.P.Q.2d 1515 (Fed. Cir. 2002) 132(b) were added relatively recently by of applications for patent at the request
(Symbol II). Symbol II, Bogese II and section 4403 of the AIPA. See Public of the applicant.’’ See 35 U.S.C. 132(b).
Symbol I suggest that the Office has the Law 106–113, 113 Stat. 1501, 1501A– There is nothing in 35 U.S.C. 132(b) that
authority to place reasonable 560 (1999). 35 U.S.C. 132(b) provides precludes the Office from promulgating
restrictions and requirements on the that: regulations that provide for no more
filing of continuing applications, just as The Director shall prescribe regulations to than a single request for continued
it can place reasonable restrictions and provide for the continued examination of examination under 35 U.S.C. 132(b), or
requirements on the prosecution of applications for patent at the request of the precludes the Office from requiring that
those applications. In addition, the applicant. The Director may establish any request for continued examination
court in Bogese II expressly rejected the appropriate fees for such continued under 35 U.S.C. 132(b) include a
view that its previous case law (e.g., examination and shall provide a 50 percent showing as to why the amendment,
reduction in such fees for small entities that
Henriksen) stood for the broad argument or evidence could not have
qualify for reduced fees under section
proposition that 35 U.S.C. 120 gave 41(h)(1) of this title. been previously presented.
applicants carte blanche to prosecute Comment 260: A number of
continuing applications in any desired 35 U.S.C. 132(b) (2000). The Office first comments expressed the opinion that
manner. Rather, it held that, while the implemented the provisions of 35 U.S.C. any limitation on continuations should
statute itself provided no limit on the 132(b) by a final rule in August of 2000 be done legislatively by congressional
number of applications that may be co- that was preceded by an interim rule in action and not by the Office via rule
pending, ‘‘[n]owhere does [the prior March of 2000. See Request for making. Some comments argued that the
case law] suggest or imply that the PTO Continued Examination Practice and Office is usurping the legislative role of
must allow dilatory tactics or that the Changes to Provisional Application Congress by modifying continuation
PTO lacks inherent power to prohibit Practice, 65 FR 50092 (Aug. 16, 2000), practice via regulation, arguing Congress
unreasonable delay in prosecution.’’ 1238 Off. Gaz. Pat. Office 13 (Sept. 5, by inaction tacitly endorses the current
Bogese II, 303 F.3d at 1368 n.6, 64 2000) (final rule), Changes to practice, and that the Federal Circuit
U.S.P.Q.2d at 1452 n.6. Application Examination and has acknowledged that limiting
By amending the procedures under Provisional Application Practice, 65 FR continuation practice is an issue best
which an applicant may file 14865 (Mar. 20, 2000), 1233 Off. Gaz. left to Congress, citing Ricoh Co., Ltd. v.
Nashua, 185 F.3d 884 (Fed. Cir. 1999) continuation practice is ‘‘a procedural continuing applications, citing The
(nonprecedential decision). Some device that permits an applicant to Patent Reform Act of 2005, H.R. 2795,
comments suggested that the Office amend his application after rejection 109th Cong. § 8 (2005). One comment
should not adopt sweeping changes and receive examination of the specifically suggested that Congress’
unless and until Congress acts to ‘amended’ (or new) application’’) (citing decision to remove authority to limit
address the issues through the pending In re Bogese I, 22 U.S.P.Q. 2d at 1824). continuations from later patent reform
patent reform legislation, which would Specifically, under revised § 1.78, an legislation indicates that Congress is
ensure consistency with previous applicant may automatically file a first still debating the issue and that the
legislative acts. Some comments argued and second continuing application and Office does not have that authority. One
that questions regarding the Office’s then may file any number of third and comment suggested that Congress’
statutory authority to make the subsequent continuing applications as intent is not to limit the number of
proposed changes would likely lead to long as the applicant justifies each filing applications that an applicant may file
litigation and a period of uncertainty by a showing as to why the amendment, or the number of inventive concepts that
until the matter can be resolved either argument or evidence sought to be an application may pursue, because that
judicially or legislatively. Several entered could not have been previously would stifle inventors’ rights to protect
comments also suggested that the presented. Furthermore, as an their inventions.
proposed changes to continuation alternative, an applicant may choose to Response: The Office notes that
practice will ultimately result in an file an appeal when confronted with a legislation was pending before the 109th
even larger backlog at the Office should rejection that he or she feels is Congress (The Patent Reform Act of
the Federal Circuit hold the proposed improper. The changes adopted in this 2005) which, as introduced on June 8,
changes to be contrary to law, arguing final rule do not impede or block an 2005, contained a provision (section 8)
that applicants in the meantime are left applicant’s statutory right to a patent. that expressly authorized the Office to
in a state of limbo until the courts The Office is responsible for the limit certain continuing applications.
finally resolve the matter. One comment granting and issuing of patents and has The Office also notes that the House
argued that the Office’s stated rationale the authority and responsibility to Subcommittee on Courts, the Internet,
regarding the public notice function of establish regulations that govern the and Intellectual Property held a hearing
claims is not consistent with the law conduct of proceedings in the Office on September 15, 2005, on a proposed
and is more appropriately addressed by and facilitate and expedite the substitute that did not contain such a
Congress or the courts. Two comments processing of patent applications. See provision. No further action, however,
also suggested that rules limiting the 35 U.S.C. 2(a)(1) and (b)(2). The Office was taken on this legislation by the
number of continuing applications are has the responsibility to take 109th Congress. The Office does not
unconstitutional because they exceed appropriate action in the near term to consider this course of events as
the rule making authority of the Office, improve patent quality and pendency constituting any evidence of
thereby suggesting that the Office issues rather than wait for possible ‘‘congressional intent’’ because the
should have sought these changes via legislative solutions to these issues. The legislation at issue (The Patent Reform
legislation, not rule making. Office is implementing the rule changes Act of 2005) was not voted on by either
Response: The Office is not usurping via the rule making procedures set forth House of Congress, or even a Committee
the legislative role of Congress, but in 35 U.S.C. 2(b)(2)(A) and 5 U.S.C. 553 or Subcommittee of either House of
instead acting consistently with the by publishing the proposed rules in the Congress. Thus, this change between the
authority given to the Office by Federal Register and giving the public legislation as introduced and as
Congress. Pursuant to 35 U.S.C. the opportunity for comment. Thus, the amended is at most evidence of the
2(b)(2)(A), Congress has given the Office Office is acting under the broad rule intent of a drafting committee. In any
the authority to establish regulations making authority delegated to it by event, the 109th Congress did not enact
that ‘‘govern the conduct of proceedings Congress. Were the Office to sit idle and changes to the provisions of 35 U.S.C.
in the Office.’’ By the grant of authority not set forth procedures to govern a 2(b), 120, 121, 131, 132, or 365. Rather,
in 35 U.S.C. 2(b)(2)(A), ‘‘Congress [is continuing application practice that has the provisions at issue were enacted by
understood] to have ‘delegated plenary become problematic, the Office would earlier Congresses. The views of a
authority over PTO practice’ * * * to be ignoring the responsibility imposed subsequent Congress have little
the Office.’’ Stevens v. Tamai, 366 F.3d on it by Congress in 35 U.S.C. 2(b)(2)(A). relevance in determining the intent of
1325, 1333, 70 U.S.P.Q.2d 1765, 1771 Finally, inaction by Congress is not a an earlier Congress. See United States v.
(Fed. Cir. 2004) (quoting Gerritsen v. tacit endorsement of the current Southwestern Cable Co., 392 U.S. 157,
Shirai, 979 F.2d 1524, 1527 n.3, 24 continuing application practice (see 170 (1968) (‘‘The views of one Congress
U.S.P.Q.2d 1912, 1915 n.3 (Fed. Cir. United States v. Price, 361 U.S. 304, as to the construction of a statute
1992)). Therefore, the decision to make 310–11 (1960) (‘‘nonaction by Congress adopted many years before by another
these changes via rule making is not an affords the most dubious foundation for Congress have very little, if any,
unconstitutional exercise of the Office’s drawing positive inferences’’)), and the significance.’’). This is especially true
rule making authority under 35 U.S.C. Federal Circuit has cautioned against when the gap is as broad as the one
2(b)(2). reliance upon nonprecedential here, spanning more than half a century
Additionally, the provisions of § 1.78, decisions such as Ricoh Co., Ltd. v. (i.e., 1952–2005).
which concern continuing applications, Nashua (see Symbol I, 277 F.3d at 1368, Furthermore, this final rule does not
govern proceedings in the Office 61 U.S.P.Q.2d at 1520, declining to stifle inventors’ rights because it
because they set forth the process by consider the nonprecedential opinions provides inventors with ample
which an applicant can file a continuing Ricoh Co., Ltd. v. Nashua and Bott v. opportunity to present their claims and
application. See Changes to Practice for Four Star Corp., 848 F.2d 1245 (Fed. secure protection for their inventions. In
Continuing Applications, Requests for Cir. 1988)). fact, this final rule encourages inventors
Continued Examination Practice, and Comment 261: A few comments to fully disclose and fully claim their
Applications Containing Patentably suggested that patent reform legislation inventions promptly, on first filing.
Indistinct Claims, 71 FR at 50, 1302 Off. indicates that the Office does not have Applicants may file two continuation or
Gaz. Pat. Office at 1320 (noting that the authority to limit the number of continuation-in-part applications and a
request for continued examination in an The possibility that, without application, or the second continuing
application family, without any justification, a string of continuing application without any justification.
justification and may file additional applications could last as long as two Thus, under § 1.78 as adopted in this
continuing applications or requests for decades has created inefficiencies and final rule, an applicant may file two
continued examination on a showing opportunities for the delay of continuation applications without any
that the amendment, evidence or proceedings before the Office that, as a justification, even if a request for
argument could not have been earlier practical matter, can only be addressed continued examination was previously
presented. Finally, this final rule does by general rule making. Requiring that, filed in the initial application.
not affect the patentability requirement at a given stage in the continuing Comment 264: Several comments
of title 35, United States Code. application process, an applicant must suggested that the definition of a
Comment 262: A few comments make an affirmative showing of need is ‘‘divisional application,’’ as specified in
asserted that the doctrine of prosecution necessary for the Office to assure an proposed § 1.78, is inconsistent with 35
laches, originally set forth by the effective examination process. Relying U.S.C. 121 because, under proposed
Federal Circuit in Bogese II, and more only on a case-by-case approach to § 1.78, a divisional application is
recently endorsed by the Federal Circuit address the most egregious cases of limited to only one application, whereas
in Symbol II, does not extend the abuse would not be sufficient when 35 U.S.C. 121 permits applicants to file
Office’s authority to deny benefit claims continued examination filings (other a divisional application for each
to legitimate continuing applications. than divisional applications) have invention restricted out. Another
Response: The Office is not using the grown from less than twelve percent of comment suggested that 35 U.S.C. 121
doctrine of prosecution laches as a total filings in 1980 to over twenty-nine permits applications that are both a
sword to sever an applicant’s priority percent of total filings in fiscal year divisional application and a
claim. Nor are the changes adopted in 2006. The Federal Circuit specifically continuation-in-part application and
this final rule an attempt to codify indicated in Bogese II that the Office has any rule to the contrary is void.
Bogese II or to combat extreme cases of the inherent authority to set reasonable Response: This final rule defines a
prosecution laches. See Changes to deadlines and requirements for the ‘‘divisional application’’ as an
Practice for Continuing Applications, prosecution of patent applications. See application ‘‘that discloses and claims
Requests for Continued Examination Bogese II, 303 F.3d at 1368 n.6, 64 only an invention or inventions that
Practice, and Applications Containing U.S.P.Q.2d at 1452 n.6 (‘‘The PTO is the were disclosed and claimed in a prior-
Patentably Indistinct Claims, 71 FR at administrative agency that is filed application, but were subject to a
50, 1302 Off. Gaz. Pat. Office at 1320. ‘responsible for the granting and issuing requirement to comply with the
Applicants and practitioners have a of patents * * *’ 5 U.S.C. 2 (2000). Like requirement of unity of invention under
duty to refrain from submitting an other administrative agencies, the PTO PCT Rule 13 or a requirement for
application or other filing to cause may impose reasonable deadlines and restriction under 35 U.S.C. 121 in the
unnecessary delay or needless increase requirements on parties that appear prior-filed application and not elected
in the cost of prosecution before the before it. The PTO has inherent for examination and not examined in
Office. See § 10.18(b)(2). Applicants also authority to govern procedure before the any prior-filed application.’’ See
have a duty throughout prosecution of PTO, and that authority allows it to set § 1.78(a)(2). This definition is consistent
an application for patent to make a bona reasonable deadlines and requirements with 35 U.S.C. 121, which states that the
fide attempt to advance the application. for the prosecution of applications.’’). divisional application resulting from a
See Changes to Practice for Continuing Thus, consistent with the Office’s restriction requirement is ‘‘entitled to
Applications, Requests for Continued inherent authority to set reasonable the benefit of the filing date of the
Examination Practice, and Applications deadlines and requirements for the original application,’’ where the
Containing Patentably Indistinct Claims, prosecution of applications, and to ‘‘original application’’ within the
71 FR at 49, 1302 Off. Gaz. Pat. Office improve the effectiveness of the patent context of 35 U.S.C. 121 is the
at 1319. In Symbol I, Symbol II, and examination process, the Office is application from which the divisional
Bogese II, the Federal Circuit recognized revising the rules of practice to require application has been restricted.
that an applicant has a duty of good that an applicant make an affirmative Additionally, §§ 1.78(a)(2) and (d)(1)(ii)
faith in advancing the prosecution of an justification for a third or subsequent permit there to be as many divisional
application. The Federal Circuit continuing application or second or applications as there are inventions
likewise held that an applicant does not subsequent request for continued restricted out of the prior-filed
have the right to file an endless stream examination. application. Therefore, the changes
of continuing applications in order to Comment 263: Two comments argued adopted in this final rule allow an
prolong prosecution for the purpose of that the proposed rules prevent an applicant to file a plurality of divisional
gaming the system. That is, applicants applicant from filing even a single applications resulting from a restriction
should not rely on an unlimited number continuation application of an requirement in the prior-filed
of continuing applications to either application in which a request for application so that the applicant may
correct deficiencies in the claims and continued examination was previously obtain examination of the claims that
disclosure, or to delay the conclusion of filed, thereby eliminating access to the were withdrawn from consideration in
examination in a calculated manner. By benefits conferred by 35 U.S.C. 120. the prior-filed application due to the
requiring applicants to show why the Response: The Office has modified requirement for restriction. Section
amendment, argument, or evidence the proposed changes such that an 1.78(d)(1)(ii) as adopted in this final
sought to be entered in a third or applicant is permitted under this final rule also does not require that any
subsequent continuing application or rule to file a first and second divisional application be filed during
second or subsequent request for continuation application or the pendency of a single prior-filed
continued examination could not have continuation-in-part application application, but permits a divisional
been presented earlier, the Office is without any justification, and is also application to be filed as long as it
ensuring that applicants are not permitted to file a request for continued meets the copendency requirement of 35
unnecessarily prolonging prosecution of examination in any one of the initial U.S.C. 120. Therefore, the definition of
the application before the Office. application, the first continuing divisional application set forth in
§ 1.78(a)(2) is consistent with 35 U.S.C. intended for each claim to be examined merits of the application. This final rule
121. on the merits when it enacted 35 U.S.C. simply provides that an applicant who
This final rule also permits an 112, ¶ 2, citing In re Weber, 580 F.2d puts a disproportionate burden on
applicant to file an application that is in 455, 198 U.S.P.Q. 328 (C.C.P.A. 1978), examination by presenting more than
substance both a divisional application and one comment suggested that five independent claims or twenty-five
and a continuation-in-part application. limiting the number of claims to be total claims must provide additional
Specifically, § 1.78(d)(1)(i) as adopted in examined is contrary to 35 U.S.C. 131 information to the Office to facilitate
this final rule permits an applicant to because the invention is defined by all effective examination of the application.
file an application directed both to an of the claims. A few comments The Office, in turn, will ensure that
invention that was disclosed and suggested that the Office has a duty to every claim submitted in an application
claimed, but not elected for examine all of the claims in a patent is examined prior to the issuance of a
examination, in a prior-filed application when the applicant has paid patent. Neither 35 U.S.C. 112 nor 131
application, and an invention or subject the search, examination, and claim fees provides that an applicant has an
matter that was not described or because Congress has authorized unfettered right to submit an unlimited
claimed in the prior-filed application. dependent claims and specified charges number of claims. In contrast to
Such an application would be subject to for those claims, and the Office is Wakefield, where the Office declined to
the conditions applicable to other required to examine all claims, not just examine certain claims due to undue
applications that disclose subject matter the designated ones. A number of multiplicity, the changes adopted in this
that was not disclosed in the prior-filed comments argued that the Office lacks final rule do not limit the number of
application (i.e., the conditions the statutory authority under 35 U.S.C. claims that will be examined in an
applicable to continuation-in-part 102, 103, 131, and 132 to presume that application because an applicant is
applications). This is, because such claims are patentably indistinct by always free to file as many claims as
application is not limited to inventions requiring the applicant to designate necessary to adequately protect the
that were subject to a requirement for representative claims from among invention.
restriction by the Office in the prior- copending, related applications. Finally, While this final rule does not
filed application, but instead includes one comment argued that the patent implement a ‘‘representative claims’’
subject matter not disclosed in the prior- statutes do not permit the Director to examination approach, that proposal
filed application and thus was not examine part of an application or less approach was simply a mechanism to
subject to any requirement for than the whole invention, and that the focus the examination process and in no
restriction by the Office in any prior- Director does not have statutory way impacted the merits of the
filed application, it is a continuation-in- authority under 35 U.S.C. 2(b)(2) or 112, examination. Even under a
part application rather than a divisional ¶ 2, to cause an application to be ‘‘representative claims’’ approach, the
application. The provisions of examined only if it does not result in Office would examine and determine
§ 1.78(d)(1)(ii) apply to divisional too much work for the examiner, and the patentability for every claim in an
applications that disclose and claim then if it does, to shift the burden to the application before issuing a patent on
only an invention or inventions that applicant to do the search and the the application. Thus, a ‘‘representative
were disclosed and claimed in a prior- examination. claims’’ approach would have altered
filed application, but were subject to a Response: The Office notes the the examination process (i.e.,
requirement to comply with the concerns expressed by the public determining when examination of
requirement of unity of invention under comment concerning the proposed certain claims takes place), but would
PCT Rule 13 or a requirement for ‘‘representative claims’’ examination not have changed the merits
restriction under 35 U.S.C. 121 in the approach. The Office also recognizes requirements of examination (i.e., the
prior-filed application and not elected numerous comments suggested a claim statutory standards of patentability).
for examination and not examined in threshold in place of representative Comment 266: A number of
any prior-filed application. claims. The Office took these comments comments suggested that the rationale
Comment 265: A number of into consideration and is not presented in the Claims Proposed Rule
comments argued that requiring an implementing a ‘‘representative claims’’ is contrary to 35 U.S.C. 2(b), 102, 131
applicant to designate a limited number examination approach. Instead, this and 132, in that the Office is responsible
of (ten) representative claims for final rule provides that if the number of for granting and issuing patents. These
examination is contrary to statute, independent claims is greater than five comments stated that the examiner
specifically, 35 U.S.C. 131 and 112, as or the number of total claims is greater bears the initial burden of presenting a
well as contrary to In re Wakefield, 422 than twenty-five (a strategy based upon prima facie case of unpatentability, that
F.2d 897, 164 U.S.P.Q. 636 (C.C.P.A. whether an application contains more the search is not the duty of the
1970), because the rules limit an than a given number of independent applicant but rather is the Office’s
applicant’s ability to claim the full and total claims), the applicant must responsibility under 35 U.S.C. 131, and
scope of his or her invention and that provide additional information about the rules are inconsistent with the new
it is the applicant, not the Office, who the claims to the Office in an fee structure which contemplates filing
should determine the proper number of examination support document to of additional claims with higher fees. A
claims that particularly point out and enable the Office to efficiently and few comments suggested that the
distinctly claim the subject matter that effectively examine the application. examination support document
applicants regard as their invention. Thus, the changes adopted in this requirement improperly shifts the
Two comments argued that the courts final rule do not limit the number of burden of assessing patentability to an
have not recognized any statutory claims that will be examined in an applicant when that burden resides with
authority for rejecting claims as being application because an applicant is the Office in the first instance under 35
‘‘unnecessary,’’ citing Wakefield where always free to file as many claims as U.S.C. 102. A few comments asserted
the court held that the forty claims necessary to adequately protect the that requiring an applicant to submit an
presented in the application at issue invention provided that applicant files examination support document
were not unduly multiplied. One an examination support document constitutes an abdication of an
comment also argued that Congress before the first Office action on the inherently governmental function,
moves the United States one step closer that the patentably indistinct multiple related applications, but
to a registration system, and places an presumption is contrary to 35 U.S.C. should not be confused with a
affirmative duty on an applicant to 101, which allows a ‘‘patent on an patentability determination on the
perform searches, ultimately exposing invention.’’ One comment objected to merits. Such a procedural requirement
the applicant to a greater risk of an the rebuttable presumption as being is not contrary to statute or case law, but
inequitable conduct challenge. contrary to the patent statute that states is fully within the Office’s authority to
Response: The changes adopted in in part that ‘‘a person is entitled to a regulate the procedure of examination.
this final rule do not mandate the patent unless * * *. ’’ The comment Comment 269: One comment
submission of an examination support suggests that these words in the patent suggested that 35 U.S.C. 116 provides
document. That is, an examination statute evidence that the burden is on for the filing of continuation
support document is only required if an the Office to establish a prima facie case applications and the Office does not
applicant chooses to present more than of unpatentability. A number of have the authority to make changes.
five independent claims or more than comments stated that as part of its Response: 35 U.S.C. 116 provides for
twenty-five total claims for examination statutory duty to determine joint inventorship (35 U.S.C. 116, ¶ 1),
in an application. If an applicant will patentability, the Office has the burden application for patent by the remaining
not present more than five independent to determine patentable distinctness, inventors in the absence of a joint
claims and no more than twenty-five and even under the conditions of inventor (35 U.S.C. 116, ¶ 2), and
total claims for examination in any § 1.78(f)(2), it is improper to shift that correction of inventorship in an
particular application, an examination burden to applicants. Further, some of application for patent (35 U.S.C. 116,
support document is not required. the comments argued that the ¶ 3). 35 U.S.C. 116 does not pertain to
The requirement for submission of an patentably indistinct presumption is continuing applications.
examination support document is not an contrary to case law because the Federal Comment 270: One comment
abdication of the examination function, Circuit has repeatedly held that the suggested that the changes to § 1.114
or a shifting of the burden to applicant burden of showing that the claims violate 35 U.S.C. 133 because the Office
to make a prima facie case of recited in copending, related would be assuming authority to hold an
entitlement to a patent. The applications are patentably indistinct application ‘‘abandoned’’ even when a
examination support document simply rests with the Office, citing In re Kaplan, bona fide reply was timely filed.
requires the applicant to provide 789 F.2d 1574, 229 U.S.P.Q. 678 (Fed. Response: 35 U.S.C. 133 provides
additional information to the Office so Cir. 1986); In re Longi, 759 F.2d 887, 225 that: ‘‘[u]pon failure of the applicant to
that the Office may more effectively U.S.P.Q. 645 (Fed. Cir. 1985); In re prosecute the application within six
conduct a substantive examination of Epstein, 32 F.3d 1559, 31 U.S.P.Q.2d months after any action therein, of
the application. The Office will examine 1817 (Fed. Cir. 1994); In re Oetiker, 977 which notice has been given or mailed
and determine patentability for every F.2d 1443, 24 U.S.P.Q.2d 1443 (Fed. Cir. to the applicant, or within such shorter
claim in an application before issuing a 1992); and In re Piasecki, 745 F.2d 1468, time, not less than thirty days, as fixed
patent. 223 U.S.P.Q. 785 (Fed. Cir. 1984). by the Director in such action, the
Comment 267: A few comments stated Response: The presumption of application shall be regarded as
that the examination support document patentably indistinct claims appearing abandoned by the parties thereto, unless
requirement transfers the costs of in multiple applications as set forth in it be shown to the satisfaction of the
examination to applicants when § 1.78(f)(2) of this final rule is not Director that such delay was
applicants already pay filing fees. contrary to the cited statutes or case unavoidable.’’ An applicant’s reply in
Response: The changes to § 1.75(b) do law. Even if the applicant shows that prosecuting an application under a final
not impose any additional Office fees on the claims in question are patentably Office action is limited to either
the applicant. The changes to § 1.75(b) distinct from each other, it does not appealing in the case of rejection of any
may increase costs for an applicant who mean that the claims are also patentable claim (§ 41.31 of this title), or amending
presents more than five independent over the prior art. That is, the rebuttable the claims as specified in § 1.114 or
claims or twenty-five total claims in an presumption is not a merits 1.116. See § 1.113(a). The admission of,
application. The Office, however, determination of patentability. It is or refusal to admit, any amendment
considers it appropriate for applicants simply a procedural tool requiring the after final rejection (§ 1.116) will not
who place a disproportionate burden on applicant to help focus and consolidate operate to save the application from
examination by presenting more than the examination process. abandonment. See § 1.135(b). Therefore,
five independent claims or twenty-five When the Office is faced with a reply to a final Office action other than
total claims to bear these additional multiple applications containing an appeal, an amendment after final
costs to facilitate effective examination overlapping subject matter, it is in the (§ 1.116) that places the application in
of the application. In any event, the best interest of the applicant, the Office, condition for allowance, or a request for
Office’s actual cost of examining an and the public to ensure that patentably continued examination in compliance
application for patent far exceeds the indistinct claims are identified early in with § 1.114 (including the requirement
‘‘filing fees’’ (i.e., the filing, search, the examination process. The applicant that any second or subsequent request
examination, excess claims, and is responsible for drafting the for continued examination be
application size fees) charged to application, including the claims, and is accompanied by a grantable petition
applicant. See United States Patent and in the best position to identify indistinct under § 1.114(g)) is not a bona fide reply
Trademark Office Performance and claims spanning across multiple to the final Office action.
Accountability Report Fiscal Year 2005 applications so that they can be Comment 271: A few comments
at 23 (2005) (Patent Efficiency Table). consolidated in a single application, or suggested that the Office has a duty to
Comment 268: Several comments so that the Office will at least be alerted examine all of the claims in a patent
objected to the rebuttable presumption to evaluate them for double patenting. application when the applicant has paid
in § 1.78(f)(2) as being contrary to the Further, requiring the applicant to ferret the search, examination, and claim fees.
judicial precedent in other areas of out which claims are indistinct from The comments also argued that because
patent law such as obviousness and each other is procedural in nature and Congress has authorized dependent
enablement. One comment suggested assists the Office with processing claims and specified charges for those
claims, the Office is required to examine 2005), and Arnold P’ship v. Dudas, 362 of right, and assess a modest fee for the
all claims, not just the designated ones. F.3d 1338, 70 U.S.P.Q.2d 1311 (Fed. Cir. added examination burden. Most of
One comment also argued that the 2004). these comments are in the context of a
recently revised fee structure was put in graduated credit system for continuation
J. Changes to Internal Practice
place based on an allocation of filings, with more credit being given
resources for search workload on the Comment 273: A number of during the first application and fewer
examiner and therefore the Office is comments expressed support for the ‘‘counts’’ or less time given in
obligated to perform the search and elimination of the first Office action subsequent continuations. Several
cannot shift the burden to the applicant. final practice, and one comment comments proposed that applicants
Response: The Office recognizes the encouraged the Office to adopt a should be permitted to respond to any
concern expressed in the public practice of no first action final rejection new ground of rejection made in the
comments that the ‘‘representative in any continuing application where the final Office action without having to file
claims’’ examination approach could be factual record has changed. A number of a continuation application. Several
perceived as allowing claims to be comments, however, stated that a first comments suggested that the examiner
issued that had not been fully action final may be appropriate where should not make an Office action final
examined. The Office is not adopting no effort has been made to advance whenever new art is applied, and one
the ‘‘representative claims’’ examination prosecution, e.g., by adding to the comment suggested an examiner must
approach in this final rule. This final factual record with additional evidence explain why the new art could not have
rule instead provides that an applicant or amendments to the claims. One been located during the first search.
who puts a disproportionate burden on comment supported developing rules Response: To permit entry of
examination by presenting more than whereby an applicant’s failure to amendments after final as a matter of
five independent claims or twenty-five prosecute could result in the close of right would unduly delay prosecution.
total claims must provide an prosecution unless adequate and An applicant may file an amendment to
examination support document to the sustained progress is being made in the place the application in condition for
Office before the first Office action on application. allowance or in better form for
the merits to facilitate effective Response: This proposed change has consideration on appeal under § 1.116.
examination of the application. An not been adopted. As discussed Furthermore, a new ground of rejection
applicant who presents five or fewer previously, this final rule, however, is only permitted in a final Office action
independent claims and twenty-five or provides that an applicant may file two under the limited circumstances. As
fewer total claims need not provide an continuing applications plus a request discussed previously, in this final rule,
examination support document or other for continued examination in any one of the Office is revising second action final
additional information to the Office. In the initial application or two continuing practice to provide that a second or any
either situation, the Office will ensure applications (rather than only one subsequent Office action on the merits
that every claim submitted in an continuing application or request for may be made final, except when the
application is examined prior to the continued examination as proposed) Office action contains a new ground of
issuance of a patent. without any showing. Therefore, the rejection that is not: (1) Necessitated by
Further, neither the excess claim fees Office is retaining its first action final applicant’s amendment of the claims,
nor the search fee is directly rejection practice. including amendment of a claim to
proportional to actual agency costs. The Comment 274: Several comments eliminate unpatentable alternatives; (2)
fee provisions are not a restriction on recommended that the Office develop necessitated by applicant’s providing a
the agency’s ability to promulgate procedures whereby an Office action showing that a claim element that does
reasonable regulations governing the could not be made final until the not use the phrase ‘‘means for’’ or ‘‘step
application process. examiner was applying the exact same for’’ is written as a function to be
Comment 272: A few comments stated rejection as in the previous Office performed and does not otherwise
that the rules are arbitrary, capricious, action, and/or to encourage the Office to preclude application of 35 U.S.C. 112,
and represent an overly aggressive issue non-final second Office actions. ¶ 6; (3) based on information submitted
interpretation of statutes, are beyond the Several comments suggested reforming in an information disclosure statement
power of the Office permitted under 35 examination procedures so that the filed during the period set forth in
U.S.C. 2(b)(2), expose the Office to legal examiner does not issue a final rejection § 1.97(c) with the fee set forth in
action under 5 U.S.C. 706(2)(c), and may as long as prosecution is advancing. § 1.17(p); (4) based upon double
require the Office to reimburse attorney Response: The practice suggested by patenting (statutory or obviousness-type
fees under the Equal Access to Justice the comments would unduly prolong double patenting); or (5) necessitated by
Act. prosecution, which is counter to the applicant’s identification of the claim or
Response: The changes adopted in Office’s goal for reducing pendency. claims in a continuation-in-part
this final rule are not arbitrary, Thus, the Office and the applicants need application for which the subject matter
capricious, an overly aggressive to be efficient to reduce the backlog of is disclosed in the manner provided by
interpretation of the patent statute, or applications and most importantly, to 35 U.S.C. 112, ¶ 1, in the prior-filed
beyond the power of the Office rule meet the public notice function of application. Since the applicant is often
making authority under 35 U.S.C. patent claims as quickly as possible. adding limitations that raise new issues
2(b)(2) for the reasons previously Further, as one comment recognized, a that would require further consideration
discussed in detail. Concisely put, the practice under which an Office action and/or search, it has long been the
Office considers the changes being could not be made final until the Office practice to make the action final
adopted in this final rule to be an examiner was applying the exact same at this point. Allowing an expanded
appropriate exercise of its rulemaking rejection would result in an applicant practice in this area would undermine
authority under 35 U.S.C. 2(b)(2). See, being able to avoid a final Office action the goal of reducing patent pendency.
e.g., Lacavera v. Dudas, 441 F.3d 1380, by continually amending the claims. Comment 276: A number of
77 U.S.P.Q.2d 1955 (Fed. Cir. 2006), Comment 275: A number of comments suggested providing
Star Fruits S.N.C. v. United States, 393 comments proposed that the Office examiners with additional time to
F.3d 1277, 73 U.S.P.Q.2d 1409 (Fed. Cir. permit amendments after final as matter consider replies after final rejection and
to provide a new full evaluation of the hire and retain patent examiners. One will increase from 22.6 months in fiscal
content of those replies. comment suggested that ‘‘[h]iring year 2006 to 28.9 months in fiscal year
Response: No changes in after final should be the centerpiece of the Office’s 2012, and that average total pendency
practice are planned at this time. Under strategy.’’ A number of comments stated will increase from 31.1 months in fiscal
current practice, examiners consider that the Office has not provided year 2006 to 38.6 months in fiscal year
any requests for reconsideration sufficient evidence to show why the 2012. See id.
submitted after final rejection in Office could not solve the backlog Comment 279: A number of
accordance with § 1.116. problem by hiring more examiners. One comments stated that the current
Comment 277: A number of comment argued that the Office should examiners’ production system in the
comments suggested that the Office have sufficient funding to pay for Office encourages the filing of
require a patentability review additional resources (e.g., more continuing applications and requests for
conference with others, similar to the examiners) needed to examine the continued examination. In addition,
pre-appeal conference proceeding, prior backlog of applications in view of the several comments stated that the
to an Office action being made final, in recent increase in patent fees. One production system also encourages more
order to address the problem of comment stated that the Office has not restrictions and unwillingness to
improper final Office actions and to supported its assertion that it cannot consider any after-final amendment.
expedite indication of allowable subject hire enough examiners to reduce The comments suggested several
matter. One comment noted that the pendency. Another comment stated that alternative accounting schemes to
statistics show that less than half of the Office should seriously consider encourage examiners to examine more
applications that had a pre-appeal hiring retired or former examiners or non-continuing applications and
conference are going forward to appeal patent practitioners to be trainers or to provide more thorough first Office
and indicate that many improper finals assist examiners. In particular, one actions, including giving less credit for
are being made. One comment stated comment stated retired examiners work done in continuation applications,
that a supervisor should review all first should be hired to work on specific big divisional applications and requests for
Office actions in a second request for applications to reduce the burden on continued examination, giving
continued examination to determine if examiners. Another comment stated the examiners more credit for first Office
prosecution is proper. Office should hire ‘‘generalists’’ instead actions as opposed to disposals, giving
Response: The Office recognizes that of ‘‘ultra specialized advanced degree examiners credit for claims disposed as
it is important to make sure the final scientists and engineers’’ to obtain more opposed to applications disposed, or
Office action is proper. The pre-appeal flexibility in the workforce. giving examiners credit based on
brief conference program is still an Response: Hiring additional numerous application factors such as
ongoing pilot program. The results of examiners remains an important specification length, technology
that program will help to determine component of the Office’s overall plan complexity, number and complexity of
whether the Office replaces it with, or to reduce pendency of patent the claims, and pertinence of prior art
adds, a ‘‘pre-final conference’’ as applications. The Office is committed to submitted. One comment suggested only
suggested. Further, the pre-appeal brief the hiring of as many examiners as having team examination and
conference program is designed for resources permit. The ability to hire production goals. One comment
situations in which the applicant qualified new examiners is affected by suggested the Office should use a
believes that the rejections of record are many components, such as budget, the performance system, such as the system
clearly not proper (and is not designed economy, the availability of scientists recently established by the Department
for ‘‘close cases’’). See New Pre-Appeal and engineers, and the ability to absorb of Defense. One comment suggested that
Brief Conference Program, 1296 Off. and train new employees. Furthermore, examiners should not have any time
Gaz. Pat. Office at 67. Thus, data it will take many years to develop an constraints. Another comment stated the
collected during pre-appeal brief experienced patent examining corps of hours per disposal should be decreased
conferences (e.g., with respect to re- sufficient size to address the growing to improve production. Several
opening rates) cannot validly be backlog of unexamined patent comments argued that timesaving for
extended to all applications. applications. The Office recognizes that examiners needs to be tied with an
In addition, the Office has an ongoing hiring alone will not reduce the backlog agreement with the Patent Examining
‘‘in process review’’ of applications to of pending applications in the near Corps to increase productivity and
identify problems and trends. Each future. As a result, the Office is actively decrease pendency due to the amount of
Technology Center develops ongoing seeking ways for retaining more time saved in light of the proposed
action plans and training each year to employees, such as retention bonuses. changes to the examination of claims.
address the problems/trends found via The Office continues to become more One comment argued the rule changes
the ‘‘in process reviews’’ and the pre- efficient by implementing many will likely result in less time for the
appeal brief conferences. Additionally, initiatives, such as the current examiners and it is unclear how this
the Office will reinforce, during the regulatory changes, to reduce pendency. will result in more thorough and
training on this final rule, issues such as The Office plans to hire 1,200 reliable examination. The comments
proper final rejection practice, the examiners each year for the next five strongly suggested that any changes to
importance of making proper final fiscal years. See United States Patent the examiners’ production system
rejections, and the importance of and Trademark Office Fiscal Year 2008 should be transparent to the public to
indicating allowable subject matter at President’s Budget at 20–21 (2007). This install public confidence in such
the earliest possible time. Furthermore, will result in the number of patent changes.
if an applicant believes a rejection was examiners increasing from 4,779 at the Response: The Office expects to gain
improperly made final, applicant may end of fiscal year 2006 to 7,118 at the a more focused quality examination as
seek review by filing a petition under end of fiscal year 2012 (accounting for a result of these rule changes. It is
§ 1.181. attrition). See id. Even with this increase expected that these rules will make the
Comment 278: A number of in the size of the Patent Examining exchange between the examiner and
comments stated that the Office should Corps, the Office anticipates that applicants more efficient and effective.
continue and expand ongoing efforts to average pendency to first Office action Issued patents will be examined more
thoroughly, making them easier to necessary to increase examiner salaries, available to work on first Office actions
evaluate, enforce and litigate. changes to Title 5 of the United States on the merits.
Furthermore, the patents will issue Code should be requested by the Office. Response: Examiners who have been
sooner, giving the public a clearer One comment stated that the salary for certified as capable of working
understanding of what is patented. In starting examiners should also be independently by their supervisors are
any event, the Office is in the process doubled. One comment stated that the currently authorized to work overtime.
of reassessing patent examiner Office should seek authority to increase The overtime pay rate is set by statute.
production goals, appraisal plans, and salaries through either existing OPM See 5 U.S.C. 5542. The Office has
award systems. Absent significant processes or through restructuring to a recently begun distributing laptop
changes to the patent examination quasi-government corporation. One computers to examiners to further
process, the Office does not consider it comment suggested charging fees for encourage overtime.
reasonable to expect that changes to responding to an Office action and for Comment 283: A number of
patent examiner production goals, interviews, and using this money to hire comments encouraged the Office to
appraisal plans, and award systems more examiners and pay for retention consider establishing satellite offices in
alone will be sufficient to address the initiatives. Another comment suggested different areas in the United States to
growing backlog of unexamined patent establishing a salary increase when an assist in recruiting and retaining of
applications while maintaining a examiner passes a test at a number of examiners. The comments further
sufficient level of quality. pay grades. One comment stated that a explained that satellite offices could tap
Comment 280: Several comments bonus system should be established. into a greater pool of potential new
stated that examiners should be given Another comment has suggested examiners, as there would be multiple
more production time for certain increased salary levels for art units with working locations. In addition, the
situations, such as for applications with high backlogs. Several comments stated comments stated that satellite offices
more than twenty claims, for that increased filing fees should go could specialize in certain technologies
consideration of over fifteen to twenty towards increased salary for examiners. that are prevalent in the area of the
cited references and for responding to One comment explained that the Office satellite office. Another comment
after-final amendments. One comment could give examiners better working pointed out that a satellite office would
stated that primary examiners should be conditions by placing less stress on the facilitate more personal interviews,
given more time to review a junior more experienced examiners. Another which would expedite prosecution. The
examiner’s work. comment suggested the Office should comments also stated that salary
Response: Changes to patent examiner explore more flexible work schedules, structures could be adjusted depending
production goals are beyond the scope including part-time arrangements. on the cost of living within the area
of the proposed changes to the rules of surrounding the satellite office.
Response: The Office already provides Response: The Office is considering
practice. Therefore, whether examiners
many first rate benefits to its employees. establishing satellite offices as reflected
should be given more production time
The Office is at the forefront in in the Office’s 2007–2012 Strategic Plan.
for certain situations is not discussed in
this final rule. An examination support government for teleworking Comment 284: A number of
document in compliance with § 1.265 opportunities for the staff. The Office comments stated that the Office should
will assist the examiner in the has also adopted a variety of creative increase training requirements for
examination of an application that work schedules such as: Maxi-flex, examiners in order to improve patent
contains more than five independent compressed and alternate work quality and retain more examiners. One
claims or more than twenty-five total schedules, part-time and flex-time for comment suggested using any increase
claims, resulting in a more effective and all employees. Additionally, the Office in patent fees to provide training.
focused examination. For example, offers paid overtime, compensatory time Several comments offered assistance in
citing the most relevant references and and credit hours programs. The Office providing technical and legal training to
identifying all of the limitations of each has transitioned into a paperless the examiners. One comment suggested
of the claims that are disclosed by the environment and deployed state-of-the that examiners should receive more
references will help the examiner to art technology to its employees. The training on making proper rejections
consider the most relevant prior art Office has relocated to a new campus, under 35 U.S.C. 103, and also suggested
more thoroughly. The Office already and provides amenities such as a first testing examiners periodically. Another
provides time for training junior class child-care facility, a state-of-the-art comment stated that examiners’ prior art
examiners and reviewing their work. fitness center and a cafeteria. searching is poor, and that the Office is
Furthermore, a sampling of ‘‘in process The Office already provides a robust not making efforts to stem poor
reviews’’ for each Technology Center bonus system for examiners that enables rejections, which lead to rework. One
helps identify training needs in a one to earn up to ten percent of one’s comment suggested that the Office
focused manner. The Office of Patent salary per year in bonus compensation. should train examiners using self-
Training is thoroughly preparing each Examiners are already on a special pay training programs utilizing videos.
new examiner in proper practice and scale, with the most recent increase of Another comment stated that training
procedure with access to a dedicated seven percent for all patent should be outsourced. Several other
trainer for the first eight months; after professionals, granted in December comments suggested training potential
that, the examiner is placed in a 2006. In addition, an examiner receives new examiners by creating a patent
traditional setting with proper regular salary increases upon examination curriculum for universities.
supervision and review of his or her promotions to increasing levels of Response: The Office has redesigned
work. responsibilities. the training program of new examiners
Comment 281: A number of Comment 282: Several comments and increased technical and legal
comments suggested that the Office stated the Office should authorize training for other examiners and patent
could retain more examiners by overtime to work on the backlogs. One professionals. Currently, the first classes
increasing compensation and offering comment specifically suggested that of new hires have completed their
better working conditions. A number of overtime pay should be 125 percent of training in the new Patent Training
comments also suggested that if it is the current pay rate, and should only be Academy program, wherein examiners
go through eight months of intensive clarify the examiner’s position, as factual issues instead of just legal issues
training prior to being assigned to an art necessary. The Office also has writing to better improve Office action quality.
unit. Mirroring a collegiate classes available to employees. Response: The Office already has
environment, examiners are trained in a Comment 287: Several comments focused ‘‘second pair of eyes’’ reviews
variety of disciplines, including stated that examiners should be only for those examiners and/or
technology skills, legal skills, and encouraged to allow an application, or technology areas where it has been
procedural requirements. to point out allowable subject matter, in determined necessary. Additionally, the
For non-first year examiners, the the first Office action, if appropriate. Office has an ongoing ‘‘in process
Office has expanded training to include Several comments also suggested review’’ of applications to identify
patent law and evidence. Each requiring examiners to propose problems and trends. Each Technology
employee must attend a specified amendments when prosecution reaches Center develops ongoing action plans
number of training hours in a variety of a certain point, such as the filing of a and training each year to address the
pertinent legal and technical subjects. second request for continued problems/trends found via the ‘‘in
Additionally, the Office also offers a examination. process reviews’’ and other sources,
Law School Tuition Assistance Program Response: The Office has previously such as the pre-appeal brief conferences.
(LSTAP) to qualified employees as an adopted, in part, these comments. It is Supervisors, or their designated primary
extension of the Office’s internal current Office policy to encourage examiners, currently review all the work
training program. Reimbursements for examiners to suggest allowable subject of examiners who do not have signatory
university technical training courses matter as early as possible in the authority. All of these reviews do
related to the technology being prosecution in order to achieve the encompass both factual and legal issues.
examined are also available for Comment 289: A number of
Office’s goal of compact prosecution. It
employees. Creating a partnership comments stated that examiners should
has long been a standard in the
between the Office and interested be encouraged or required to conduct
examiner’s performance appraisal plan,
universities to offer an undergraduate more interviews throughout the
and it is indeed an indicia of
course in patent law and examination prosecution, including preexamination
outstanding performance, to indicate
practice to highlight career interviews and after-final interviews.
allowable subject matter at the earliest
opportunities in the intellectual Several comments suggested that all
time possible. (See also, e.g., MPEP interviews should include the
property field is also being investigated.
Comment 285: A number of § 707.07(j)(III) EARLY ALLOWANCE OF supervisor of the examiner or a person
comments stated that the Office did not CLAIMS, ‘‘Where the examiner is with signatory authority. Several other
address improvements in the internal satisfied that the prior art has been fully comments suggested giving examiners a
examination process. One comment developed and some of the claims are count, or credit, for an interview, and
alleged that the Office did not consider clearly allowable, the allowance of such charging a fee for interviews. Another
any changes to address examiners’ claims should not be delayed’’; MPEP comment stated that examiners should
errors that extend the prosecution. § 2106 (II), ‘‘Whenever practicable, be trained to give more productive
Several comments suggested that the Office personnel should indicate how interviews.
Office should improve the examination rejections may be overcome and how Response: Interview practice is set
process before implementing the rule problems may be resolved * * * .’’; and forth in § 1.133 and MPEP §§ 713
changes. MPEP § 2164.04, ‘‘In other words, the through 713.10. Normally, one
Response: The Office is implementing examiner should always look for interview after final rejection is
many initiatives including enabled, allowable subject matter and permitted. See MPEP § 713.09. The
improvements in the internal communicate to applicant what that Office also provides examiners extra
examination process as well as the rule subject matter is at the earliest point time to conduct an interview. In June
changes in this final rule. To realize the possible in the prosecution of the 2006, this practice was expanded to
effectiveness of these initiatives in the application.’’). allow extra time for telephone
near term, the Office is implementing Comment 288: There were a number interviews initiated by applicants or
many of them simultaneously. The of comments pertaining to the quality their representatives; it had previously
Office seeks ways to improve internal review of examiners’ work product. A only been available for personal (face-to-
examination processes by providing number of comments stated that the face) interviews. The Office conducted a
training created as a result of internal Office should limit its ‘‘second-pair-of- pilot program permitting an interview
reviews that identify areas where eyes’’ review to the work of examiners before the first Office action in
challenges exist. that have been identified as needing applications that were assigned to
Comment 286: Several comments more review in their annual certain art units in Technology Center
encouraged the Office to take additional performance appraisal. The comment 3600. See Notice of Pilot Program to
measures to improve the quality and further explained that the Office should Permit Pre-First Office Action Interview
clarity of Office actions, in particular focus more intensive review on an for Applications Assigned to Art Units
first Office actions. One comment stated examiner’s work if it is the principal 3624 and 3628 and Request for
that examiners should use ‘‘plain cause for the failure to close prosecution Comments on Pilot Programs, 1281 Off.
English’’ in explaining the rationale on an invention (e.g., by making poor Gaz. Pat. Office 148 (Apr. 27, 2004).
behind rejections. rejections). Another comment suggested Section 1.133(a)(2) was amended in
Response: The Office recognizes that eliminating the review of allowed November of 2005 to permit an
the quality of Office actions is of great applications and having the ‘‘review’’ interview before the first Office action
importance. There are several quality examiners work on the backlog. One in any application if the examiner
initiatives in place to insure that quality comment stated that supervisors should determines that such an interview
continues to improve. The new Patent review all Office actions for examiners would advance prosecution of the
Training Academy emphasizes the that have fewer than three years application. See Provisions for Claiming
importance of high quality Office experience unless they have passed a the Benefit of a Provisional Application
actions. Current interview practice proficiency examination. Another With a Non-English Specification and
encourages the use of interviews to comment stated the review should spot Other Miscellaneous Matters, 70 FR at
56121, 56128, 1299 Off. Gaz. Pat. Office program, an applicant whose claims are procedure, and the goal is to complete
at 144, 150. As discussed previously, if determined to be patentable by the examination within twelve months of
the examiner, after considering the Japan Patent Office may request that the the filing date of the application under
application and any examination corresponding application filed in the this program. See Changes to Practice
support document, still has questions Office be advanced out of turn for for Petitions in Patent Applications To
concerning the invention or how the examination provided certain Make Special and for Accelerated
claims define over the prior art or are conditions are met. The Patent Examination, 71 FR at 36323–27, 1308
patentable, the examiner may request an Prosecution Highway pilot program Off. Gaz. Pat. Office 106–09. Any
interview before the first Office action. allows the Office to exploit the search applicants, including independent
Comment 290: One comment stated and examination results of the Japan inventors, may participate in the revised
that the Office should encourage the Patent Office and applicants to obtain accelerated examination program which
submission of more useful information corresponding patents faster and more provides an expedited reply procedure.
disclosure statements, which contain efficiently. Additionally, whenever the As discussed previously, under the
statements of materiality and have Office is designated as the International Patent Prosecution Highway pilot
provisions to discourage ‘‘dumping’’ of Searching Authority, both the program, an applicant whose claims are
references. Such an information international application and the determined to be patentable by the
disclosure statement may be filed at a application filed under 35 U.S.C. 111(a) Japan Patent Office may request that the
reduced fee amount. Another comment are assigned to the same examiner, if corresponding application filed in the
questioned whether the Office has possible. Office be advanced out of turn for
considered a rule that states that duty of Comment 292: A number of examination provided certain
disclosure terminates at the close of comments stated that all related conditions are met.
prosecution. applications should be assigned to the Comment 294: Several comments
Response: The Office recently same examiner, including applications suggested that examiners should strictly
published proposed changes to the with overlapping disclosures. follow the guidance set forth in MPEP
information disclosure statement Response: The Office will continue to section 708 and examine applications
practice which will encourage the make reasonable efforts to ensure that with the oldest effective filing date first.
submission of more useful information. related applications are assigned to the On the other hand, several comments
See Changes To Information Disclosure same examiner, if possible. However, stated the Office should promote earlier
Statement Requirements and Other the Office normally assigns divisional examination of non-continuing
Related Matters, 71 FR at 38812–16, applications to the technology area most applications by giving continuation
38820–22, 1309 Off. Gaz. Pat. Office at appropriate for the claimed subject applications a lower priority in the
27–31, 34–36. matter. In fact, this is in part why this examination queue.
Comment 291: A number of final rule requires applicants to identify Response: The Office will continue to
comments suggested that the Office certain related applications. See follow the guidance set forth in MPEP
should make better use of search and § 1.78(f). section 708 pertaining to the order of
examination reports from other Comment 293: A number of examination of applications, including
intellectual property offices and PCT comments suggested creating a new or that ‘‘[e]ach examiner will give priority
search and examination authorities. On modified accelerated examination to that application in his or her docket,
the other hand, one comment stated that procedure. One comment requested a whether amended or new, which has
the Office should not rely on foreign procedure to permit accelerated the oldest effective U.S. filing date.’’ An
office searches. Several comments examination for applications that enter exception to this guideline is an
further suggested separating the search the national stage under the Patent application in which examination has
and examination functions and Cooperation Treaty. Another comment been advanced pursuant to § 1.102.
outsourcing the search function. One stated that accelerated examination Comment 295: One comment
comment stated that U.S. and PCT could be available to applications suggested examiners should not just
prosecution should be done at the same containing ten or fewer representative search the claimed invention, but also
time. claims. Another comment suggested subject matter that might be reasonably
Response: The Office recognizes the allowing accelerated examination if the claimed at a later time.
importance of leveraging the search applicant permits an inter partes Response: MPEP § 904 sets forth that
results from other intellectual property submission of a prior art statement and ‘‘[t]he first search should cover the
offices. One of the specific action plans applicant provides either an invention as described and claimed,
of the United States Patent and examination report from either the including the inventive concepts toward
Trademark Office 21st Century Strategic European Patent Office or the Japan which the claims appear to be directed.’’
Plan is to share search results with other Patent Office, or pays a high fee for a Additionally, MPEP § 904.02(a) states
intellectual property offices. Since the special search. One comment stated that ‘‘[t]he field of search extends to all
beginning of 2003, the Office, the high technology areas should be given probable areas relevant to the claimed
European Patent Office and the Japan examination priority. Another comment subject matter and should cover the
Patent Office (the Trilateral Offices) suggested requiring expedited replies in disclosed features which might
have participated in search exchange continued examination applications and reasonably be expected to be claimed.’’
projects aimed at promoting the mutual not giving extensions of time under Comment 296: Several comments
exploitation of search results. The Office § 1.136(a). Another comment requested encouraged the Office to hire efficiency
implemented the Patent Prosecution accelerated examination for experts, or a task force, to find the best
Highway pilot program in July 2006. See independent inventors. ways to improve the quality and
Patent Prosecution Highway Pilot Response: The Office has long efficiency of examination.
Program between the United States provided for advancement of Response: The Office expects these
Patent and Trademark Office and the examination upon granting a petition to rule changes to improve the quality and
Japan Patent Office, 1307 Off. Gaz. Pat. make special. See § 1.102 and MPEP efficiency of examination. The Office
Office 61 (June 13, 2006). Under the § 708.02. The Office also announced a will evaluate the effectiveness of the
Patent Prosecution Highway pilot revised accelerated examination rule changes in partnership with the
Office’s customers and employees as all date, thus the Office does not plan to generally unnecessary in determining
gather experience in operating under change this practice. the patentability of the claimed
these adjustments. The Office is Comment 300: One comment invention. However, applicant may
currently studying all suggestions, suggested accepting more ‘‘variations’’ submit objective evidence of
including those in the various studies in filings to reduce the number of non- commercial success when applicant
made of the Office. compliant notices sent. seeks to rebut an obviousness rejection
Comment 297: One comment Response: The Office waives certain under 35 U.S.C. 103. See § 1.132 and
requested that the panel involved in a requirements set forth in § 1.121(c) and MPEP § 716.03.
pre-appeal brief conference be required may accept certain non-compliant Comment 304: One comment
to provide legal and factual reasoning amendments. See Acceptance of Certain requested prioritizing the order of
for the decision to both the examiner Non-Compliant Amendments Under 37 examination based on such factors as
and the practitioner so as to better make CFR 1.121(c), 1296 Off. Gaz. Pat. Office the economic impact and value to
the decision a teaching tool. 27 (July 5, 2005). Practitioners and society, the quality of the technical
Response: The Pilot Pre-Appeal Brief applicants, however, are responsible to description of the invention and the
Conference Program has been extended know the laws and rules relating to quality of prior art cited. The comment
until further notice. See Extension of the prosecuting patent applications and to also suggested requiring applicants to
Pilot Pre-Appeal Brief Conference keep current with any changes. The state in their application how the
Program, 1303 Off. Gaz. Pat. Office 21, Office will continue to review common invention will be distributed to the
(February 7, 2006) (notice). Since this problems that arise, and implement public.
program is still in the pilot phase, it solutions as appropriate. Response: It would be very difficult to
would be premature to make any Comment 301: One comment evaluate and assess these subjective
changes until a full evaluation of the requested that the Office publish, once factors for each application filed. In
entire program is completed. a month, a projection of when a new addition, most of this information
Furthermore, the purpose of this application will be taken up for would not be helpful in determining the
program is to provide a quick relief for examination so that applicants can patentability of the claimed invention.
applications that are clearly not in better manage the filing of preliminary Comment 305: One comment
condition for appeal, so that applicant amendments. suggested creating an electronic search
does not have to go through the expense Response: The Office currently tool that would automatically compare
of preparing and filing an appeal brief. publishes in each issue of the Official the claim language to prior art and
Preparing a written decision of the Gazette the average filing date of the provide complete searches in under ten
conference would unduly delay the applications that received a first Office minutes.
process. action during the preceding three Response: The Office has been
Comment 298: Several comments months for each Technology Center evaluating tools to improve the
stated that the Office should create an Work Group. examination practice. Although the
Ombudsman position to decide issues Comment 302: One comment Office is routinely seeking ways to
regarding examination errors by suggested that the Office should allow improve automated tools, the resources
examiners. more documents to be filed via the needed for implementation and the
Response: The Office has many Office electronic filing system. Another applicability of the tools must be
effective mechanisms to decide issues comment stated the Office should considered and weighed. Often, the
regarding alleged ‘‘examination errors’’ require electronic filing and that all application of search tools is limited to
by examiners. Practitioners have several prosecution be performed electronically. specific technologies. For example, in
options, including but not limited to, Response: The Office permits many biotechnology applications, the
responding on the record, calling a applicants to file many applications, Office employs an Automated
supervisor, requesting a pre-appeal brief fees, and correspondence (e.g., Biotechnology Sequence Search System
conference, filing a petition, and filing amendments and replies) electronically (ABSS) to compare genetic sequences
an appeal. via the Office electronic filing system submitted with applications to a
Comment 299: One comment (EFS–Web) with a few exceptions (e.g., number of sequence databases. The
requested a return to the appeal rules Credit Card Authorization Form (PTO– Office’s Scientific and Technical
where the examiners are not able to 2038), maintenance fees, new plant Information Center (STIC) conducts
make new grounds of rejection during applications and color plant drawings). between 10,000 and 15,000 of these
appeal. There are no plans to make electronic searches a year. Due to the number of
Response: The rules of practice for the filing mandatory, although special requests and because the search runs
appeal process were changed in 2004 to programs (e.g., accelerated examination) against multiple databases, ABSS
permit a new ground of rejection in an do require electronic filing. See Changes searches can be time-consuming. In
examiner’s answer. See Rules of Practice to Practice for Petitions in Patent other technologies, such as electrical
Before the Board of Patent Appeals and Applications To Make Special and for and mechanical arts, STIC provides the
Interferences, 69 FR 49960, 1286 Off. Accelerated Examination, 71 FR at option of conducting a Patent Linguistic
Gaz. Pat. Office 21 (September 7, 2004) 36323–27, 1308 Off. Gaz. Pat. Office Utility Service (PLUS) search, which
(final rule). The approval of the 106–09. runs significant words from sections of
appropriate Technology Center Director, Comment 303: One comment the specification against the full text of
or his or her designee, is needed for proposed requiring applicants to give an the United States Patent and United
such a new ground of rejection, which opinion of the usefulness or commercial States Pre-Grant Publication databases.
should be rare. In response to any new potential of the invention. STIC is performing over 20,000 of these
ground of rejection made in an Response: The Office is not adopting searches a year. While these searches
examiner’s answer, appellant has the the requirement that an examination are done quickly, limitations in key
options to request that prosecution be support document contain a concise word searching are not always reliable
reopened and to request that the appeal statement of the utility of the invention. in finding relevant prior art.
be maintained under § 41.39(b). There An opinion from the applicant on the Comment 306: One comment stated
have been no demonstrated problems to commercial potential of the invention is that the Office should create a better
search engine so inventors can more is the Office’s experience that applicants better control over restriction practices.
easily perform better searches. who seek review of the finality of an Several comments stated that the Office
Response: The Office continues to Office action also request review of the should encourage claims of different
explore various ways to disseminate merits of the rejections contained in the statutory classes to be filed in one
information and improve the searching final Office action. The propriety of the application to improve examiner
capabilities of the public. Currently, the finality of an Office action is purely a efficiency. One comment asserted that
Office allows applicants and inventors question of Office practice that is disposal pressures on examiners in the
to search on-line using Patent Full-Text wholly distinct from the merits of the biotechnology area are totally
and Full-Page Image Databases (http:// rejections contained in the final Office unrealistic and have led to legally
www.uspto.gov/patft/index.html) and action rejection. See MPEP § 706.07(c). ridiculous restriction requirements.
works in concert with eighty-three The propriety of the finality of an Office Several comments suggested that
Patent and Trademark Depository action is properly raised in a petition restriction reform is needed. Several
Libraries (http://www.uspto.gov/go/ under § 1.181, and is not a proper basis comments suggested that the Office
ptdl/) throughout the United States to for an appeal or complaint to the BPAI adopt the unity of invention standard.
offer the public extension research during an appeal. See id. Likewise, Several comments suggested an interim
capabilities. The Office also has a arguments relating to the merits of the standard based on current PCT unity of
library and tools at the Alexandria rejections contained in the final Office invention practice should be available at
campus for the public to use. action rejection are properly raised in an the option of the applicant as an
Comment 307: One comment appeal to the BPAI, and are not a proper alternative to adopting unity of
suggested that procedures for appeals basis for a petition under § 1.181 or for invention practice. Some comments
and petitions should be changed to be contesting the propriety of the finality of expressed the opinion that current
less costly and to result in more timely an Office action. restriction practice in Technology
decisions. One comment suggested the The rules of practice provide that the Center 1600 (biotechnology and organic
Office waive the notice of appeal fee mere filing of a petition under § 1.181 chemistry) requires applicants to file too
and the appeal brief fee while the will neither stay any period for reply many continuing and divisional
applicant awaits a decision on petition that may be running against the applications. One comment expressed
to invoke supervisory authority relating application, nor act as a stay of other the opinion that current restriction
to a premature final rejection in an proceedings. See § 1.181(f). While the practice is a result of the examiners’
Office action. Office has put in place procedures to production system. Several comments
Response: Most petition fees are set decide the appeals and petitions in a stated that restriction is necessary to
by regulation. The petition fee amounts timely manner, the applicant is avoid abusive filing tactics by
that are set by regulation are set at an responsible to continue to prosecute the applicants seeking to circumvent the
amount based upon the resources application consistent with § 1.181(f). proposed regulation of continued
required to handle and decide the Thus, there may be situations in which examination filings. Several comments
petition. See Changes to Support it is necessary for an applicant to file a
Implementation of the United States suggested that the Office eliminate
notice of appeal to maintain the restriction practice. Another comment
Patent and Trademark Office 21st pendency of an application while a
Century Strategic Plan, 69 FR 56482, stated that if proposed § 1.78(d)(1)(ii) is
petition under § 1.181 requesting review adopted, the Office should be bound by
56491–93 (Sept. 21, 2004), 1287 Off. of the finality of an Office action is
Gaz. Pat. Office 67, 75–76 (Oct. 12, an initial restriction requirement and
being decided. The filing of a notice of
2004). The notice of appeal fee and the § 1.146, authorizing species restrictions,
appeal, however, does not moot such a
appeal brief fee are set by statute and should be repealed. One comment
petition under § 1.181, so the Office will
cannot be waived. Additionally, the suggested that if restriction practice
decide a petition under § 1.181
appeal fees recover only a fraction of the must be maintained, it should be
requesting review of the finality of an
Office cost of handling and deciding the limited to applications in which two
Office action even if the applicant has
appeal. claimed inventions are literally
filed a notice of appeal in the
With respect to petitions, the Office is unrelated, and all divisional
application. In such a situation,
taking the necessary steps to minimize applications should be examined by the
applicants should also request a pre-
the backlog and to respond to petitions same examiner.
appeal brief conference with the filing
in a timely fashion. Within the of a notice of appeal. The pre-appeal Response: As part of the United States
Technology Centers, almost all petitions brief conference will be conducted and Patent and Trademark Office 21st
for relief from improper final rejections the applicant will be notified of the Century Strategic Plan, restriction
or restrictions are answered in a timely result of the pre-appeal brief conference reform was studied extensively. See
fashion. The Office is working to ensure before the appeal brief and appeal brief Request for Comments on the Study of
that most of the petitions for relief from fee must be filed. This should ensure Changes Needed to Implement a Unity
improper final rejections or restrictions that any petition under § 1.181 of Invention Standard in the United
are decided within four months from requesting review of the finality of an States, 68 FR 27536 (May 20, 2003),
when they are filed, and continues to Office action is decided before the 1271 Off. Gaz. Pat. Office 98 (June 17,
work on ways to make the process applicant must file the appeal brief and 2003) (notice). A revision of the study
consistent across the different appeal brief fee. If the Office determines was posted in November 2003, and the
Technology Centers. The Office has also that the finality of the rejection was study was expanded to include four
taken major steps to eliminate delays premature, the finality of the Office restriction reform options. See Notice of
with the appeal process. The BPAI has action will be withdrawn and any fees the Availability of and Request for
radically reduced the inventory of paid for the notice of appeal and the Comments on Green Paper Concerning
pending appeals during the last five appeal brief can be applied to a later Restriction Practice, 70 FR 32761 (June
fiscal years. appeal on the same application. See 6, 2005), 1295 Off. Gaz. Pat. Office 146
The Office also recognizes that it is MPEP § 1207.04. (June 28, 2005) (notice) and the
important to make sure that the finality Comment 308: Several comments extension of the comment period
of any final Office actions is proper. It stated that the Office should exercise announced at 70 FR 45370 (August 5,
2005) (notice). There were sixteen adopted in this final rule do not a single application. A number of
responders, and there was no consensus encourage more or fewer restrictions. comments suggested that there should
as to which of the four options to adopt. Thus, the Office is maintaining its be higher fees on claims exceeding a
In addition, the restriction reform study current practices with respect to certain minimal number, which is
concluded that a change to unity of requirements for restriction under 35 proportionate to the increased burden
invention under PCT Rule 13 under any U.S.C. 121 or unity of invention under on the Office. One comment suggested
of the four restriction reform options PCT Rule 13. See §§ 1.141, 1.142, and permitting applicant to pay additional
would significantly increase patent 1.499. search and examination fees for those
pendency. Thus, the Office is Comment 310: One comment who want to submit more than ten
maintaining its current practices with suggested that the Office require all representative claims. At least one
respect to requirements for restriction restriction requirements to be made comment suggested increasing fees
under 35 U.S.C. 121 or unity of within six months of filing, with no based on complexity of the claims and
invention under PCT Rule 13. excess claim fees charge until after that art. One comment suggested that the
Technology Center 1600 period. Another comment stated that Office should permit an applicant to file
(biotechnology and organic chemistry) excess claims fees should only be a third or subsequent continuing
has implemented a comprehensive determined after any restriction application with an appropriate higher
restriction training plan. This includes requirement has been made. fee. One comment suggested a three-
training examiners on proper restriction Response: In fiscal year 2006, the tiered system: The first tier would allow
practices, including proper grouping of average pendency to first Office action three independent claims and twenty
claims and rationale supporting the was 22.6 months for the entire Patent total claims; the second tier would
restriction requirement, using Art Unit Examining Corps. Therefore, the Office’s activate a very high surcharge; and the
and Work Group specific examples. current first Office action pendency third tier, in applications of more than
Training has been ongoing, using does not allow for an examination of the ten independent and thirty total claims,
materials that are published on the application to determine whether would require a showing as to why such
Office’s Internet Web site. Feedback restriction is appropriate within six additional claims are necessary. Several
from the training to date has been months of filing in most applications. comments suggested an overall general
incorporated into the initial patent Excess claims fees are required by the fee increase, especially for those areas
examining training given to new hires. statutory requirement ‘‘on filing or on with high workloads. One comment
Although the Office will continue to presentation at any other time.’’ See 35 suggested that doubling the basic filing
assign divisional applications to the U.S.C. 41(a)(2). In response to a fee, search and examination fees would
technology area most appropriate for the restriction requirement, applicant may not be a hardship for applicants. Several
claimed subject matter, they are not file an amendment canceling the non- comments suggested a number of
necessarily assigned to the same elected claims and request a refund of changes to the fee schedule: Tripling
examiner. any excess claims fees paid on or after fees for large entities; instituting a
Comment 309: Several comments December 8, 2004, for the non-elected graduated fee scale for adding new
asserted that restriction practice will claims, if the amendment is filed before matter rather than limiting the number
increase as a result of the rule changes. an examination on the merits has been of continuation-in-part applications;
One comment suggested that the Office made of the application. See § 1.117. charging a higher filing fee for an
needs to coordinate any changes in application with greater than five claims
continuation practice with restriction K. Suggestions Relating to Legislative
Changes and more than 1200 words in the
reform. Another comment expressed the specification; raising fees if more than
opinion that the proposed rule changes Comment 311: A number of ten or more than twenty claims are
will exacerbate problems with the comments suggested that Congress submitted; increasing fees for
current restriction practice. One should adequately fund the Office by independent claims in excess of three;
comment suggested that divisional making the United States Patent and increasing fees on all non-Jepson claims;
application filings would likely drop in Trademark Fee Modernization Act of and eliminating search and examination
view of designating ten representative 2005 (H.R. 2791, 109th Cong. (2005)) fees if an examination support
claims because examiners usually do permanent and eliminating fee document is submitted.
not bother to make restriction diversion. One comment also suggested Several comments stated that
requirements when they only have a few that Congress provide additional funds surcharges should be imposed on
claims to examine. Another comment (outside of fees collected) to the Office. independent claims in excess of three
stated that an increase in restrictions is A number of comments suggested that and total claims in excess of twenty in
a desirable alternative to the rule the fees for continued examination order to address the problem of
changes. Another comment argued that filings in excess of one should be applications with excess numbers of
current restriction practice adequately increased (e.g., graduated fee schedule claims. Several comments argued that
limits the claims for examination. The for subsequent filings). A number of the current fees appear to be having a
rules would complicate restriction comments suggested charging a fee for significant impact in reducing the
practice resulting in multiple exchanges each priority claim made. One comment number of claims filed, that the Office
between the examiner and applicant suggested that the fee would be has not fully evaluated that impact, and
when designated claims are subject to proportional to the years of benefit that the Office should give the fee
restriction. requested. Several comments suggested increase more time to see if it will be
Response: The Office is not adopting that the current fee structure encourages effective.
the ‘‘representative claims’’ examination continuations since it is cheaper to file Response: Patent fees are primarily set
approach in this final rule. As noted multiple applications than to file a large by statute, and Congress has
previously, the Office received number of claims (e.g., sixty total claims considerable authority in setting patent
comments that restrictions would with nine independent claims) in a fees and funding of the Office. See
increase and comments that restrictions single application, and that the Office Figueroa v. United States, 466 F.3d
would decrease as a result of the should revisit the fee structure if it 1023, 1031–32, 80 U.S.P.Q.2d 1437,
changes to the rules. The changes being wants to encourage filing the claims in 1443 (Fed. Cir. 2006). Thus, patent fee
and Office funding issues are beyond not, by itself, a sufficient solution for Australia in which a patent issues
the scope of the proposed changes to the the large and growing backlog of without a search being done, and a
rules of practice. unexamined applications. search is only conducted when the
In 2002, the Office proposed a patent Comment 312: One comment patent is enforced.
fee structure that included a graduated suggested permitting applicants to pay Response: The Office is currently
excess claims fees schedule and an additional search fee for inventions studying the concept of alternative types
additional fees for continuing that are restricted. of patents, thus allowing an applicant to
applications. The House Subcommittee Response: The Office studied such a select a patent product based upon the
on Courts, the Internet, and Intellectual proposal and determined that it would applicant’s needs. See Draft 2007–2012
Property held a hearing on July 18, result in an unacceptable increase in Strategic Plan (Objective 2 of Goal 1). A
2002, at which patent user groups patent pendency. See Green Paper copy of the Office’s draft proposed five-
expressed strenuous opposition to the Concerning Restriction Practice at 14–18 year (2007–2012) strategic plan can be
Office’s 2002 proposed patent fee (2005). The Green Paper Concerning found at http://www.uspto.gov/web/
structure. See The U.S. Patent and Restriction Practice is available on the offices/com/strat2007/. However,
Trademark Office: Fee Schedule Office’s Internet Web site at: http:// implementing such a practice would
Adjustment and Agency Reform: www.uspto.gov/web/patents/ need legislative changes.
Oversight Hearing Before the greenpaper.htm. Thus, the Office is not Comment 316: One comment
Subcommittee on Courts, the Internet, pursuing such a change to patent indicated that Congress recently
and Intellectual Property of the House practice. endorsed and expanded opportunities
Committee on the Judiciary, 107th Comment 313: One comment for double patenting via the CREATE
Cong., 2nd Sess., Final Print Serial No. suggested that fees for small entities Act (Cooperative Research and
92 (2002). The Office was unable to should be maintained and that fees for Technology Enhancement Act (Pub. L.
garner public support for a patent fee others should be increased. 108–43, 118 Stat. 3596 (2004)).
structure including a graduated excess Response: The Office believes that Response: The legislative history of
claims fees schedule or any additional Congress has set an appropriate the CREATE Act (Cooperative Research
fees for continuing applications. discount for fees paid by small entities. and Technology Enhancement Act (Pub.
Therefore, the patent fee structure 35 U.S.C. 41(h)(1) currently provides for L. 108–43, 118 Stat. 3596 (2004))
proposed in the United States Patent a fifty percent reduction in patent fees indicates that Congress appreciated that
and Trademark Fee Modernization Act charged under 35 U.S.C. 41(a), (b), or the CREATE Act would result in
of 2003 (introduced as H.R. 1561) (d)(1) for applicants who qualify as a additional double patenting situations.
included the former ‘‘flat’’ excess claims small entity under 35 U.S.C. 41(h)(1), See H.R. Rep. No. 108–425, at 6 (the
fee schedule (with an adjustment to the and 35 U.S.C. 41(h)(3) further provides Office may require a terminal disclaimer
fee amounts) and no additional fees for a seventy-five percent reduction in the when double patenting is determined to
continuing applications. filing fee charged under 35 U.S.C. exist for two or more claimed inventions
Section 801 et seq. of Division B of 41(a)(l)(A) for small entity applicants for any application for which the
the Consolidated Appropriations Act, who file their applications applicant takes advantage of the ‘‘safe
2005, provided that 35 U.S.C. 41(a), (b), electronically. The Office notes that harbor’’ provision in 35 U.S.C. 103(c) as
and (d) shall be administered in a small entity applicants file excess amended by the CREATE Act).
manner that revises patent application claims and continuing applications at Congress’ acknowledgment of the
fees (35 U.S.C. 41(a)) and patent virtually the same rate as other (non- possibility of double patenting is not,
maintenance fees (35 U.S.C. 41(b)) small entity) applicants. however, an expression of support for
during fiscal years 2005 and 2006. See Comment 314: One comment applicants to intentionally submit
Public Law 108–447, 118 Stat. 2809 suggested that if a specification is a claims that would result in a double
(2004). In essence, the Consolidated poor-quality literal or machine patenting situation. Instead, it shows
Appropriations Act, 2005, made the translation of a non-English language that the Congress is aware of the
patent fees set forth in the United States application, the examiner should be problems created by multiple patents
Patent and Trademark Fee permitted to reject the specification as covering the same or substantially the
Modernization Act effective during most indefinite and provide a time period for same invention, and expects the Office
of fiscal year 2005 and all of fiscal year applicant to provide a better quality to address these issues.
2006. The Revised Continuing translation. Comment 317: Several comments
Appropriations Resolution, 2007 (Pub. Response: The goal of the changes in suggested eliminating the two-year limit
L. 110–5, 121 Stat. 8 (2007)), kept the this final rule is to increase quality and for filing a broadening reissue. One
patent fee and fee structure provisions decrease pendency of patent comment suggested amending the
of the Consolidated Appropriations Act, applications. To assist the Office in ‘‘reissue’’ or ‘‘reexamination’’ statute to
2005, in effect during fiscal year 2007. meeting that goal, applicants should file permit broadening of claims at any time
Moreover, the examination fee in applications that are in condition for for a number of reasons such as: (1) To
effect under this legislation does not examination, or provide corrections no replace continuing applications which
recover the entire cost of examination. later than the time they are taken up for are now being filed to avoid the two-
The excess claims fee structure in effect examination. It should not be necessary year statutory period for broadening
under this legislation does not provide for the Office to issue an Office action patent claims; (2) to allow correction of
sufficient incentive for all applicants to rejecting or objecting to an application simple drafting mistakes which may not
keep the number of claims in an due to informalities. However, if a be caught before the patent issues; and
application at a reasonable number. The specification is a poor quality literal (3) to provide certainty to industry. The
application filing fees in effect under translation of a non-English application, comment stated that to encourage
this legislation provide no incentive for the examiner has the authority to object participation by patentee, legal (as
applicants to keep the number of to the specification. opposed to equitable) intervening rights
continuing applications to a reasonable Comment 315: One comment should be provided that are linked to
number. Thus, increasing fees, as suggested that the Office adopt a ‘‘utility the date of the amendment. Also, such
suggested by many of the comments, is model’’ type of patent as used in an amendment should provide for
intervening rights after eighteen months eyes’’ review has had a significant Response: A request for continued
to patent applications as well as patents impact on examination quality at an examination is not a new application,
to put an end to the submarine patent increased cost to the Office, Office but is instead a means to continue
situation. funding is subject to appropriations by examination of an existing application.
Response: The suggested changes to Congress, and charging additional fees Thus, such a change could not be made,
reissue or reexamination practice are will not necessarily provide more because 35 U.S.C. 132(a) prohibits
not consistent with the Office’s goals of funding for the Office. See Figueroa, 466 introduction of new matter into an
increasing quality and reducing F.3d at 1031, 80 U.S.P.Q.2d at 1442 application. Furthermore, even if 35
pendency. The Office, nevertheless, (there is no requirement that the U.S.C. 132(a) did not prohibit such a
appreciates that continuing application revenue resulting from patent fees be practice, such a practice would create
practice may currently be used appropriated to fund the Office). problems in determining the filing date
improperly to avoid the two-year bar Furthermore, the limitation currently of the new matter.
and the broadening ‘‘error’’ requirement facing the Office is not a lack of funds Comment 322: One comment
of the reissue statute (35 U.S.C. 251). to hire new examiners, but rather the suggested that the Office should seek
The changes to continuing application ability to hire and train new examiners the authority from Congress to limit the
practice in this final rule will reduce a in the numbers necessary to lower number of claims in any particular
patentee’s ability to end-run the reissue patent pendency while maintaining application.
statute via continuing application patent quality. Response: The Office is not seeking to
practice. Comment 320: One comment limit the number of claims in an
Comment 318: One comment suggested modifying the relevant application. Instead, the Office aims to
suggested instituting a tiered search and statutes to bar a continuing application improve the quality of examination. The
examination procedure, which provides or request for continued examination changes to § 1.75 in this final rule
for a refund of the examination fee if after thirty months from the filing date permit an applicant to present up to five
applicant decides to abandon the (other than a divisional application, independent claims and twenty-five
application after the search but before which would be given a different total claims in the application without
the examination. If applicants can save period). The comment also indicated submitting an examination support
money by abandoning applications no that continuation-in-part applications document in compliance with § 1.265.
longer deemed viable, applications will filed more than thirty months after the The changes to § 1.75 in this final rule
drop out of the application process, initial application should be barred also permit an applicant to present more
thereby freeing up valuable Office under 35 U.S.C. 102(b) based on the than five independent claims or more
examination resources to focus on eighteen-month publication of the than twenty-five total claims if the
quality examination of the remaining initial application. applicant submits an examination
applications, as well as reducing Response: First, the statutes cannot be support document in compliance with
pendency. modified without legislative action by § 1.265. If an examination support
Response: The current fee legislation Congress. Further, this final rule document in compliance with § 1.265 is
authorizes the Office to refund the provides applicant sufficient not filed before the issuance of a first
search fee but not the examination fee opportunities to present claims during Office action on the merits of the
if the applicant chooses not to pursue an the prosecution of the initial application, the application may not
application after it has been filed. See application, two continuing contain or be amended to contain more
35 U.S.C. 41(d)(1)(D). This provision has applications, and a request for than five independent claims or more
been implemented in § 1.138(d). Under continued examination without than twenty-five total claims. Thus, the
§ 1.138(d), applicant may file a petition justification. The prosecution of these changes being adopted in this final rule
for express abandonment before an applications and the request for are not placing a limit on the number of
examination has been made of the continued examination will most likely claims.
application to obtain a refund of the extend more than thirty months from Comment 323: One comment
search fee and excess claims fee paid in the earliest claimed filing date, suggested that the Office should permit
the application. The feedback received particularly in certain areas such as all claims to be filed in an application
by the Office indicates that the biotechnology. The changes as adopted without any excess claims fees, and
examination fee is too low to provide in this final rule appropriately balance then after restrictions are made,
any additional incentive for an an applicant’s need for opportunities to calculate the needed fee for ‘‘additional
applicant to withdraw from the present claims and the Office’s need to claims’’ so applicants are not penalized
examination process and seek a refund. utilize its examining resources more by paying claims fees twice.
Comment 319: One comment efficiently to reduce the backlog of Response: An applicant can request a
suggested charging more money for unexamined applications and improve refund for excess claims canceled prior
voluminous IDS submissions, and quality. to a first action on the merits. See
additional surcharges for particular Comment 321: One comment § 1.117. Thus, an applicant does not
technologies where ‘‘second pair of suggested developing a practice where need to pay claim fees twice, if
eyes’’ review has had a significant new matter can be added to an existing applicant cancels the non-elected claims
impact on examination quality at an application with a request for continued in reply to a restriction requirement.
increased cost to the Office. examination. The comment explained Comment 324: One comment
Response: The Office is addressing such a practice would eliminate the suggested providing for the addition of
the problem of large IDS submissions in need to file continuation-in-part dependent claims after allowance for a
a separate rule making. See Changes To applications, would not take the reduced fee with the requirement that
Information Disclosure Statement application out of the examining queue, applicant identify support for the claims
Requirements and Other Related and would be more efficient because the in the specification.
Matters, 71 FR at 38812–16, 38820–22, same examiner, rather than different Response: The comment did not
1309 Off. Gaz. Pat. Office at 27–31, 34– examiners, would examine the provide an explanation as to how such
36. As for increasing fees for particular application, and would also avoid a strategy would reduce pendency and
technologies where ‘‘second pair of double patenting issues. promote quality. Even assuming
applicant would file less claims under continuing to consider the issues related an appreciable impact on quality or
this suggested practice, examination of to the first to invent versus the first pendency.
the newly added claims after allowance inventor to file standard in determining
L. Effective Date of the Changes in This
would be required. Thus, it is not clear the right to a patent in the context of
Final Rule
how the suggested strategy would serve international harmonization efforts.
these goals more effectively than the Comment 329: One comment Comment 332: One comment stated
changes being adopted in this final rule. suggested elimination of all forms of that the Office does not have any
Comment 325: One comment continuing applications except authority to promulgate retroactive rules
suggested to bar, by statute, more than divisional applications. because the Administrative Procedures
three independent claims and ten total Response: The changes to continuing Act does not confer such power on the
claims, provided that amendments may application practice adopted in this Office. Several comments asserted that
be made in the regular course of final rule seek a balanced approach Congress never expressly authorized the
prosecution and after grant to end claim between the needs of applicants for Office to promulgate retroactive rules,
gaming. The comment further indicated patents and the goals of the Office to citing Landgraf v. USI Film Prods., 511
that the proposed rule changes will be increase quality and decrease pendency. U.S. 244, 265 (1994) and Bowen v.
subject to administrative challenge, Comment 330: One comment Georgetown Univ. Hosp., 488 U.S. 204,
leading to several years of uncertainty suggested reducing the shortened 208 (1988). A number of comments also
and chaos. suggested that the retroactive effect of
statutory period for an applicant’s
Response: A number of comments proposed rule § 1.78 is contrary to
response to three months without any
indicated that there are situations in judicial precedent, citing Henriksen and
extension of time. One comment
which more than three independent Hogan. Several comments argued that
suggested implementing a thirty-day
claims and more than ten total claims applying the changes to § 1.75
reply period for both the Office and
are needed. Thus, the Office recognizes retroactively would be unfair to the
applicants.
that it would be inappropriate to seek applicants and a violation of due
Response: The Office is considering process because applicants were not
such legislation to place an absolute
whether it should change the shortened given sufficient notice of the changes
limit on the number of claims at this
statutory period for Office actions on the when they filed applications. Lastly,
juncture.
merits to less than three months. one comment argued that applying the
Comment 326: One comment
suggested that reducing the filing and Comment 331: Several comments rule changes to pending applications is
maintenance fees would reduce filings. expressed support for publication of all an unconstitutional denial of due
The comment stated that the backlog applications. One comment suggested process.
has gotten so large due to the increases limiting secrecy of a patent application Response: The Office is not engaging
in excess claims fees, there has been a to one month. One comment suggested in retroactive rule making. This final
tendency among practitioners to that some form of intervening rights rule has a prospective effect only. The
segment applications into multiple legislation might better address the Office’s decision to grandfather only
related filings, each having twenty or so problem of repetitive filings. One pending applications in which a first
claims. This segmenting, the comment comment suggested elimination of 35 Office action on the merits was mailed
explains, has significantly increased the U.S.C. 135(b). One comment suggested before November 1, 2007 (the effective
number of filings within the Office. amending 35 U.S.C. 271 so that a variety date of the changes in this final rule)
Response: It is unclear how reducing of claim forms are not necessary for with respect to the changes to § 1.75
fees would reduce the number of filings. direct infringement to be found, arguing does not constitute retroactive rule
The experience of the Office is that that current 35 U.S.C. 271 is the reason making. Likewise, the Office’s decision
reducing patent fees would not lead to why software-based inventions require to grandfather only continuing
reduced filings. claims to different statutory classes, applications and requests for continued
Comment 327: One comment thus increasing the number of claims in examination that were filed before the
suggested including a patent term an application. One comment suggested effective date of the final rule with
reduction while an application remains that the Office should work with respect to §§ 1.78 and 1.114 (with a
pending. Congress to legislatively overturn provision that allows for at least ‘‘one
Response: Section 1.704 currently Honeywell Int’l Inc. v. Hamilton more’’ continuation application or
provides for reduction of patent term Sundstrand Corp., 370 F.3d 1131, 71 continuation-in-part application of an
adjustment for processing delays U.S.P.Q.2d 1065 (Fed. Cir. 2004), to application filed before the publication
attributable to the applicant. promote the use of dependent claims date of this final rule) does not
Comment 328: One comment and not construe the rewriting of an constitute retroactive rule making.
suggested moving to a first-to-file objected to dependent claim in ‘‘A statute [or regulation] does not
system. independent form narrowly under the operate ‘retroactively’ merely because it
Response: As part of global patent law doctrine of equivalents. One comment is applied in a case arising from conduct
harmonization efforts, the Office has suggested granting rights to regulate the antedating the statute’s enactment.’’
sought public comment on whether the use of an Internet patent to the assignee Landgraf, 511 U.S. at 255. Rather, a
first to invent (used in the United and the enforcement of such regulation statute (or regulation) is retroactive if it
States) or the first inventor to file (used would be based on a fee and would not takes away or impairs vested rights
in the remainder of the world) standard include the right to prevent others from acquired under existing law, creates a
in determining the right to a patent using the invention. new obligation, imposes a new duty, or
represented a ‘‘best practice’’ for a Response: The changes suggested by attaches a new disability with respect to
harmonized global patent system. See the comments are beyond the scope of transactions already completed. See
Request for Comments on the the proposed changes to the rules of Landgraf, 511 U.S. at 269. The filing of
International Effort to Harmonize the practice. It is not clear, however, how an application for patent does not create
Substantive Requirements of Patent the changes suggested by the comments a vested right or amount to a transaction
Laws, 66 FR 15409 (Mar. 19, 2001) would address the increased usage of already completed. See Community TV,
(request for comments). The Office is continuing application practice or have Inc. v. FCC, 216 F.3d 1133, 1143 (D.C.
Cir. 2000) (the Federal Communications the prosecution of many pending continuation application or
Commission is free to alter the criteria applications, particularly those that are continuation-in-part application of an
for consideration of pending ‘‘upgrade’’ continued examination filings, application that was filed prior to the
applications because the mere filing of precluding any opportunity for publication date of this final rule in the
an application does not vest the subsequent continued examination Federal Register without a petition and
applicant with a legally cognizable filings. A number of comments also showing. Thus, applicants are also
expectation interest); Chadmore argued that retroactively affecting the permitted to file a divisional application
Communs. v. FCC, 113 F.3d 235, 240– pending applications would be unfair to in compliance with § 1.78(d)(1)(ii) of an
41 (D.C. Cir. 1997) (the mere filing of an applicants because it would deprive application that was filed prior to the
application does not vest an applicant applicants of timely notice of the rule effective date of this final rule without
with a legally cognizable expectation changes and it would be a violation of a petition and showing.
interest). In addition, the Office is not due process. Several comments argued The rules of practice currently
changing the substantive criteria of that retroactively affecting the pending provide that by presenting any paper
patentability. The Office is simply applications would require applicants to (including any continuation application,
revising the procedures an applicant review the pending applications to continuation-in-part application, or
must follow for presenting more than determine whether to file additional request for continued examination) to
five independent claims or more than continuing applications to preserve the the Office, the party presenting the
twenty-five total claims in an patent rights of unclaimed subject paper is certifying that to the best of the
application, and for seeking continued matter or restricted inventions and to party’s knowledge, information and
examination of an application via a file many continuing applications before belief, formed after an inquiry
continuation application, continuation- the effective date. The comments further reasonable under the circumstances,
in-part application, or a request for argued that this would increase the cost that the paper is not being presented for
continued examination. See Landgraf, of prosecution and the Office’s backlog any improper purpose, such as to harass
511 U.S. at 275 (changes in procedural of applications. One comment estimated someone or to cause unnecessary delay
rules may generally be applied in the cost of reviewing the pending or to needlessly increase the cost of
actions arising before the change applications to be 180 million dollars prosecution before the Office. See
without raising retroactivity concerns). based on 600,000 pending applications. § 10.18(b)(2)(i). Thus, as part of the
Finally, this final rule does not raise A number of the comments suggested reasonable inquiry, the Office expects a
constitutional due process concerns. that the changes should be applicable party to review applications to ensure
This rule change does not preclude an only to claiming the benefit of that the desired amendments,
applicant from filing an application or applications filed on or after the arguments, or evidence that can be
receiving a patent containing any effective date (i.e., the changes should submitted during the prosecution of the
number of claims. Rather, the changes to be applicable only to non-continuing prior-filed (or before the close of
§ 1.75 in this final rule simply revise the applications filed on or after the prosecution in the) application are
procedures for presenting more than effective date). One comment suggested submitted rather than waiting to make
five independent claims or more than that the changes to § 1.78 should apply such submission in a later-filed
twenty-five total claims. As for the to applications filed on or after the continuation application. Therefore, it is
changes to § 1.78 in this final rule, the effective date with an exception for any unclear why the final rule would
filing of an application does not vest an applications that have a filing date
impose any significant additional cost
applicant with a due process right to on applicants.
earlier than one year from the effective
obtain continued examination via a Comment 334: Several comments
date. One comment suggested that in the suggested that if the Office adopts the
continuation application, continuation-
determination of the number of proposed changes to § 1.78, the Office
in-part application, or a request for
continued examination filings permitted should publish the final rule well in
continued examination for purposes of
without a petition and a showing, the advance of the effective date to provide
presenting amendments, arguments, or
Office should count only the continued sufficient time for applicants to adjust
evidence that could have been
examination filings filed on or after their prosecution strategies in any
submitted prior to close of prosecution
January 3, 2006. One comment pending applications. A few comments
in the initial application (or the prior-
suggested that the Office should permit further suggested a time period of six
filed application).
Comment 333: A number of applicants to file one more continued months to one year between the
comments suggested that the Office examination filing on or after the publication of the final rule and the
should not retroactively affect any effective date. effective date. Furthermore, a few
pending applications when adopting the Response: This final rule provides comments suggested that the changes to
changes to § 1.78. Specifically, the that an applicant is not required to meet § 1.78 should be implemented in
comments disagreed with the Office’s the requirements set forth in § 1.78(d)(1) phases. One of the comments provided
decision to apply the changes to § 1.78 if: (1) The application claims the benefit an example that the changes would
to any applications filed on or after the under 35 U.S.C. 120, 121, or 365(c) only initially apply only to non-continuing
effective date of the final rule, which of nonprovisional applications or applications filed on or after the
would result in an applicant being able international applications filed before effective date, and then six months after
to file only one continuation or the publication date of this final rule in the effective date, the changes would
continuation-in-part application (and the Federal Register; and (2) there is no apply to applications that have an
not ‘‘one more’’ continuation or other application filed on or after the effective filing date more than four years
continuation-in-part application) on or publication date of this final rule in the before the effective date.
after the effective date of the final rule Federal Register that also claims the Response: This final rule has been
without meeting the requirements benefit under 35 U.S.C. 120, 121, or published well (more than sixty days) in
specified in § 1.78(d)(1)(i) or (d)(1)(iii) 365(c) of such prior-filed advance of the November 1, 2007,
or including a petition under nonprovisional applications or effective date of the changes in this final
§ 1.78(d)(1). The comments argued that international applications. This will rule. As previously discussed, this final
the changes would retroactively affect provide applicants with ‘‘one more’’ rule permits applicants to file ‘‘one
more’’ continuation or continuation-in- comments estimated the cost to be 100 Consolidated Appropriations Act), for
part application of an application that to 120 million dollars to designate such claim.
was filed prior to the publication date representative claims in pending Comment 337: One comment
of this final rule in the Federal Register applications, and one comment suggested that if the changes to § 1.75
without a petition and showing, and to estimated the cost to be 180 million are retroactively applied to applications
file (at least) ‘‘one more’’ divisional dollars. Several comments argued that filed before the effective date, the Office
application in compliance with small entities are less able to absorb should automatically consider certain
§ 1.78(d)(1)(ii) of an application that was expenses associated with reviewing and claims as representative when applicant
filed prior to the effective date of this revising pending applications. This fails to designate claims within the time
final rule without a petition and could prevent small entities from period set forth in a notice requiring the
showing. The Office published the prosecuting pending applications. designation of representative claims.
Continuing Applications Proposed Rule Several comments argued that because One comment inquired about requiring
and the Claims Proposed Rule in the applicants already paid the increased applicants to take action on applications
Federal Register on January 3, 2006, in the backlog within the first month
claims fees under the Consolidated
which set forth proposed changes to the following enactment of the proposed
Appropriations Act, 2005, in the
practice for continued examination rules. One comment suggested that the
pending applications for the Office to
filings, patent applications containing Office should send a notice giving
examine all of the claims, the new applicant three months (extendable to
patentably indistinct claims, and
requirements would constitute a taking six months) within which to designate
examination of claims in patent
by the Federal Government. Several the representative claims in each
applications. Applicants have been
provided with a time period of more comments also argued that applicants pending application and, if necessary, to
than one and a half years from the did not anticipate the additional costs in file an examination support document.
publication date of the proposed rules to reviewing and amending the Response: As discussed previously,
the effective date of this final rule, and applications for compliance with the this final rule does not adopt the
a time period of more than sixty days new requirements. ‘‘representative claims’’ examination
from the publication of the final rule to Response: The Office has revised approach. Under this final rule,
the effective date. Therefore, applicants § 1.75 to provide that if an application applicant is permitted to present more
should have sufficient advance notice of contains more than five independent than five independent claims or more
the rule changes. claims or more than twenty-five total than twenty-five total claims if
Comment 335: One comment claims, the applicant must submit an applicant files an examination support
suggested a transitional practice for examination support document in document before a first Office action on
divisional applications, permitting compliance with § 1.265. Of the the merits of an application. The Office
benefit claims to be added only to applications currently awaiting does not expect that most applicants
applications filed on or before the examination for which claim data is will need to take any action to comply
effective date in serial divisional available in PALM (which is over ninety with the changes to § 1.75 in this final
applications. percent of the applications for which rule within the first month following the
Response: Section 1.78(d)(1)(ii) as preexamination processing is complete), effective date of this final rule because
adopted in this final rule permits an about thirty percent contain more than the majority of applications contain five
applicant to file a divisional application five independent claims or more than or fewer independent claims and
of an application for the claims to a non- twenty-five or fewer total claims. The
twenty-five total claims. Therefore, the
elected invention that has not been Office will provide an applicant who
Office’s decision to grandfather only
examined if the application was subject filed a nonprovisional application under
pending applications in which a first
to a requirement for restriction. The 35 U.S.C. 111(a) before November 1,
Office action on the merits was mailed
divisional application need not be filed 2007, or a nonprovisional application
before November 1, 2007 (the effective
during the pendency of the application that entered the national stage after
subject to a requirement for restriction, date of the changes in this final rule) compliance with 35 U.S.C. 37 before
as long as the copendency requirement with respect to the changes to § 1.75 November 1, 2007, and who would be
of 35 U.S.C. 120 is met. Thus, applicant will not affect the majority of affected by the changes in the final rule,
may file the divisional application applications that are currently pending with an opportunity to submit: (1) An
during the pendency of the application before the Office. In addition, the examination support document; (2) a
that was subject to a requirement for changes in this final rule do not new set of claims such that the
restriction or the pendency of any preclude an applicant from filing an application contains five or fewer
continuing application of such an application or obtaining a patent independent claims and twenty-five or
application. containing any number of claims, but fewer total claims; or (3) a suggested
Comment 336: A number of simply changes the procedures for restriction requirement. Specifically, the
comments suggested that the changes to applications containing more than five Office will issue a notice setting a two-
§ 1.75 should apply only to applications independent claims or more than month time period that is extendable
filed on or after the effective date. A twenty-five total claims. Therefore, under § 1.136(a) or (b) within which the
number of comments disagreed with the there is no support for the proposition applicant must exercise one of these
Office’s decision to apply the changes to that the changes in this final rule options in order to avoid abandonment
§ 1.75 to applications filed before the amount to a ‘‘taking’’ by the of the application. The Office, however,
effective date. Several comments further government. Additionally, § 1.117 as may combine such a notice with a
argued that the cost of ‘‘retroactively’’ adopted in this final rule provides that requirement for restriction, in which
applying the rule changes would be if an amendment canceling a claim is case the applicant must make an
enormous to applicants, especially to filed before an examination on the election responsive to the restriction
small entities, because most applicants merits has been made of the application, requirement and, if there are more than
would be required to review their the applicant may request a refund of five independent claims or more than
pending applications for compliance any excess claims fee paid on or after twenty-five total claims drawn to the
with the new requirement. Several December 8, 2004 (fees paid under the elected invention, the applicant must
also: (1) File an examination support Comment 339: A number of participation by third parties is
document in compliance with § 1.265; comments suggested that to help reduce currently pending before Congress. If
or (2) amend the application such that the backlog of pending applications the enacted, the Office will implement the
it contains five or fewer independent Office should provide a procedure legislation accordingly.
clams and twenty-five or fewer total under which an applicant may request Comment 342: A number of
claims drawn to the elected invention. deferral of examination of the comments suggested expanding the
Thus, if such a notice is combined with application. opportunity under § 1.99 for third
a requirement for restriction, the Response: The rules of practice parties to submit prior art references in
applicant does not have the option of currently have a procedure under which applications; for example, up to a first
replying to such notice with a suggested an applicant may request deferral of Office action.
restriction requirement under § 1.142(c). examination. Specifically, § 1.103(d) Response: The Office has proposed
permits deferral of examination for up changes to § 1.99 that would extend the
M. Miscellaneous to three years from the earliest filing period for submission of information
Comment 338: One comment date for which a benefit is claimed from two months after pre-grant
suggested that the changes to § 1.78 are under title 35, United States Code. The publication of the application to six
contrary to the purpose of the Bayh-Dole Office publishes any application in months after pre-grant publication of the
Act. which a deferral of examination under application, or mailing of a notice of
Response: The Bayh-Dole University § 1.103(d) is requested. The entire allowance, whichever occurs first. See
and Small Business Patent Procedures period of deferral is a reduction under Changes To Information Disclosure
Act (Pub. L. 96–517, 94 Stat. 3015–28 § 1.704(c)(1) of any patent term Statement Requirements and Other
(codified at 35 U.S.C. 200 et seq.)), adjustment. Related Matters, 71 FR at 38816, 38822,
concerns patent rights in inventions Comment 340: A number of 1309 Off. Gaz. Pat. Office at 31, 36.
made with federal assistance. comments suggested variations of the Comment 343: One comment
Specifically, 35 U.S.C. 200 provides deferral of examination procedure under questioned applicant’s recourse if a
that: § 1.103(d), including, inter alia, third party submission was filed in his
providing for automatic deferral of or her application.
It is the policy and objective of the examination, extending the period of Response: Applicant’s recourse would
Congress to use the patent system to promote deferral, allowing third party requests be the same as it currently is when a
the utilization of inventions arising from for examination of deferred third party submits patents or
federally supported research or development; publications pursuant to § 1.99 in a
to encourage maximum participation of small
applications, eliminating any negative
business firms in federally supported impact on patent term adjustment published patent application. Applicant
research and development efforts; to promote resulting from deferral, adopting will have an opportunity to comment on
collaboration between commercial concerns deferral of examination procedures used any patents or publications relied upon
and nonprofit organizations, including in other countries such as Japan and by the examiner in a rejection of
universities; to ensure that inventions made Canada, tying the period of deferral to applicant’s claims. Note, however, 35
by nonprofit organizations and small the actual filing date of the application U.S.C. 122(c) prohibits third party
business firms are used in a manner to rather than the claimed benefit date, and protests.
promote free competition and enterprise establishing deferral fees based on the Comment 344: Several comments
without unduly encumbering future research suggested that prior art submissions by
and discovery; to promote the length of deferral.
commercialization and public availability of Response: The deferral of examination third parties should be required to
inventions made in the United States by procedure set forth in § 1.103(d) was conform to current information
United States industry and labor; to ensure used in fewer than two hundred disclosure statement rules. These
that the Government obtains sufficient rights applications since November 29, 2000 comments also suggested that either
in federally supported inventions to meet the (the effective date of § 1.103(d)). The statements of relevance for each
needs of the Government and protect the Office did not propose any changes to submitted document, or arguments why
public against nonuse or unreasonable use of the deferral of examination procedure in the claims are unpatentable in view of
inventions; and to minimize the costs of the notices of proposed rulemaking the cited documents, should accompany
administering policies in this area.
published on January 3, 2006, in the the submissions.
The changes to § 1.78 adopted in this Federal Register. In view of the Response: Prior to the publication of
final rule do not concern patent rights comments received on the deferral of a patent application, a third party may
in inventions made with federal examination procedure, the Office is file prior art submissions in compliance
assistance and do not impinge upon any studying whether changes (e.g., the with the requirements of § 1.291 in the
of the policies or objectives set forth in maximum deferral period, third party application. After the publication of the
35 U.S.C. 200. The changes in this final request for examination, and patent application, § 1.99 only permits a third
rule do not treat patent applications term adjustment) to the deferral of party to file up to ten patents or
resulting from federally supported examination procedure would be publications per submission. Section
research differently from other patent appropriate. 1.99 does not permit the third party to
applications. The policy objectives of Comment 341: Several comments file comments regarding the documents,
the Bayh-Dole Act do not encourage or opposed third party participation, but or comments regarding the patentability
condone more favorable treatment of suggested that the Office could move of the claims in view of the documents.
patent applications resulting from toward providing a post-grant Additionally, permitting a third party to
federally supported research. See Univ. opposition period, similar to that file an explanation of relevance would
of Rochester v. G.D. Searle & Co., 358 currently offered in Europe, during rise to the level of a protest, which is
F.3d 916, 929, 69 U.S.P.Q.2d 1886, 1896 which the public could oppose issued prohibited by 35 U.S.C. 122(c).
(Fed. Cir. 2004) (none of the eight policy patents and make prior art submissions Comment 345: Several comments
objectives of the Bayh-Dole Act so the patent could receive a post-grant suggested allowing a third party to
encourages or condones less stringent review. request examination of an application
application of the patent laws to Response: Legislation regarding post- upon paying a fee during a time frame
universities than to other entities). grant opposition and related such as between thirty-six and forty-
eight months from the application filing purpose of studying problems effectively foreclose the applicant’s
date. One comment suggested experienced by the Office and proposing opportunity to make a case on the
permitting third parties to request solutions that would be tailored to merits (i.e., the changes being adopted
accelerated examination of long- address those problems. The comments in this final rule continue to provide
pending applications by submitting recommended that the Office should patent applicants with numerous
documents required for accelerated bring together all the relevant parties, opportunities). Therefore, these rule
examination. including the Office, patent changes involve interpretive rules, or
Response: Under the current patent practitioners, patentees, litigators, and rules of agency practice and procedure.
laws and regulations, it is not proper for judges, to arrive at a solution that See Bachow Communs., Inc. v. FCC, 237
a third party to be involved in the benefits all parties in the patent system. F.3d 683, 690 (DC Cir. 2001) (rules
examination of an application owned by Response: 35 U.S.C. 2(b)(2)(B) directs governing an application process are
another which includes seeking to the Office to follow the procedures set ‘‘rules of agency organization,
accelerate the examination of an forth in 5 U.S.C. 553 in adopting procedure, or practice’’ and exempt
application that is properly awaiting its changes to the rules of practice, and 35 from the Administrative Procedure Act’s
turn to be examined. Permitting a third U.S.C. 3(a)(2)(B) directs the Office to notice and comment requirement); see
party to advance prosecution of an consult with the Patent Public Advisory also Fressola v. Manbeck, 36 USPQ2d
application may be considered in the Committee when proposing or adopting 1211, 1215 (D.D.C. 1995) (‘‘it is
future for those instances in which an changes to the rules of practice that extremely doubtful whether any of the
applicant has requested deferral of the change user fees or are subject to notice rules formulated to govern patent or
examination. However, at this time, the and comment under 5 U.S.C. 553. The trade-mark practice are other than
Office has not elected to amend Office published notices of proposed ‘interpretive rules, general statements of
§ 1.103(d) to permit such action, in rule making pursuant to 5 U.S.C. 553(b) policy, * * * procedure, or practice.’ ’’)
order to further study the issue and to in advance of this final rule, provided (quoting C.W. Ooms, The United States
provide the public additional an extended comment period to give Patent Office and the Administrative
opportunity to comment. interested persons an opportunity to Procedure Act, 38 Trademark Rep. 149,
Comment 346: One comment submit written data, views, or 153 (1948)). Accordingly, prior notice
suggested the use of authorized third arguments pursuant to 5 U.S.C. 553(c), and an opportunity for public comment
party prior art searches. and has published this final rule at least were not required pursuant to 5 U.S.C.
Response: Patents or publications thirty days in advance of its effective 553(b)(A) (or any other law), and thirty-
filed by a third party in compliance date pursuant to 5 U.S.C. 553(d). The day advance publication is not required
with § 1.99 may be entered in the file of Office also consulted with the Patent pursuant to 5 U.S.C. 553(d) (or any other
a published application. Examiners may Public Advisory Committee prior to law). Nevertheless, the Office sought
use any of these references in a publishing the notices of proposed rule public comment on proposed changes to
rejection, if appropriate.
making and this final rule. The Office these rules of practice to obtain the
also conducted four public meetings to benefit of such input prior to adopting
were critical of the Office’s position that
the proposed changes to the practice for obtain feedback from the public on the the changes to the rules of practice in
continuing applications, request for proposed changes which resulted in the this final rule.
continued examination, and changes being adopted in this final rule:
(1) The first in Chicago, Illinois, on B. Regulatory Flexibility Act
applications containing patentably
indistinct claims will not create any February 1, 2006; (2) the second in As prior notice and an opportunity for
additional work for the applicant. Berkeley, California, on February 28, public comment are not required
Response: The changes being adopted 2006; (3) the third in Houston, Texas, on pursuant to 5 U.S.C. 553 (or any other
in this final rule will not require any March 22, 2006; and (4) the fourth in law), neither a regulatory flexibility
additional submissions for the majority Alexandria, Virginia (at the Office’s analysis nor a certification under the
of patent applications. Prosecution, Carlyle campus) on April 25, 2006. The Regulatory Flexibility Act (5 U.S.C. 601
however, may be more compact since number of comments submitted in et seq.) are required. See 5 U.S.C. 603.
the number of continuing applications response to the notices of proposed rule Nevertheless, the Office published
and requests for continued examination making indicates that interested persons notices of proposed rule making setting
permitted without any justification is and organizations have been given forth the factual basis for certification
being limited. Nevertheless, the changes ample opportunity to provide input on under the Regulatory Flexibility Act and
being adopted in this final rule will the changes being adopted in this final sought public comment on that
result in more effective and efficient rule. certification. See Changes to Practice for
examination without any additional IV. Rule Making Considerations the Examination of Claims in Patent
work on the part of the majority of Applications, 71 FR at 66, 1302 Off.
applicants. A. Administrative Procedure Act Gaz. Pat. Office at 1333, and Changes to
Comment 348: Several comments This notice adopts changes to the Practice for Continuing Applications,
recommended that the Office should rules of practice that concern the Requests for Continued Examination
conduct a public hearing before process for applying for a patent, Practice, and Applications Containing
adopting the rule changes. One namely, continuing applications and Patentably Indistinct Claims, 71 FR at
comment suggested that the Office requests for continued examination 56–57, 1302 Off. Gaz. Pat. Office at
should issue a green paper or advance practices, the treatment of applications 1325. For the reasons set forth herein,
notice of proposed rule making to containing more than a set number of the Deputy General Counsel for General
receive more input and perform a cost- independent or total claims, and the Law of the United States Patent and
benefit analysis on the rule changes. treatment of multiple applications Trademark Office has certified to the
One comment recommended that the containing patentably indistinct claims. Chief Counsel for Advocacy of the Small
Office should form a patent practice The changes being adopted in this Business Administration that the
advisory committee, consisting of notice do not change the substantive changes in this final rule will not have
volunteers from the patent bar, for the criteria of patentability and do not a significant economic impact on a
substantial number of small entities. See requirement threshold of five small entities would be affected by the
5 U.S.C. 605(b). independent claims or twenty-five total requirement to submit a petition for an
This final rule provides that: (1) A claims, rather than ten representative additional continued examination filing,
third or subsequent continuation or claims; (2) this final rule provides that and that about 0.3 percent of small
continuation-in-part application or any small entities as defined by the entities would be affected by both the
second or subsequent request for Regulatory Flexibility Act are exempt requirement to submit an examination
continued examination must include a from the requirement that an support document and the requirement
showing as to why the amendment, examination support document must, to submit a petition for an additional
argument, or evidence sought to be for each cited reference, include an continued examination filing. A copy of
entered could not have been submitted identification of all of the limitations of the report containing this analysis is
prior to the close of prosecution after a each of the claims that are disclosed by available on the Office’s Internet Web
first and second continuation or the reference; (3) this final rule adopts site at http://www.uspto.gov.
continuation-in-part application and a a continued examination filing petition As a result of this analysis, the Office
request for continued examination; (2) threshold of two continuing has determined that it is appropriate to
any divisional application be the result applications (continuation or make a certification that the changes
of a requirement to comply with the continuation-in-part applications), plus being adopted in this final rule would
requirement of unity of invention under a request for continued examination in not have a significant economic impact
PCT Rule 13 or a requirement for any one of the initial or two continuing on a substantial number of small
restriction under 35 U.S.C. 121 in the applications, rather than one entities. The Office has revised the final
prior-filed application; (3) an continuation application, continuation- rule requirements, as discussed
application that contains or is amended in-part application, or request for previously, to further reduce economic
to contain more than five independent continued examination; (4) this final impacts on small entities.
claims or more than twenty-five total rule does not require that a divisional SBA-Advocacy commented that while
claims must include an examination application be filed during pendency of the Office asserts that preparation of the
support document under 37 CFR 1.265 initial application; and (5) this final rule examination support document should
that covers each claim (whether in provides for at least ‘‘one more’’ cost about $2,500, small entities
independent or dependent form) before continuation or continuation-in-part contend that completing an examination
the first Office action on the merits; and application after the effective date, support document will be more costly,
(4) multiple applications that have the regardless of the number of previous time consuming and restrict their ability
same claimed filing or priority date, continued examination filings. to prosecute patents vigorously. SBA-
substantial overlapping disclosure, a Advocacy also commented that small
common inventor, and a common In addition, the Office commissioned entity representatives have provided
assignee include either an explanation a detailed analysis of the impacts of this feedback that completion of an
as to how the claims are patentably final rule on small entities. The analysis examination support document could
distinct, or a terminal disclaimer and concludes that this final rule is not cost from $25,000 to $30,000.
explanation as to why patentably expected to result in a significant The Claims Proposed Rule referenced
indistinct claims have been filed in economic impact on a substantial a $2,500 figure covering a patent novelty
multiple applications. number of small entities. The analysis search, analysis, and opinion, as
In response to the Office’s measured economic impact in terms of reported in a 2003 survey conducted by
certification in the notices of proposed annualized incremental cost as a the American Intellectual Property Law
rule making, the Small Business percentage of revenue. The analysis Association (AIPLA). The Office agrees
Administration Office of Advocacy indicated that the incremental cost (not with the comments that this figure is
(SBA-Advocacy) submitted a comment annualized) would be between $2,563 probably less than the cost of an
contending that the proposed changes and $13,121 for an entity who would be examination support document in most
are likely to have a significant economic required to file an examination support situations. Therefore, the Office has
impact on a substantial number of small document, a petition for an additional further analyzed costs based on the
entities, including small businesses and continued examination filing, or both. modified examination support
small independent inventors. SBA- The analysis presumed that an document requirements applicable to
Advocacy recommended that the Office economic impact greater than three small entities. The analysis models cost
conduct a supplemental Initial percent of annualized incremental cost variability based on the number of
Regulatory Flexibility Analysis before as a percentage of revenue was a claims the examination support
publishing a final rule. significant impact. The analysis document must address, and on
The Office’s analysis of the proposed indicated that no small entities fell into whether or not a prior art search was
rules indicated that the rules would not this category. The analysis also conducted when the application was
have a significant economic impact on presumed that an economic impact prepared. Based on this analysis, the
a substantial number of small entities. greater than one percent of annualized Office estimates that the examination
The Office considered all public incremental cost as a percentage of support document costs for small
comments addressing small entities, revenue was a more moderate impact. entities will range from $2,563 up to
including those submitted by SBA- The analysis indicated that fewer than $13,121, although this latter figure
Advocacy. In response to these one percent of small entities fell into assumes the examination support
comments, this final rule incorporates a this category. The analysis also document must address as many as fifty
number of revisions designed to further presumed that a substantial number of independent claims or three hundred
reduce the number of small entities small entities are affected if more than and fifty total claims. Only a small
affected by the changes and the impacts twenty percent of small entities are number of small entities, however, will
on small entities. These changes in this impacted. The analysis indicated that be required to prepare an examination
final rule vis-á-vis the proposed rules about 1.0 percent of small entities support document, and nearly all of
that reduce small entity impacts are as would be affected by the requirement to these will incur costs towards the lower
follows: (1) This final rule adopts an submit an examination support end of the range. Thus, the Office does
examination support document document, that about 2.7 percent of not expect the final rule to result in a
significant impact on a substantial applicant’s ability to obtain these growing backlog of unexamined
number of small entities. commercially valuable patents. applications. With respect to having to
SBA-Advocacy commented that small SBA-Advocacy commented that small use the appeals process in place of
entity representatives have asserted that, entity representatives have indicated additional continued examination
taken together, the two proposed that limiting applicants to ten filings, if an applicant disagrees with
changes would increase the cost of representative claims would make it the examiner’s rejections, the applicant
application preparation and hinder the very difficult to properly identify a should file an appeal rather than filing
patent prosecution process. potential patent, could create future a continuation application or a request
As discussed previously, the Office liability concerns, and would weaken for continued examination, for reasons
commissioned a detailed analysis of the potential patents. discussed in detail in the statement of
impact of the final rule on small The final rule requirements apply to considerations for the final rule. The
entities. The analysis explicitly patent applications with more than five Office believes that applicants should
considered the combined cost of both independent claims or more than have sufficient opportunity to place the
proposed rules (which have been twenty-five total claims, rather than ten application in condition for appeal
combined into a single final rule). The representative claims. As discussed during the prosecution of the initial
analysis concludes that the final rule is previously, applicants with more than application, two continuing
not expected to result in a significant five but less than fifteen independent applications, and a request for
economic impact on a substantial claims, or more than twenty-five but continued examination. An applicant
number of small entities. less than seventy-five total claims, to an who considers this to be insufficient
invention are able to prosecute their may file a third or subsequent
SBA-Advocacy commented that small
application in a manner that does not continuing application or second or
entity representatives have raised
trigger the claims or continuations subsequent request for continued
concerns that the proposed changes will
requirements. Specifically, an applicant examination with a petition showing
significantly impact the most valuable
may do this by submitting an initial why the amendment, argument, or
and commercially viable patents
application containing up to five evidence sought to be entered could not
because those types of patents typically
independent claims and up to twenty- have been previously submitted.
involved a higher number of
five total claims, and then adding a SBA-Advocacy commented that the
continuations.
similar number of claims in each of two proposed changes will affect a
The Office notes that there are studies continuation applications (or two substantial number of small entities,
espousing the position that many continuation-in-part applications, or and that the two proposed changes to
commercially valuable patents are the one continuation application and one the rules reshape the basic rights of any
result of a continuing application, or of continuation-in-part application) small entity that files a patent
a second or subsequent continuing permitted without a petition. Moreover, application.
application. However, these studies do even for those applications that will The Office agrees that the final rule
not support the position that the require an examination support places new requirements on the current
applicants could not have obtained document, the requirement does not patent application process. However,
these commercially valuable patents but ‘‘limit’’ applicants to any particular the Office’s analysis indicates that the
for the availability of an unlimited number of claims. Applicants may rule will not have a significant
number of continuing applications. That continue to submit as many claims as economic impact on a substantial
is, these studies do not show that these necessary to appropriately claim their number of small entities. In fact, only a
commercially valuable patents could inventions, even if doing so required small proportion of small entities will
not have been obtained via two or fewer them to prepare and submit an be affected by the changes in this final
continuing applications prosecuted with examination support document. rule.
a reasonable amount of foresight and SBA-Advocacy commented that small SBA-Advocacy commented that small
diligence. Thus, these studies do not entity representatives have contended entity representatives have contended
demonstrate that these commercially that limiting continuation applications that the definition of small entity that
valuable patents happen to be the result and examinations would inhibit their the Office uses in its certification is for
of a continuing application or of ability to enhance their applications, calculating filing fees and excludes any
multiple continuing applications for any significantly increase costs through new small entity that has a contractual
reason other than simply because the fees, and force small entities to seek arrangement involving the invention
prosecution tactics employed in the review through the very expensive with a larger company. SBA-Advocacy
applications underlying these patents appeals process. Small entity commented that small entity
were based upon the availability of an representatives thus assert that limiting representatives have further asserted
unlimited number of continuing the number of continuations could that small business size standards for
applications. severely weaken small entities’ ability to Regulatory Flexibility Act purposes do
The analysis commissioned by the protect their patents. not include this restriction so the
Office specifically considered the claim The Office analysis indicates that the number of small businesses affected is
that the most valuable and continued examination filing likely to be larger than stated in the
commercially viable patents are those requirements adopted in this final rule certification.
types of patents that typically involved will not lead to significant cost The Regulatory Flexibility Act
a higher number of continuations. The increases nor will it have a significant permits an agency head to establish, for
Office ultimately rejected the claim that economic impact on a substantial purposes of Regulatory Flexibility Act
this final rule will preclude applicants number of small entities. The analysis and certification, one or more
from being able to obtain a patent on the requirements are necessary to ensure definitions of ‘‘small business concern’’
most valuable and commercially viable that patent applications are of that are appropriate to the activities of
patents due to the speculative nature of reasonable quality and that applicants the agency, after consultation with the
the nexus drawn between the pursue their patents in good faith. The Office of Advocacy of the Small
availability of an unlimited number of excessive use of continued examination Business Administration and after
continuing applications and an filings has been a major factor in the opportunity for public comment. See 5
U.S.C. 601(3) and 13 CFR 121.903(c). increase the number of permissible application in a manner that does not
Pursuant to this authority, the Office has continuing applications. trigger the claims or continuations
established the following definition of The final rule changes the continued requirements.
small business concern for purposes of examination filing petition threshold SBA-Advocacy suggested that with
the Office conducting an analysis or from a single continuation application, respect to the claims requirements, the
making a certification under the continuation-in-part application, or Office should provide expedited review
Regulatory Flexibility Act for patent- request for continued examination as of applications that contain ten or fewer
related regulations: A small business proposed to two continuing applications representative claims. The Office has
concern for Regulatory Flexibility Act (continuation or continuation-in-part considered the suggestion to provide
purposes for patent-related regulations applications), and a single request for expedited examination to applications
is a business or other concern that: (1) continued examination in any one of the containing less than a set number of
Meets the Small Business initial or two continuing applications. claims. As discussed previously, the
Administration’s definition of a SBA-Advocacy suggested that with Office currently has an accelerated
‘‘business concern or concern’’ set forth respect to the continued examination examination program for applicants
in 13 CFR 121.105; and (2) meets the filing requirement, the Office should who limit the number of claims in their
size standards set forth in 13 CFR consider increasing the fees for applications (to no more than three
121.802 for the purpose of paying additional continuation applications. independent claims and no more than
reduced patent fees, namely, an entity: Currently, patent application and twenty total claims) and who also
(a) Whose number of employees, excess claims fees are set by statute (35 provide an accelerated examination
including affiliates, does not exceed 500 U.S.C. 41(a)). In 2002, the Office support document. Therefore, the Office
persons; and (b) which has not assigned, proposed a patent fee structure that did not pursue this alternative in the
granted, conveyed, or licensed (and is included a graduated excess claims fees final rule.
under no obligation to do so) any rights schedule and additional fees for SBA-Advocacy suggested that with
in the invention to any person who continued examination filings. As respect to the claims requirements, the
made it and could not be classified as discussed previously, however, the Office should not apply the regulation
an independent inventor, or to any Office was unable to garner sufficient to the backlog of pending unexamined
concern which would not qualify as a support from patent user groups for a applications.
non-profit organization or a small patent fee structure including a The Office has considered not
business concern under this definition. graduated excess claims fees schedule applying the claims requirement to
See Business Size Standard for Purposes or any additional fees for continued pending applications that have not yet
of United States Patent and Trademark examination filings. Therefore, the been examined to minimize the impact
Office Regulatory Flexibility Analysis for Office did not pursue this alternative. on small entities. The examination
Patent-Related Regulations, 71 FR SBA-Advocacy suggested that with support document threshold being
67109, 67112 (Nov. 20, 2006), 1313 Off. respect to the continued examination adopted in this final rule (i.e., more than
Gaz. Pat. Office 60, 63 (Dec. 12, 2006) filing requirement, the Office should five independent claims or more than
(notice). Prior to establishing this defer review of subsequent continuation twenty-five total claims) means that
definition of small business concern for applications. most small entity applications will not
purposes of the Office conducting an The Office considered expanding the be impacted by the final rule or the
analysis or making a certification under deferral of examination provisions to decision to apply the final rule to the
the Regulatory Flexibility Act for patent- allow a longer deferral of examination backlog of unexamined applications.
related regulations, the Office consulted period. The Office currently has a Given the current backlog of over
with the Small Business Administration provision (37 CFR 1.103(d)) under 700,000 unexamined applications, a
Office of Advocacy and published such which an applicant may request deferral decision to not apply the changes to the
a definition for public comment. See of examination for up to three years backlog of unexamined applications
Size Standard for Purposes of United from the earliest filing date for which a would mean that it would be calendar
States Patent and Trademark Office benefit is claimed. As discussed year 2010 before the Office would see
Regulatory Flexibility Analysis for previously, the Office is studying any benefit from the change, and that
Patent-Related Regulations, 71 FR whether changes (e.g., the maximum the Office (and applicants) would be in
38388 (Jul. 6, 2006), 1309 Off. Gaz. Pat. deferral period, third party request for a transition state until late calendar year
Office 37 (Aug. 1, 2006) (notice). The examination, and patent term 2011. Therefore, this suggestion was not
Small Business Administration small adjustment) to the deferral of adopted in the final rule.
entity size standards set forth in 13 CFR examination procedure would be The Office also received a number of
121.802 excludes any business concern appropriate. additional comments from the public
that has assigned, granted, conveyed, or SBA-Advocacy suggested that with generally asserting that the Office did
licensed any rights in the invention to respect to the claims requirements, the not comply with the requirements of the
an entity which would not qualify for Office should expand the number of Regulatory Flexibility Act in certifying
small entity status. representative claims included in initial that the changes in this rule making will
Nevertheless, in analyzing the review. not have a significant economic impact
provisions of the final rule, the Office The Office has revised the final rule on a substantial number of small
explicitly considered a sensitivity to change the examination support entities. The comments stated that: (1)
analysis that assumed all patent document threshold from ten In light of the fact that several large
applicants qualified as small entities. representative claims to five companies support the proposed
Even under this sensitivity analysis, this independent claims or twenty-five total changes it is questionable whether the
final rule is not expected to result in a claims. As discussed previously, rule changes are truly neutral towards
significant impact on a substantial however, applicants with more than five small companies and that a bias in favor
number of small entities. but less than fifteen independent of large companies and against small
SBA-Advocacy suggested that with claims, or more than twenty-five but entities could be in violation of the
respect to the continued examination less than seventy-five total claims, to an Regulatory Flexibility Act; (2) the
filing requirements, the Office should invention are able to prosecute their Office’s certification did not adequately
address the impact of the proposed rules with respect to the need to take more governments; or (3) preempt tribal law.
on small entities, and the Office failed significant steps to address patent Therefore, a tribal summary impact
to provide a credible factual basis to quality and pendency. statement is not required under
justify its certification that the proposed As discussed previously, the Office Executive Order 13175 (Nov. 6, 2000).
rules would not have a significant commissioned a detailed analysis of the
final rule’s impact on small entities. As F. Executive Order 13211 (Energy
economic impact on a substantial
a result of this analysis, the Office has Effects)
number of small entities in compliance
with 5 U.S.C. 605(b); (3) the rule determined that it is appropriate to This rule making is not a significant
changes would have a significant make a certification that the changes energy action under Executive Order
economic impact on a substantial being adopted in this final rule would 13211 because this rule making is not
number of small entities seeking patents not have a significant economic impact likely to have a significant adverse effect
due to the additional costs associated on a substantial number of small on the supply, distribution, or use of
with preparing an application, entities. Therefore, the Office is not energy. Therefore, a Statement of Energy
establishing the required showing under required to conduct a Regulatory Effects is not required under Executive
37 CFR 1.78(d)(1)(vi) and 1.114(g), and Flexibility Analysis. Order 13211 (May 18, 2001).
supplying an examination support Pursuant to 5 U.S.C. 605(b), the
G. Executive Order 12988 (Civil Justice
document in compliance with 37 CFR requirements in 5 U.S.C. 603 and 604
Reform)
1.265, and would hinder the abilities of for an initial and final Regulatory
small entities to enhance their Flexibility Analysis (including This rule making meets applicable
applications and protect their identification of viable regulatory standards to minimize litigation,
inventions; (4) the definition of small alternatives to the proposed rules) do eliminate ambiguity, and reduce burden
entities used by the Office in its not apply if the agency head certifies as set forth in sections 3(a) and 3(b)(2)
certification of the proposed rules is for that the changes will not have a of Executive Order 12988 (Feb. 5, 1996).
the purpose of paying reduced patent significant economic impact on a H. Executive Order 13045 (Protection of
fees and excludes any application from substantial number of small entities. In Children)
a small business that has assigned, accordance with 5 U.S.C. 605(b), the
granted, conveyed, or licensed any Deputy General Counsel for General This rule making is not an
rights in the invention to an entity Law of the United States Patent and economically significant rule and does
which would not qualify for small entity Trademark Office has certified to the not concern an environmental risk to
status; (5) the Office should prepare an Chief Counsel for Advocacy of the Small health or safety that may
initial Regulatory Flexibility Analysis Business Administration that the disproportionately affect children under
and republish the proposed rules before proposed changes would not have a Executive Order 13045 (Apr, 21, 1997).
issuing any final rule to enable the significant economic impact on a I. Executive Order 12630 (Taking of
Office to closely examine the impact on substantial number of small entities. Private Property)
the affected small entities, encourage The Office considers this rule making
to be in compliance with the This rule making will not effect a
small entities to comment on additional
requirements of the Regulatory taking of private property or otherwise
information provided by the analysis,
Flexibility Act. Thus, the possibility of have taking implications under
identify viable regulatory alternatives to
legal action does not warrant a decision Executive Order 12630 (Mar. 15, 1988).
the proposed rules, and demonstrate the
Office’s compliance with the Regulatory to delay proceeding with the changes J. Congressional Review Act
Flexibility Act; (6) the Office did not being adopted in this final rule to allow
for preparation of an initial and final Under the Congressional Review Act
describe any viable alternatives to the provisions of the Small Business
proposed rules to provide regulatory Regulatory Flexibility Analysis, or to
completely exempt small entities from Regulatory Enforcement Fairness Act of
relief to small entities as required under 1996 (5 U.S.C. 801 et seq.), the United
5 U.S.C. 603(c); (7) the rule changes complying with the changes being
adopted in this final rule. States Patent and Trademark Office will
would be invalid and vulnerable to submit a report containing this final rule
challenges under 5 U.S.C. 611 if the C. Executive Order 13132 (Federalism) and other required information to the
Office fails to comply with the U.S. Senate, the U.S. House of
requirements of the Regulatory This rule making does not contain
policies with federalism implications Representatives and the Comptroller
Flexibility Act; and (8) the Office should General of the Government
exempt small entities from complying sufficient to warrant preparation of a
Federalism Assessment under Executive Accountability Office. The changes in
with the proposed rules to avoid further this final rule will not result in an
scrutiny under the Regulatory Order 13132 (Aug. 4, 1999).
annual effect on the economy of 100
Flexibility Act. D. Executive Order 12866 (Regulatory million dollars or more, a major increase
The Office has received comments Planning and Review) in costs or prices, or significant adverse
from some large entities that the This rule making has been determined effects on competition, employment,
changes being adopted in this final rule to be significant for purposes of investment, productivity, innovation, or
have a bias against large entities, and Executive Order 12866 (Sept. 30, 1993), the ability of United States–based
has received comments from small as amended by Executive Order 13258 enterprises to compete with foreign–
entities that the changes being adopted (Feb. 26, 2002) and Executive Order based enterprises in domestic and
in this final rule have a bias in favor of 13422 (Jan. 18, 2007). export markets. Therefore, this final rule
large entities. The changes being is not a ‘‘major rule’’ as defined in 5
adopted in this final rule are neutral E. Executive Order 13175 (Tribal U.S.C. 804(2).
towards both small entities and large Consultation)

entities. That several large entities This rule making will not: (1) Have K. Unfunded Mandates Reform Act of
support the changes being adopted in substantial direct effects on one or more 1995
this final rule is more likely indicative Indian tribes; (2) impose substantial The changes in this final rule will not
of a willingness to take a systemic view direct compliance costs on Indian tribal result in the expenditure by State, local,
and tribal governments, in the aggregate, Office has resubmitted an information collected; and (4) ways to minimize the
or by the private sector, of 100 million collection package to OMB for its review burden of the collection of information
dollars or more in any one year, and it and approval because the changes in to respondents.
will not significantly or uniquely affect this notice do affect the information Interested persons are requested to
small governments. Therefore, no collection requirements associated with send comments regarding these
actions are necessary under the the information collection under OMB information collections, including
provisions of the Unfunded Mandates control number 0651–0031. suggestions for reducing this burden, to:
Reform Act of 1995. See 2 U.S.C. 1501 The title, description and respondent (1) The Office of Information and
et seq. description of the information collection Regulatory Affairs, Office of
under OMB control number 0651–0031 Management and Budget, New
L. National Environmental Policy Act
is shown below with an estimate of the Executive Office Building, Room 10202,
This rule making will not have any annual reporting burdens. Included in 725 17th Street, NW., Washington, DC
effect on the quality of environment and the estimate is the time for reviewing 20503, Attention: Desk Officer for the
is thus categorically excluded from instructions, gathering and maintaining Patent and Trademark Office; and (2)
review under the National the data needed, and completing and Robert A. Clarke, Director, Office of
Environmental Policy Act of 1969. See reviewing the collection of information. Patent Legal Administration,
42 U.S.C. 4321 et seq. OMB Number: 0651–0031. Commissioner for Patents, P.O. Box
M. National Technology Transfer and Title: Patent Processing (Updating). 1450, Alexandria, VA 22313–1450.
Form Numbers: PTO/SB/08, PTO/SB/ Notwithstanding any other provision
Advancement Act
17i, PTO/SB/17p, PTO/SB/21–27, PTO/ of law, no person is required to respond
The requirements of section 12(d) of SB/24B, PTO/SB/30–32, PTO/SB/35–39, to nor shall a person be subject to a
the National Technology Transfer and PTO/SB/42–43, PTO/SB/61–64, PTO/ penalty for failure to comply with a
Advancement Act of 1995 (15 U.S.C. SB/64a, PTO/SB/67–68, PTO/SB/91–92, collection of information subject to the
272 note) are inapplicable because this PTO/SB/96–97, PTO–2053–A/B, PTO– requirements of the Paperwork
rule making does not contain provisions 2054–A/B, PTO–2055–A/B, PTOL– Reduction Act unless that collection of
which involve the use of technical 413A.
standards. information displays a currently valid
Type of Review: Approved through OMB control number.
N. Paperwork Reduction Act September of 2007.
Affected Public: Individuals or List of Subjects in 37 CFR Part 1
This final rule involves information households, business or other for-profit
collection requirements which are Administrative practice and
institutions, not-for-profit institutions, procedure, Courts, Freedom of
subject to review by the Office of farms, Federal Government and State,
Management and Budget (OMB) under Information, Inventions and patents,
Local and Tribal Governments. Reporting and recordkeeping
the Paperwork Reduction Act of 1995 Estimated Number of Respondents:
(44 U.S.C. 3501 et seq.). The collection requirements, Small Businesses.
2,508,139.
of information involved in this final rule ■ For the reasons set forth in the
Estimated Time Per Response: 1
has been reviewed and approved by minute and 48 seconds to 24 hours. preamble, 37 CFR part 1 is amended as
OMB under OMB control number 0651– Estimated Total Annual Burden follows:
0031. This final rule provides that: (1) Hours: 3,724,791 hours.
A third or subsequent continuation or Needs and Uses: During the PART 1—RULES OF PRACTICE IN
continuation–in–part application or any processing of an application for a PATENT CASES
second or subsequent request for patent, the applicant or applicant’s ■ 1. The authority citation for 37 CFR
continued examination must include a representative may be required or desire part 1 continues to read as follows:
showing that the amendment, argument, to submit additional information to the Authority: 35 U.S.C. 2(b)(2).
or evidence sought to be entered could United States Patent and Trademark ■ 2. Section 1.17 is amended by revising
not have been submitted prior to the Office concerning the examination of a paragraph (f) to read as follows:
close of prosecution after a first and specific application. The specific
second continuation or continuation– information required or which may be § 1.17 Patent application and
in–part application and a request for submitted includes: information reexamination processing fees.
continued examination; (2) an disclosure statement and citation, * * * * *
application that contains or is amended examination support documents, (f) For filing a petition under one of
to contain more than five independent requests for extensions of time, the the following sections which refers to
claims or more than twenty–five total establishment of small entity status, this paragraph: $400.00
claims must include an examination abandonment and revival of abandoned § 1.36(a)—for revocation of a power of
support document under 37 CFR 1.265 applications, disclaimers, appeals, attorney by fewer than all of the
that covers each claim (whether in petitions, expedited examination of applicants.
independent or dependent form) before design applications, transmittal forms, § 1.53(e)—to accord a filing date.
the issuance of a first Office action on requests to inspect, copy and access § 1.57(a)—to accord a filing date.
the merits; and (3) multiple applications patent applications, publication § 1.78(d)(1)(vi)—for a continuing
that have the same claimed filing or requests, and certificates of mailing, application not provided for in
priority date, substantial overlapping transmittals, and submission of priority §§ 1.78(d)(1)(i) through (d)(1)(v).
disclosure, a common inventor, and a documents and amendments. § 1.114(g)—for a request for continued
common assignee must include either Comments are invited on: (1) Whether examination not provided for in
an explanation of how the claims are the collection of information is § 1.114(f).
patentably distinct, or a terminal necessary for proper performance of the § 1.182—for decision on a question
disclaimer and explanation of why functions of the agency; (2) the accuracy not specifically provided for.
patentably indistinct claims have been of the agency’s estimate of the burden; § 1.183—to suspend the rules.
filed in multiple applications. The (3) ways to enhance the quality, utility, § 1.378(e)—for reconsideration of
United States Patent and Trademark and clarity of the information to be decision on petition refusing to accept
delayed payment of maintenance fee in provisional application will be required are not mandatory for provisional
an expired patent. in the provisional application. See applications.
§ 1.741(b)—to accord a filing date to § 1.78(b). * * * * *
an application under § 1.740 for * * * * * ■ 6. Section 1.75 is amended by revising
extension of a patent term. ■ 5. Section 1.53 is amended by revising paragraphs (b) and (c) to read as follows:
* * * * * paragraphs (b) and (c)(4) to read as
■ 3. Section 1.26 is amended by revising
§ 1.75 Claim(s).
follows:
paragraphs (a) and (b) to read as follows: * * * * *
§ 1.53 Application number, filing date, and (b) More than one claim may be
§ 1.26 Refunds. completion of application. presented provided they differ
(a) The Director may refund any fee * * * * * substantially from each other and are
paid by mistake or in excess of that (b) Application filing requirements— not unduly multiplied. One or more
required. Except as provided in § 1.117 Nonprovisional application. The filing claims may be presented in dependent
or § 1.138(d), a change of purpose after date of an application for patent filed form, referring back to and further
the payment of a fee, such as when a under this section, except for a limiting another claim or claims in the
party desires to withdraw a patent filing provisional application under paragraph same application. A dependent claim
for which the fee was paid, including an (c) of this section or a continued must contain a reference to a claim
application, an appeal, or a request for prosecution application under previously set forth in the same
an oral hearing, will not entitle a party paragraph (d) of this section, is the date application, incorporate by reference all
to a refund of such fee. The Office will on which a specification as prescribed the limitations of the previous claim to
not refund amounts of twenty-five by 35 U.S.C. 112 containing a which such dependent claim refers, and
dollars or less unless a refund is description pursuant to § 1.71 and at specify a further limitation of the
specifically requested, and will not least one claim pursuant to § 1.75, and subject matter of the previous claim.
notify the payor of such amounts. If a any drawing required by § 1.81(a) are (1) An applicant must file an
party paying a fee or requesting a refund filed in the Patent and Trademark examination support document in
does not provide the banking Office. No new matter may be compliance with § 1.265 that covers
information necessary for making introduced into an application after its each claim (whether in independent or
refunds by electronic funds transfer (31 filing date. A continuing application, dependent form) before the issuance of
U.S.C. 3332 and 31 CFR part 208), or which may be a continuation, a first Office action on the merits of the
instruct the Office that refunds are to be divisional, or continuation-in-part application if the application contains
credited to a deposit account, the application, may be filed under this or is amended to contain more than five
Director may require such information, section if the conditions specified in 35 independent claims or more than
or use the banking information on the U.S.C. 120, 121, or 365(c) and § 1.78 are twenty-five total claims. An application
payment instrument to make a refund. met. may not contain or be amended to
Any refund of a fee paid by credit card (1) A continuation or divisional contain more than five independent
will be by a credit to the credit card application that names as inventors the claims or more than twenty-five total
account to which the fee was charged. same or fewer than all of the inventors claims if an examination support
(b) Any request for refund must be named in the prior application may be document in compliance with § 1.265
filed within two years from the date the filed under paragraph (b) or (d) of this has not been filed before the issuance of
fee was paid, except as otherwise section. A continuation or divisional a first Office action on the merits of the
provided in this paragraph, or in application naming an inventor not application.
§ 1.28(a), § 1.117(b), or § 1.138(d). If the named in the prior application must be (2) A claim that refers to another
Office charges a deposit account by an filed under paragraph (b) of this section. claim but does not incorporate by
amount other than an amount See § 1.78(a)(2) for the definition of a reference all of the limitations of the
specifically indicated in an divisional application and § 1.78(a)(3) claim to which such claim refers will be
authorization (§ 1.25(b)), any request for for the definition of a continuation treated as an independent claim for fee
refund based upon such charge must be application. calculation purposes under § 1.16 (or
filed within two years from the date of (2) A continuation-in-part application § 1.492) and for purposes of paragraph
the deposit account statement indicating must be filed under paragraph (b) of this (b) of this section. A claim that refers to
such charge, and include a copy of that section. See § 1.78(a)(4) for the a claim of a different statutory class of
deposit account statement. The time definition of a continuation-in-part invention will also be treated as an
periods set forth in this paragraph are application. independent claim for fee calculation
not extendable. (c) * * * purposes under § 1.16 (or § 1.492) and
* * * * * (4) A provisional application is not for purposes of paragraph (b) of this
■ 4. Section 1.52 is amended by revising entitled to the right of priority under 35 section.
paragraph (d)(2) to read as follows: U.S.C. 119 or 365(a) or § 1.55, or to the (3) The applicant will be notified if
benefit of an earlier filing date under 35 the application contains or is amended
§ 1.52 Language, paper, writing, margins, U.S.C. 120, 121 or 365(c) or § 1.78 of any to contain more than five independent
compact disc specifications. other application. No claim for priority claims or more than twenty-five total
* * * * * under 35 U.S.C. 119(e) or § 1.78 may be claims but the applicant has not
(d) * * * made in a design application based on complied with the requirements set
(2) Provisional application. If a a provisional application. No request forth in paragraph (b)(1) or (b)(4) of this
provisional application is filed in a under § 1.293 for a statutory invention section. If the non-compliance appears
language other than English and the registration may be filed in a provisional to have been inadvertent, the notice will
benefit of such provisional application application. The requirements of set a two-month time period that is not
is claimed in a nonprovisional §§ 1.821 through 1.825 regarding extendable under § 1.136(a) within
application, an English language application disclosures containing which, to avoid abandonment of the
translation of the non-English language nucleotide and/or amino acid sequences application, the applicant must comply
with the requirements set forth in relationship of each application for (b) Claims under 35 U.S.C. 119(e) for
paragraph (b) of this section. which a benefit is claimed under 35 the benefit of a prior-filed provisional
(4) If a nonprovisional application U.S.C. 120, 121, or 365(c). This application. A nonprovisional
contains at least one claim that is information includes the application application, other than for a design
patentably indistinct from at least one number and the filing date of each patent, or an international application
claim in one or more other pending application for which a benefit is designating the United States of
nonprovisional applications, and if such claimed under 35 U.S.C. 119(e). America may claim the benefit of one or
one or more other nonprovisional Providing this information in the more prior-filed provisional
applications and the first application data sheet also constitutes applications under the conditions set
nonprovisional application are owned the specific reference required by 35 forth in 35 U.S.C. 119(e) and paragraph
by the same person, or are subject to an U.S.C. 119(e) or 120, and § 1.78(b)(3) or (b) of this section.
obligation of assignment to the same § 1.78(d)(3), and need not otherwise be (1) The nonprovisional application or
person, the Office will treat the claims made part of the specification. international application designating
(whether in independent or dependent * * * * * the United States of America must be
form) in the first nonprovisional filed not later than twelve months after
■ 8. Section 1.78 is revised to read as
application and in each of such other the date on which the provisional
pending nonprovisional applications as follows: application was filed. This twelve-
present in each of the nonprovisional § 1.78 Claiming benefit of earlier filing date month period is subject to 35 U.S.C.
applications for purposes of paragraph and cross-references to other applications. 21(b) and § 1.7(a).
(b) of this section. (2) Each prior-filed provisional
(a) Definitions—(1) Continuing
(5) Claims withdrawn from application must name as an inventor at
application. A continuing application is
consideration under §§ 1.141 through least one inventor named in the later-
a nonprovisional application or an
1.146 or § 1.499 as drawn to a non- filed application. In addition, each
international application designating
elected invention or inventions will not, prior-filed provisional application must
the United States of America that claims
unless they are reinstated or rejoined, be be entitled to a filing date as set forth
the benefit under 35 U.S.C. 120, 121, or
taken into account in determining in § 1.53(c) and the basic filing fee set
365(c) of a prior-filed nonprovisional
whether an application exceeds the five forth in § 1.16(d) must have been paid
application or international application
independent claim and twenty-five total for such provisional application within
claim threshold set forth in paragraphs designating the United States of the time period set forth in § 1.53(g).
(b)(1), (b)(3), and (b)(4) of this section. America. An application that does not (3) Any nonprovisional application or
(c) Any dependent claim which refers claim the benefit under 35 U.S.C. 120, international application designating
to more than one other claim (‘‘multiple 121, or 365(c) of a prior-filed the United States of America that claims
dependent claim’’) shall refer to such application is not a continuing the benefit of one or more prior-filed
other claims in the alternative only. A application even if the application provisional applications must contain or
multiple dependent claim shall not claims the benefit under 35 U.S.C. be amended to contain a reference to
serve as a basis for any other multiple 119(e) of a provisional application, each such prior-filed provisional
dependent claim. For fee calculation claims priority under 35 U.S.C. 119(a)- application, identifying it by the
purposes under § 1.16 (or § 1.492) and (d) or 365(b) to a foreign application, or provisional application number
for purposes of paragraph (b) of this claims priority under 35 U.S.C. 365(a) or (consisting of series code and serial
section, a multiple dependent claim will (b) to an international application number). If the later-filed application is
be considered to be that number of designating at least one country other a nonprovisional application, the
claims to which direct reference is made than the United States of America. reference required by this paragraph
therein. For fee calculation purposes (2) Divisional application. A must be included in an application data
under § 1.16 (or § 1.492) and for divisional application is a continuing sheet (§ 1.76), or the specification must
purposes of paragraph (b) of this application as defined in paragraph contain or be amended to contain such
section, any claim depending from a (a)(1) of this section that discloses and reference in the first sentence(s)
multiple dependent claim will be claims only an invention or inventions following the title.
considered to be that number of claims that were disclosed and claimed in a (4) The reference required by
to which direct reference is made in that prior-filed application, but were subject paragraph (b)(3) of this section must be
multiple dependent claim. In addition to a requirement to comply with the submitted during the pendency of the
to the other filing fees, any application requirement of unity of invention under later-filed application. If the later-filed
which is filed with, or is amended to PCT Rule 13 or a requirement for application is an application filed under
include, multiple dependent claims restriction under 35 U.S.C. 121 in the 35 U.S.C. 111(a), this reference must
must have paid therein the fee set forth prior-filed application, and were not also be submitted within the later of
in § 1.16(j). A multiple dependent claim elected for examination and were not four months from the actual filing date
shall be construed to incorporate by examined in any prior-filed application. of the later-filed application or sixteen
reference all the limitations of each of (3) Continuation application. A months from the filing date of the prior-
the particular claims in relation to continuation application is a continuing filed provisional application. If the
which it is being considered. application as defined in paragraph later-filed application is a
(a)(1) of this section that discloses and nonprovisional application which
* * * * *
■ 7. Section 1.76 is amended by revising
claims only an invention or inventions entered the national stage from an
paragraph (b)(5) to read as follows: that were disclosed in the prior-filed international application after
application. compliance with 35 U.S.C. 371, this
§ 1.76 Application data sheet. (4) Continuation-in-part application. reference must also be submitted within
* * * * * A continuation-in-part application is a the later of four months from the date

(b) * * * continuing application as defined in on which the national stage commenced
(5) Domestic priority information. paragraph (a)(1) of this section that under 35 U.S.C. 371(b) or (f) in the later-
This information includes the discloses subject matter that was not filed international application or sixteen
application number, the filing date, and disclosed in the prior-filed application. months from the filing date of the prior-
filed provisional application. Except as (3) A statement that the entire delay requirement of unity of invention under
provided in paragraph (c) of this between the date the claim was due PCT Rule 13 or a requirement for
section, failure to timely submit the under paragraph (b)(4) of this section restriction under 35 U.S.C. 121; and
reference is considered a waiver of any and the date the claim was filed was (B) The divisional application
benefit under 35 U.S.C. 119(e) of the unintentional. The Director may require contains only claims directed to an
prior-filed provisional application. The additional information where there is a invention or inventions that were
time periods in this paragraph do not question whether the delay was identified in such requirement to
apply if the later-filed application is: unintentional. comply with the requirement of unity of
(i) An application filed under 35 (d) Claims under 35 U.S.C. 120, 121, invention or requirement for restriction
U.S.C. 111(a) before November 29, 2000; or 365(c) for the benefit of a prior-filed but were not elected for examination
or nonprovisional or international and were not examined in the prior-
(ii) An international application filed application. A nonprovisional filed application or in any other
under 35 U.S.C. 363 before November application (including an international nonprovisional application, except for a
29, 2000. application that has entered the national nonprovisional application that claims
(5) If the prior-filed provisional stage after compliance with 35 U.S.C. the benefit under 35 U.S.C. 120, 121, or
application was filed in a language other 371) may claim the benefit of one or 365(c) of such divisional application
than English and both an English- more prior-filed copending and satisfies the conditions set forth in
language translation of the prior-filed nonprovisional applications or paragraph (d)(1)(iii) or (d)(1)(vi) of this
provisional application and a statement international applications designating section.
that the translation is accurate were not the United States of America under the (iii)(A) The nonprovisional
conditions set forth in 35 U.S.C. 120 and application is a continuation
previously filed in the prior-filed
paragraph (d) of this section. application as defined in paragraph
provisional application, applicant will
(1) A nonprovisional application that (a)(3) of this section that claims the
be notified and given a period of time
claims the benefit of one or more prior- benefit under 35 U.S.C. 120, 121, or
within which to file the translation and
filed copending nonprovisional 365(c) of a divisional application that
the statement in the prior-filed
applications or international satisfies the conditions set forth in
provisional application. If the notice is
applications designating the United paragraph (d)(1)(ii) of this section;
mailed in a pending nonprovisional (B) The nonprovisional application
States of America must satisfy the
application, a timely reply to such a discloses and claims only an invention
conditions set forth in at least one of
notice must include the filing in the or inventions that were disclosed and
paragraphs (d)(1)(i) through (d)(1)(vi) of
nonprovisional application of either a this section. The Office will refuse to claimed in such divisional application;
confirmation that the translation and enter, or will delete if present, any (C) The nonprovisional application
statement were filed in the provisional specific reference to a prior-filed claims the benefit under 35 U.S.C. 120,
application, or an amendment or application that is not permitted by at 121, or 365(c) of only the divisional
supplemental application data sheet least one of paragraphs (d)(1)(i) through application, any application to which
withdrawing the benefit claim, or the (d)(1)(vi) of this section. The Office’s such divisional application claims
nonprovisional application will be entry of, or failure to delete, a specific benefit under 35 U.S.C. 120, 121, or
abandoned. The translation and reference to a prior-filed application 365(c) in compliance with the
statement may be filed in the that is not permitted by at least one of conditions set forth in paragraph
provisional application, even if the paragraphs (d)(1)(i) through (d)(1)(vi) of (d)(1)(ii) of this section, and no more
provisional application has become this section does not constitute a waiver than one intervening prior-filed
abandoned. of the provisions of paragraph (d)(1) of nonprovisional application; and
(c) Delayed claims under 35 U.S.C. this section. (D) The divisional application whose
119(e) for the benefit of a prior-filed (i)(A) The nonprovisional application benefit is claimed under 35 U.S.C. 120,
provisional application. If the reference is either a continuation application as 121, or 365(c) in such nonprovisional
required by 35 U.S.C. 119(e) and defined in paragraph (a)(3) of this application has its benefit claimed in no
paragraph (b)(3) of this section is section or a continuation-in-part more than one other nonprovisional
presented in a nonprovisional application as defined in paragraph application, not including any other
application after the time period (a)(4) of this section that claims the divisional application that satisfies the
provided by paragraph (b)(4) of this benefit under 35 U.S.C. 120, 121, or conditions set forth in paragraph
section, the claim under 35 U.S.C. 365(c) of no more than two prior-filed (d)(1)(ii) or any nonprovisional
119(e) for the benefit of a prior-filed applications; and application that claims the benefit
provisional application may be accepted (B) Any application whose benefit is under 35 U.S.C. 120 or 365(c) of such
if submitted during the pendency of the claimed under 35 U.S.C. 120, 121, or other divisional application and
later-filed application and if the 365(c) in such nonprovisional satisfies the conditions set forth in
reference identifying the prior-filed application has its benefit claimed in no paragraph (d)(1)(iii) or (d)(1)(vi) of this
application by provisional application more than one other nonprovisional section.
number was unintentionally delayed. A application, not including any (iv)(A) The nonprovisional
petition to accept an unintentionally nonprovisional application that satisfies application claims benefit under 35
delayed claim under 35 U.S.C. 119(e) for the conditions set forth in paragraph U.S.C. 120 or 365(c) of a prior-filed
the benefit of a prior-filed provisional (d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this international application designating
application must be accompanied by: section. the United States of America, and a
(1) The reference required by 35 (ii)(A) The nonprovisional application Demand has not been filed and the basic
U.S.C. 119(e) and paragraph (b)(3) of is a divisional application as defined in national fee (§ 1.492(a)) has not been
this section to the prior-filed provisional paragraph (a)(2) of this section that paid in the prior-filed international
application, unless previously claims the benefit under 35 U.S.C. 120, application and the prior-filed
submitted; 121, or 365(c) of a prior-filed international application does not claim
(2) The surcharge set forth in § 1.17(t); application that was subject to a the benefit of any other nonprovisional
and requirement to comply with the application or international application
designating the United States of amendment, argument, or evidence amended to contain such reference in
America; sought to be entered could not have the first sentence(s) following the title.
(B) The nonprovisional application is been submitted during the prosecution (4) The reference required by 35
either a continuation application as of the prior-filed application. If the U.S.C. 120 and paragraph (d)(3) of this
defined in paragraph (a)(3) of this continuing application is an application section must be submitted during the
section or a continuation-in-part filed under 35 U.S.C. 111(a), this pendency of the later-filed application.
application as defined in paragraph petition must be submitted within four If the later-filed application is an
(a)(4) of this section that claims the months from the actual filing date of the application filed under 35 U.S.C. 111(a),
benefit under 35 U.S.C. 120, 121, or continuing application. If the this reference must also be submitted
365(c) of no more than three prior-filed continuing application is a within the later of four months from the
applications; and nonprovisional application which actual filing date of the later-filed
(C) Any application whose benefit is entered the national stage from an application or sixteen months from the
claimed under 35 U.S.C. 120, 121, or international application after filing date of the prior-filed application.
365(c) in such nonprovisional compliance with 35 U.S.C. 371, this If the later-filed application is a
application has its benefit claimed in no petition must be submitted within four nonprovisional application which
more than two other nonprovisional months from the date on which the entered the national stage from an
applications, not including any national stage commenced under 35 international application after
nonprovisional application that satisfies U.S.C. 371(b) or (f) in the international compliance with 35 U.S.C. 371, this
the conditions set forth in paragraph application. reference must also be submitted within
(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this (2) Each prior-filed application must the later of four months from the date
section. name as an inventor at least one on which the national stage commenced
(v)(A) The nonprovisional application inventor named in the later-filed under 35 U.S.C. 371(b) or (f) in the later-
claims benefit under 35 U.S.C. 120 or application. In addition, each prior-filed filed international application or sixteen
365(c) of a prior-filed nonprovisional application must either be: months from the filing date of the prior-
application filed under 35 U.S.C. 111(a), (i) An international application filed application. Except as provided in
and such nonprovisional application entitled to a filing date in accordance paragraph (e) of this section, failure to
became abandoned due to the failure to with PCT Article 11 and designating the timely submit the reference required by
timely reply to an Office notice issued United States of America; or 35 U.S.C. 120 and paragraph (d)(3) of
under § 1.53(f) and does not claim the (ii) A nonprovisional application this section is considered a waiver of
benefit of any other nonprovisional under 35 U.S.C. 111(a) that is entitled to any benefit under 35 U.S.C. 120, 121, or
application or international application a filing date as set forth in § 1.53(b) or 365(c) to the prior-filed application. The
designating the United States of § 1.53(d) for which the basic filing fee time periods in this paragraph do not
America; set forth in § 1.16 has been paid within apply if the later-filed application is:
(B) The nonprovisional application is the pendency of the application. (i) An application for a design patent;
either a continuation application as (3) Except for a continued prosecution (ii) An application filed under 35
defined in paragraph (a)(3) of this application filed under § 1.53(d), any U.S.C. 111(a) before November 29, 2000;
section or a continuation-in-part nonprovisional application, or or
application as defined in paragraph international application designating (iii) An international application filed
(a)(4) of this section that claims the the United States of America, that under 35 U.S.C. 363 before November
benefit under 35 U.S.C. 120, 121, or claims the benefit of one or more prior- 29, 2000.
365(c) of no more than three prior-filed filed nonprovisional applications or (5) The request for a continued
applications; and international applications designating prosecution application under § 1.53(d)
(C) Any application whose benefit is the United States of America must is the specific reference required by 35
claimed under 35 U.S.C. 120, 121, or contain or be amended to contain a U.S.C. 120 to the prior-filed application.
365(c) in such nonprovisional reference to each such prior-filed The identification of an application by
application has its benefit claimed in no application, identifying it by application application number under this section is
more than two other nonprovisional number (consisting of the series code the identification of every application
applications, not including any and serial number) or international assigned that application number
nonprovisional application that satisfies application number and international necessary for a specific reference
the conditions set forth in paragraph filing date. The reference must also required by 35 U.S.C. 120 to every such
(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this identify the relationship of the application assigned that application
section. applications (i.e., whether the later-filed number.
(vi) The nonprovisional application is application is a continuation, divisional, (6) Cross-references to other related
a continuing application as defined in or continuation-in-part of the prior-filed applications may be made when
paragraph (a)(1) of this section that nonprovisional application or appropriate. Cross-references to
claims the benefit under 35 U.S.C. 120, international application). If an applications for which a benefit is not
121, or 365(c) of a prior-filed application is identified as a claimed under title 35, United States
application, is filed to obtain continuation-in-part application, the Code, must be located in a paragraph
consideration of an amendment, applicant must identify the claim or that is separate from the paragraph
argument, or evidence that could not claims in the continuation-in-part containing the references to applications
have been submitted during the application for which the subject matter for which a benefit is claimed under 35
prosecution of the prior-filed is disclosed in the manner provided by U.S.C. 119(e), 120, 121, or 365(c) that is
application, and does not satisfy the the first paragraph of 35 U.S.C. 112 in required by 35 U.S.C. 119(e) or 120 and
conditions set forth in any of paragraphs the prior-filed application. If the later- this section.
(d)(1)(i) through (d)(1)(v) of this section. filed application is a nonprovisional (e) Delayed claims under 35 U.S.C.
A petition must be filed in such application, the reference required by 120, 121, or 365(c) for the benefit of a
nonprovisional application that is this paragraph must be included in an prior-filed nonprovisional application
accompanied by the fee set forth in application data sheet (§ 1.76), or the or international application. If the
§ 1.17(f) and a showing that the specification must contain or be reference required by 35 U.S.C. 120 and
paragraph (d)(3) of this section is under 35 U.S.C. 371(b) or (f) in a person, which contain patentably
presented after the time period provided nonprovisional application entering the indistinct claims.
by paragraph (d)(4) of this section, the national stage from an international (iii) If the conditions specified in
claim under 35 U.S.C. 120, 121, or application under 35 U.S.C. 371; or paragraph (f)(2)(i) of this section exist,
365(c) for the benefit of a prior-filed (C) Two months from the mailing date the applicant in the nonprovisional
copending nonprovisional application of the initial filing receipt in such other application must, unless the
or international application designating nonprovisional application for which nonprovisional application has been
the United States of America may be identification is required by paragraph allowed (§ 1.311), take one of the actions
accepted if the reference identifying the (f)(1)(i) of this section. specified in paragraph (f)(2)(ii) of this
prior-filed application by application (2)(i) A rebuttable presumption shall section within the later of:
number or international application exist that a nonprovisional application (A) Four months from the actual filing
number and international filing date contains at least one claim that is not date of a nonprovisional application
was unintentionally delayed. A petition patentably distinct from at least one of filed under 35 U.S.C. 111(a);
to accept an unintentionally delayed the claims in another pending or (B) Four months from the date on
claim under 35 U.S.C. 120, 121, or patented nonprovisional application if which the national stage commenced
365(c) for the benefit of a prior-filed the following conditions are met: under 35 U.S.C. 371(b) or (f) in a
application must be accompanied by: nonprovisional application entering the
(A) The nonprovisional application
(1) The reference required by 35 national stage from an international
has a filing date that is the same as the
U.S.C. 120 and paragraph (d)(3) of this application under 35 U.S.C. 371;
filing date of the other pending or (C) The date on which a claim that is
section to the prior-filed application, patented nonprovisional application,
unless previously submitted; not patentably distinct from at least one
taking into account any filing date for of the claims in the one or more other
(2) The surcharge set forth in § 1.17(t); which a benefit is sought under title 35,
and pending or patented nonprovisional
United States Code; applications is presented; or
(3) A statement that the entire delay (B) The nonprovisional application
between the date the claim was due (D) Two months from the mailing date
names at least one inventor in common of the initial filing receipt in the one or
under paragraph (d)(4) of this section with the other pending or patented
and the date the claim was filed was more other pending or patented
nonprovisional application; nonprovisional applications.
unintentional. The Director may require (C) The nonprovisional application is
additional information where there is a (3) In the absence of good and
owned by the same person, or subject to sufficient reason for there being two or
question whether the delay was an obligation of assignment to the same
unintentional. more pending nonprovisional
person, as the other pending or patented applications owned by the same person,
(f) Applications and patents naming nonprovisional application; and
at least one inventor in common. (1)(i) or subject to an obligation of assignment
(D) The nonprovisional application to the same person, which contain
The applicant in a nonprovisional
and the other pending or patented patentably indistinct claims, the Office
application that has not been allowed
nonprovisional application contain may require elimination of the
(§ 1.311) must identify by application
substantial overlapping disclosure. patentably indistinct claims from all but
number (i.e., series code and serial
Substantial overlapping disclosure one of the applications.
number) and patent number (if
exists if the other pending or patented (g) Applications or patents under
applicable) each other pending or
nonprovisional application has written reexamination naming different
patented nonprovisional application, in
description support under the first inventors and containing patentably
a separate paper, for which the
paragraph of 35 U.S.C. 112 for at least indistinct claims. If an application or a
following conditions are met:
one claim in the nonprovisional patent under reexamination and at least
(A) The nonprovisional application
application. one other application naming different
has a filing date that is the same as or
within two months of the filing date of (ii) If the conditions specified in inventors are owned by the same party
the other pending or patented paragraph (f)(2)(i) of this section exist, and contain patentably indistinct
nonprovisional application, taking into the applicant in the nonprovisional claims, and there is no statement of
account any filing date for which a application must, unless the record indicating that the claimed
benefit is sought under title 35, United nonprovisional application has been inventions were commonly owned or
States Code; allowed (§ 1.311), take one of the subject to an obligation of assignment to
(B) The nonprovisional application following actions within the time period the same person at the time the later
names at least one inventor in common specified in paragraph (f)(2)(iii) of this invention was made, the Office may
with the other pending or patented section: require the assignee to state whether the
nonprovisional application; and (A) Rebut this presumption by claimed inventions were commonly
(C) The nonprovisional application is explaining how the application contains owned or subject to an obligation of
owned by the same person, or subject to only claims that are patentably distinct assignment to the same person at the
an obligation of assignment to the same from the claims in each of such other time the later invention was made, and
person, as the other pending or patented pending nonprovisional applications or if not, indicate which named inventor is
nonprovisional application. patents; or the prior inventor.
(ii) The identification of such one or (B) Submit a terminal disclaimer in (h) Parties to a joint research
more other pending or patented accordance with § 1.321(c). In addition, agreement. If an application discloses or
nonprovisional applications if required where one or more other pending is amended to disclose the names of
by paragraph (f)(1)(i) of this section nonprovisional applications have been parties to a joint research agreement
must be submitted within the later of: identified, the applicant must explain under 35 U.S.C. 103(c)(2)(C), the parties
(A) Four months from the actual filing why there are two or more pending to the joint research agreement are
date in a nonprovisional application nonprovisional applications naming at considered to be the same person for
filed under 35 U.S.C. 111(a); least one inventor in common and purposes of this section. If the
(B) Four months from the date on owned by the same person, or subject to application is amended to disclose the
which the national stage commenced an obligation of assignment to the same names of parties to a joint research
agreement, the identification of such ■ 11. Section 1.110 is revised to read as (1) A request for continued
one or more other nonprovisional follows: examination under this section has not
applications as required by paragraph previously been filed in any of:
(f)(1) of this section must be submitted § 1.110 Inventorship and date of invention
of the subject matter of individual claims. (i) The application;
with such amendment unless such
When more than one inventor is (ii) Any application whose benefit is
identification is or has been submitted
named in an application or patent, the claimed under 35 U.S.C. 120, 121, or
within the four-month period specified
Office may require an applicant, 365(c) in such application; and
in paragraph (f)(1) of this section.
(i) Time periods not extendable: The patentee, or owner to identify the (iii) Any application that claims the
time periods set forth in this section are inventive entity of the subject matter of benefit under 35 U.S.C. 120, 121, or
not extendable. each claim in the application or patent 365(c) of such application, not
when necessary for purposes of an including any nonprovisional
■ 9. Section 1.104 is amended by application that satisfies the conditions
Office proceeding. Where appropriate,
revising paragraphs (a)(1) and (b) to read set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
the invention dates of the subject matter
as follows: (d)(1)(vi).
of each claim and the ownership of the
§ 1.104 Nature of examination. subject matter on the date of invention (2) The application is a divisional
(a) Examiner’s action. (1) On taking may be required of the applicant, application that satisfies the conditions
up an application for examination or a patentee or owner. See also §§ 1.78 and set forth in § 1.78(d)(1)(ii), and a request
patent in a reexamination proceeding, 1.130. for continued examination under this
the examiner shall make a thorough ■ 12. Section 1.114 is amended by section has not previously been filed in
study thereof and shall make a thorough revising paragraphs (a) and (d), and by any of:
investigation of the available prior art adding new paragraphs (f), (g), and (h), (i) The divisional application; and
relating to the subject matter of the to read as follows: (ii) Any application that claims the
claimed invention. The examination § 1.114 Request for continued benefit under 35 U.S.C. 120, 121, or
shall be complete with respect both to examination. 365(c) of such divisional application,
compliance of the application or patent not including any nonprovisional
under reexamination with the (a) If prosecution in an application is application that satisfies the conditions
applicable statutes, rules, and other closed, an applicant may, subject to the set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
requirements, and to the patentability of conditions of this section, file a request (d)(1)(vi).
the invention as claimed, as well as for continued examination of the
application accompanied by a (3) The application is a continuation
with respect to matters of form, unless application that claims the benefit
otherwise indicated. submission, the fee set forth in § 1.17(e),
and if required, a petition under under 35 U.S.C. 120, 121, or 365(c) of
* * * * * a divisional application and satisfies the
paragraph (g) of this section
(b) Completeness of examiner’s accompanied by the fee set forth in conditions set forth in § 1.78(d)(1)(iii),
action. The examiner’s action will be § 1.17(f), prior to the earliest of: and a request for continued examination
complete as to all matters, except that in under this section has not been filed in
appropriate circumstances, such as (1) Payment of the issue fee, unless a
any of:
misjoinder of invention, fundamental petition under § 1.313 is granted;
(2) Abandonment of the application; (i) The continuation application;
defects in the application, and the like,
or (ii) The divisional application; and
the action of the examiner may be
limited to such matters before further (3) The filing of a notice of appeal to (iii) Any other application that claims
action is made. the U.S. Court of Appeals for the the benefit under 35 U.S.C. 120, 121, or
Federal Circuit under 35 U.S.C. 141, or 365(c) of such divisional application,
* * * * *
the commencement of a civil action not including any nonprovisional
■ 10. Section 1.105 is amended by application that satisfies the conditions
under 35 U.S.C. 145 or 146, unless the
adding a new paragraph (a)(1)(ix) to appeal or civil action is terminated. set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or
read as follows: (d)(1)(vi).
* * * * *
§ 1.105 Requirements for information. (d) If an applicant files a request for (g) A request for continued
(a)(1) * * * continued examination under this examination must include a petition
section after appeal, but prior to a accompanied by the fee set forth in
(ix) Support in the specification:
decision on the appeal, the request for § 1.17(f) and a showing that the
Where (by page and line or paragraph
continued examination will also be amendment, argument, or evidence
number) in the specification of the
treated as a request to withdraw the sought to be entered could not have
application, or any application the
appeal and to reopen prosecution of the been submitted prior to the close of
benefit of whose filing date is sought
application before the examiner. An prosecution in the application, except as
under title 35, United States Code, there
appeal brief (§ 41.37 of this title), a reply otherwise provided in paragraph (f) of
is written description support for the
brief (§ 41.41 of this title), or related this section.
invention as defined in the claims
(whether in independent or dependent papers will not be considered a (h) The filing of an improper request
form), and of the manner and process of submission under this section. for continued examination, including a
making and using it, in such full, clear, * * * * * request for continued examination with
concise, and exact terms as to enable (f) An applicant may file a request for a petition under paragraph (g) of this
any person skilled in the art to which continued examination under this section that is not grantable, will not
it pertains, or with which it is most section in an application without a stay any period for reply that may be
nearly connected, to make and use the petition under paragraph (g) of this running against the application, nor act
invention, under the first paragraph of section if the conditions set forth in at as a stay of other proceedings.
35 U.S.C. 112. least one of paragraphs (f)(1), (f)(2), or ■ 13. Section 1.117 is added to read as
* * * * * (f)(3) of this section are satisfied: follows:
§ 1.117 Refund due to cancellation of ■ 15. Section 1.142 is amended by § 1.265 Examination support document.
claim. revising paragraph (a) and adding new (a) An examination support document
(a) If an amendment canceling a claim paragraph (c) to read as follows: as used in this part means a document
is filed before an examination on the that includes the following:
merits has been made of the application, § 1.142 Requirement for restriction. (1) A statement that a preexamination
the applicant may request a refund of (a) If two or more independent and search in compliance with paragraph (b)
any fee under § 1.16(h), (i), or (j) or distinct inventions are claimed in a of this section was conducted, including
under § 1.492(d), (e), or (f) paid on or single application, the examiner in an an identification of the field of search by
after December 8, 2004, for such claim. United States class and subclass and the
Office action may require the applicant
If an amendment adding one or more date of the search, where applicable,
in the reply to that action to elect an
claims is also filed before the and, for database searches, the search
invention to which the claims will be logic or chemical structure or sequence
application has been taken up for restricted, this official action being
examination on the merits, the Office used as a query, the name of the file or
called a requirement for restriction (also files searched and the database service,
may apply any refund under § 1.117 to
known as a requirement for division). and the date of the search;
any excess claims fees due as a result of
Such requirement will normally be (2) A listing of the reference or
such an amendment. The date indicated
on any certificate of mailing or made before any action on the merits; references deemed most closely related
transmission under § 1.8 will not be however, it may be made at any time to the subject matter of each of the
taken into account in determining before final action. claims (whether in independent or
whether an amendment canceling a * * * * * dependent form) in compliance with
claim was filed before an examination paragraph (c) of this section;
(c) If two or more independent and (3) For each reference cited, an
on the merits has been made of the distinct inventions are claimed in a
application. identification of all of the limitations of
single application, the applicant may each of the claims (whether in
(b) If a request for refund under this file a suggested requirement for
section is not filed within two months independent or dependent form) that
restriction under this paragraph. Any are disclosed by the reference;
from the date on which the claim was suggested requirement for restriction (4) A detailed explanation particularly
canceled, the Office may retain the must be filed prior to the earlier of the pointing out how each of the
excess claims fee paid in the first Office action on the merits or an independent claims is patentable over
application. This two-month period is Office action that contains a the cited references; and
not extendable. If an amendment requirement to comply with the (5) A showing of where each
canceling a claim is not filed before an limitation of each of the claims (whether
requirement of unity of invention under
examination on the merits has been in independent or dependent form)
PCT Rule 13 or a requirement for
made of the application, the Office will finds support under the first paragraph
restriction under 35 U.S.C. 121 in the
not refund any part of the excess claims of 35 U.S.C. 112 in the written
application. Any suggested requirement
fee paid in the application except as description of the specification. If the
for restriction must also be accompanied
provided in § 1.26. application claims the benefit of one or
by an election without traverse of an
■ 14. Section 1.136 is amended by more applications under title 35, United
invention to which there are no more
revising paragraph (a)(1) to read as than five independent claims and no States Code, the showing must also
follows: more than twenty-five total claims, and include where each limitation of each of
§ 1.136 Extensions of time. must identify the claims to the elected the claims finds support under the first
invention. If the suggested requirement paragraph of 35 U.S.C. 112 in each such
(a)(1) If an applicant is required to priority or benefit application in which
reply within a nonstatutory or shortened for restriction is accepted, the applicant
will be notified in an Office action that such support exists.
statutory time period, applicant may (b) The preexamination search
extend the time period for reply up to will contain a requirement for
referred to in paragraph (a)(1) of this
the earlier of the expiration of any restriction under paragraph (a) of this
section must involve U.S. patents and
maximum period set by statute or five section. Any claim to the non-elected
patent application publications, foreign
months after the time period set for invention or inventions, if not canceled,
patent documents, and non-patent
reply, if a petition for an extension of is by the election withdrawn from
literature, unless the applicant justifies
time and the fee set in § 1.17(a) are filed, further consideration.
with reasonable certainty that no
unless: ■ 16. Section 1.145 is revised to read as references more pertinent than those
(i) Applicant is notified otherwise in follows: already identified are likely to be found
an Office action; in the eliminated source and includes
(ii) The reply is to a notice requiring § 1.145 Subsequent presentation of claims such a justification with the statement
compliance with § 1.75(b) or § 1.265; for different invention. required by paragraph (a)(1) of this
(iii) The reply is a reply brief section. The preexamination search
If, after an Office action on the merits
submitted pursuant to § 41.41 of this referred to in paragraph (a)(1) of this
on an application, the applicant
title; section must be directed to the claimed
presents claims directed to an invention
(iv) The reply is a request for an oral invention and encompass all of the
distinct from and independent of the
hearing submitted pursuant to § 41.47(a) limitations of each of the claims
of this title; invention previously claimed, the
applicant may be required to restrict the (whether in independent or dependent
(v) The reply is to a decision by the form), giving the claims the broadest
Board of Patent Appeals and claims to the invention previously
claimed if the amendment is entered, reasonable interpretation.
Interferences pursuant to § 1.304 or to (c) The listing of references required

§ 41.50 or § 41.52 of this title; or subject to reconsideration and review as
under paragraph (a)(2) of this section as
(vi) The application is involved in a provided in §§ 1.143 and 1.144.
part of an examination support
contested case (§ 41.101(a) of this title). ■ 17. Section 1.265 is added to read as document must include a list
* * * * * follows: identifying each of the cited references
in compliance with paragraphs (c)(1) which an examination support (3) A government of a city, county,
and (c)(2) of this section, a copy of each document is required and has been town, township, village, school district,
reference if required by paragraph (c)(3) filed, the applicant must also file a or special district, with a population of
of this section, and each English supplemental examination support less than fifty thousand.
language translation if required by document addressing the reference or
paragraph (c)(4) of this section. references in the manner required under ■ 18. Section 1.495 is amended by
(1) The list of cited references must paragraphs (a)(3) and (a)(4) of this revising paragraph (g) to read as follows:
itemize U.S. patents and U.S. patent section unless the information § 1.495 Entering the national stage in the
application publications (including disclosure statement cites only United States of America.
international applications designating references that are less closely related to * * * * *
the U.S.) in a section separate from the the subject matter of one or more claims
list of other references. Each page of the (whether in independent or dependent (g) The documents and fees submitted
list of the cited references must include: form) than the references cited in the under paragraphs (b) and (c) of this
(i) The application number, if known, examination support document listing section must be clearly identified as a
of the application in which the of references under paragraph (a)(2) of submission to enter the national stage
examination support document is being this section. under 35 U.S.C. 371. If the documents
filed; (e) If an examination support and fees contain conflicting indications
(ii) A column that provides a space document is required, but the as between an application under 35
next to each cited reference for the examination support document or U.S.C. 111 and a submission to enter the
examiner’s initials; and preexamination search is deemed to be national stage under 35 U.S.C. 371, the
(iii) A heading that clearly indicates insufficient, or the claims have been documents and fees will be treated as a
that the list is part of an examination amended such that the examination submission to enter the national stage
support document listing of references. support document no longer covers each under 35 U.S.C. 371.
(2) The list of cited references must of the claims, applicant will be notified * * * * *
identify each cited reference as follows: and given a two-month time period that
(i) Each U.S. patent must be identified is not extendable under § 1.136(a) ■ 19. Section 1.704 is amended by
by first named patentee, patent number, within which, to avoid abandonment of redesignating paragraph (c)(11) as
and issue date. the application, the applicant must: (c)(12) and adding new paragraph
(ii) Each U.S. patent application (1) File a corrected or supplemental (c)(11) to read as follows:
publication must be identified by examination support document in
applicant, patent application § 1.704 Reduction of period of adjustment
compliance with this section that covers of patent term.
publication number, and publication each of the claims (whether in
date. independent or dependent form); or * * * * *
(iii) Each U.S. application must be (2) Amend the application such that (c) * * *
identified by the applicant, application it contains no more than five
number, and filing date. (11) Failure to comply with § 1.75(b),
independent claims and no more than
(iv) Each foreign patent or published in which case the period of adjustment
twenty-five total claims.
foreign patent application must be (f) An examination support document, set forth in § 1.703 shall be reduced by
identified by the country or patent office or a corrected or supplemental the number of days, if any, beginning on
which issued the patent or published examination support document, is not the day after the date that is the later of
the application, an appropriate required to comply with the the filing date of the amendment
document number, and the publication requirements set forth in paragraph resulting in the non-compliance with
date indicated on the patent or (a)(3) of this section if the examination § 1.75(b), or four months from the filing
published application. support document is accompanied by a date of the application in an application
(v) Each publication must be certification that any rights in the under 35 U.S.C. 111(a) or from the date
identified by publisher (e.g., name of application have not been assigned, on which the national stage commenced
journal), author (if any), title, relevant granted, conveyed, or licensed, and under 35 U.S.C. 371(b) or (f) in an
pages of the publication, date, and place there is no obligation under contract or application which entered the national
of publication. law to assign, grant, convey, or license stage from an international application
(3) The listing of references required any rights in the application, other than after compliance with 35 U.S.C. 371,
under paragraph (a)(2) of this section a security interest that has not been and ending on the date that an
must also be accompanied by a legible defaulted upon, to any entity other than: examination support document in
copy of each cited reference, except for (1) A business or other concern: compliance with § 1.265, an election in
references that are U.S. patents or U.S. (i) Whose number of employees, reply to a requirement under § 1.142(a),
patent application publications. including affiliates, does not exceed 500 1.146 or 1.499 resulting in compliance
(4) If a non-English language persons; and with § 1.75(b), an amendment resulting
document is being cited in the listing of (ii) Which has not assigned, granted, in compliance with § 1.75(b), or a
references required under paragraph conveyed, or licensed (and is under no suggested restriction requirement in
(a)(2) of this section as part of an obligation to do so) any rights in the compliance with § 1.142(c), was filed;
examination support document, any invention to any person who made it * * * * *
existing English language translation of and could not be classified as an
Dated: August 2, 2007.
the non-English language document independent inventor, or to any concern
must also be submitted if the translation which would not qualify as a non-profit Jon W. Dudas,
is within the possession, custody, or organization or a small business concern Under Secretary of Commerce for Intellectual
control of, or is readily available to any under paragraph (f)(1)(i) of this section. Property and Director of the United States
individual identified in § 1.56(c). (2) A not-for-profit enterprise which is Patent and Trademark Office.
(d) If an information disclosure independently owned and operated and [FR Doc. E7–15565 Filed 8–20–07; 8:45 am]
statement is filed in an application in is not dominant in its field; or BILLING CODE 3510–16–P

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Rule: Patent Cases: Continuing Applications Continued Examination Filings, Applications Containing Patentably Indistinct Claims, and Claims Examinations

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Tuesday,

August 21, 2007

the manner provided by 35 U.S.C. 112, benefit of a provisional application. See

applicants. subsequent continuation or approximately 15,700 were identified as

examination filing is filed to submit a application or international application continuation-in-part application)

of patentably indistinct claims and not requested clarification as to what court.

information. The Revised Continuing Appropriations effective date.

Accelerated Examination, 71 FR at examination support document is Comment 225: Several comments

towards both small entities and large Consultation)

* * * * * A continuation-in-part application is a the later of four months from the date

Interferences pursuant to § 1.304 or to (c) The listing of references required

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