BSKB IP Updates

Editors: Marc S. Weiner, Esq. and Joe McKinney ("Ken") Muncy, Jr., Esq.

Vol. 4, No. 1 (13 January 2006)

In this Issue:

:: USPTO Proposes Major Rule Changes Limiting the Number of Continuing Applications That May be Filed and the Number of Claims That Would be Examined

:: USPTO Extends Pilot Pre-Appeal Brief Conference Program Until Further Notice

:: BSKB 2006 Trademark Practice Seminar

:: BSKB 2006 Summer Training Program

:: BSKB 2006 Advanced Patent & Licensing Seminar

:: Unscheduled Closing of Federal Government

:: Upcoming Federal Government and BSKB Holidays

:: Electronic Version Requested

:: Communicating with BSKB via E-Mail

USPTO Proposes Major Rule Changes Limiting the Number of Continuing Applications That May be Filed and the Number of Claims That Would be Examined

On 3 January 2006, the United States Patent & Trademark Office ("USPTO") published proposed rule changes for continuing applications and the examination of claims.  The USPTO is proposing to limit the number of continuing applications that may be filed as a matter of right to one, and the number of claims that would be examined in each application to ten.  The USPTO states that the changes are needed to reduce rework and increase efficiency. Public comments on these proposals are due by 3 May 2006. 

Summary of Changes to Practice for Continuing Applications, Requests for Continued Examination, and Applications Containing Patentable Indistinct Claims. 

• As a matter of right, the USPTO will permit the filing of only a single continuation, continuation-in-part (CIP), request for continued examination (RCE), or voluntary divisional application.
• Any second or subsequent filing must be supported by showing a petition why the amendment, argument, or evidence could not have been submitted previously.
• A divisional application is defined as an application that is filed claiming subject matter that was not elected subject matter resulting from a restriction requirement or a requirement for lack of unity.  A single continuing application or RCE of this type of divisional application is permitted. Continuations or RCEs of  “voluntary divisionals” are not permitted as a matter of right.
• Multiple simultaneous continuations or RCEs of a single parent application are also not permitted.  Not only are a series of more than two applications not permitted without the granting of a petition, two parallel continuations or RCEs filed from a single parent are likewise not permitted.
• This rule would be retroactive to the extent that as of the effective date of the rule no second or subsequent continuing application or RCE would be permitted.  If you had already filed one continuation at that point, no more would be permitted.
• If multiple applications are filed with a common inventor, common owner, or obligation to assign on the same date or within two months of each other, the applicant is required to identify each application.  If they contain patentably indistinct claims, the Office may require elimination of the claims from all but one application.
• If multiple applications with a common inventor, owner, or obligation to assign are filed with overlapping subject matter, there will be a rebuttable presumption that double patenting exists and applicant must either file a terminal disclaimer or explain how the subject matter is patentably distinct. Therefore applicant will be responsible for identifying obvious-type double patenting situations themselves.
• If an application is a CIP, applicant must identify which claim or claims are disclosed in the manner of 35 U.S.C. 112, paragraph 1 in the prior application.

Summary of Changes to Practice for the Examination of Claims in Patent Applications 

• The USPTO will examine up to 10 representative claims in an application.  All independent claims will be examined as well as designated dependent claims as long as the total is 10 or less.
• If the applicant presents more than 10 independent claims for examination or requests that more than 10 claims be initially examined, then applicant will be required to submit an examination support document (ESD) in order to “share the burden” of examining the application.
• This change is retroactive to include any application that is currently pending and has not received an action on the merits.  Applicant may designate up to 10 claims for examination.  All independent claims must be designated. If applicant fails to designate claims for examination, then only the independent claims will be examined.  This could result in fewer than 10 claims receiving an examination.
• The examination of dependent claims in excess of 10 will be held in abeyance until the application is in condition for allowance. At that point, dependent claims that depend from allowable claims may be examined for formal requirements and allowed in the application.
• Multiple dependent claims will be counted as multiple claims and if such claim is identified as a representative claim, all claims referred to in the multiple dependent claim must be designated for examination.
• A claim which refers to a claim of a different statutory class of invention will be treated as an independent claim for fee calculation and for calculation of 10 representative claims for examination.
• The USPTO is requesting input on how to count Markush claims. They will either count each alternative as a separate claim, or count each alternative as a separate claim unless applicant shows that each alternative in the claim contains a common core property that is patentable and essential.
• The examining support document (ESD) must be submitted if the applicant wants more than 10 claims initially examined. The ESD must include:

• A statement that a search was conducted, indicating the field of search by class and subclass, the databases searched with search logic and the date of the search.

• An IDS citing the most relevant art related to the designated claims.
• An indication of all of the claim limitations disclosed in the prior art cited.
• An explanation of how all of the claims are patentable over the art cited.
• A concise explanation of the utility of the invention claimed.
• A showing of where each limitation of each claim finds support under 35 U.S.C. 112 paragraph 1 in the written description of the application and any parent application from which benefit is claimed.

• A search report from a foreign patent office will not satisfy the ESD requirements.
• The USPTO may require consolidation of applications that contain patentably indistinct claims if there is a common inventor, assignee, or obligation of assignment.  Additionally, only 10 claims from the multiple applications will be examined.

Public comments on these proposals are due by 3 May 2006.  The USPTO will then consider the comments and publish final rules at some future date.

A copy of the complete proposed rules can be found at www.uspto.gov/web/offices/com/sol/

notices/71fr48.pdf. and www.uspto.gov/web/offices/com/sol/

notices/71fr61.pdf

Summary supplied by Nicholas P. Godici.

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USPTO Extends Pilot Pre-Appeal Brief Conference Program Until Further Notice

Although, the evaluation of the the Pilot Pre-Appeal Brief Conference Program is not yet completed, the USPTO is extending the program "until further notice" as "the initial results of this program appear to be promising."

The Pilot Appeal Brief Conference Program was established in July 2005, and offers a patent applicant an avenue to request review of the legal and factual basis of the rejections asserted in his application prior to the filing of an Appeal Brief.  The pilot program was scheduled to run for at least six months, the program being extended, revised, or terminated depending upon an evaluation of the effectiveness of the program.

See http://www.uspto.gov/web/offices/pac/

dapp/opla/preognotice/

preappealbrief_ext.pdf

Summary supplied by Catherine M. Voisinet, Esq.

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BSKB 2006 Trademark Practice Seminar

BSKB is pleased to announce that the annual U.S. Trademark Practice Seminar ("TPS") will be held from Sunday, 2 April 2006, to Friday, 7 April 2006.  The program brochure and registration form are posted on our website.

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BSKB 2006 Summer Training Program

BSKB is pleased to announce that the annual Summer Training Program ("STP") will be held from Saturday, 17 June 2006, to Friday, 14 July 2006.  The program brochure and registration form are posted on our website.

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BSKB 2006 Advanced Patent & Licensing Seminar

BSKB is pleased to announce that the annual Advanced Patent & Licensing Seminar ("APLS") will be held from Monday, 18 September 2006, to Friday, 29 September 2006.

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Unscheduled Closing of Federal Government

When the Washington, D.C. area experiences severe weather, power outages, etc., the Federal Government (including the U.S. Patent and Trademark Office (USPTO)) sometimes does not open for business that day.  When this occurs, our firm's Falls Church office will also be closed for business. However, all USPTO filings due on a day where the Federal Government has closed for the day will be considered as being timely filed on the next business day that the USPTO is open.

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Upcoming Federal Government and BSKB Holidays

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Electronic Version Requested

This is a reminder that in view of the requirements set by the USPTO, we request that you forward an electronic version of all new applications (specification, claims and abstract) at your earliest convenience, preferably together with your new application order letter. This can be done by either secure e-mail or diskette in Microsoft Word®-compatible format. Since it is necessary to provide substitute paragraphs when making amendments to both the specification and claims, it is of great assistance to us to have an electronic version available. The availability of an electronic version not only assists us in accuracy, but also reduces the attorney time/cost involved in reviewing the amendments. We appreciate your cooperation in this regard.

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Communicating With BSKB Via E-Mail

When communicating with members of BSKB via e-mail concerning business matters, please "cc" mailroom@bskb.com.  This will ensure that your communication will be seen by our staff in the event that the BSKB member to whom you sent the message is out of the office.  Please also feel free to contact BSKB regarding encryption of confidential communications before sending any e-mails.

When forwarding new U.S. Patent and Design applications to us for filing in the USPTO through our firm, please be sure to use our most current Combined Declaration and Power of Attorney and Assignment Forms.  Current versions of these forms are available on our web page in both "fillable" and "downloadable" formats.  Word processing versions are also available upon request.  Please go to http://www.bskb.com/ and click on "Download Forms".

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