BSKB IP Updates

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

Vol. 4, No. 3 (9 June 2006)

Significant U.S. Patent and Trademark Office Rule Changes May Impact Your Patent Strategy

We are writing to advise you of significant rule changes proposed by the USPTO that may impact your patent strategy and to bring to your attention actions to consider that may be appropriate to mitigate the impact of these proposals. We believe that these rule changes will likely go into effect as early as this summer and you will benefit from taking action even before the proposed rule changes are finalized. 

As you may be aware, the USPTO has proposed changes to the current rules of practice that would limit an applicant’s right to file more than one continuing application and limit the number of claims that would be examined in an application. Additionally the USPTO has proposed that these changes would be retroactive and affect applications that are currently pending. The BSKB “IP Update” summary of the proposed rules can be found here.

The deadline for submission of public comments closed on May 3, 2006. There was substantial opposition to the proposed rule changes. The USPTO is now in the process of considering the public comments and finalizing the rules. USPTO officials have stated that the rules could be finalized in two to four months and that there will be a thirty to sixty day advance notice of the implementation date of the final rules. BSKB therefore believes that it is important for our clients to be fully informed of the possible rule changes and be prepared to possibly take actions prior to the effective date of the new rules to preserve your patent rights and your ability to obtain the full scope of patent protection your are entitled to.

Partial Elimination of Divisional and Continuation Practice Applied Retroactively to All Pending Applications

Most significantly, if the USPTO proposals are enacted as now proposed, applicants would be allowed to file only one continuing application (including continuations, divisionals, continuations-in-part or RCEs) as a matter of right. Second or subsequent continuing applications would only be allowed upon the granting of a petition to waive the rules. The current rule proposal makes this change retroactive, applying to all pending applications. Accordingly, we are recommending that our clients begin to consider which continuations or voluntary divisionals they may want to file before the effective date of the rule change. There will be a little as 30 days between finalizing the rules and their effective date. After the rules go into effect, no more than one continuing application may be filed as a matter of right for any reason other than due to the examiner’s issuance of a restriction requirement. After the effective date you will likely be precluded from filing such applications. Since it may take several months to determine and secure authorization to file those applications considered desirable, consideration of this issue should begin immediately

Another concern is that, as now proposed, all divisional applications that are filed as a result of a restriction or lack of unity requirement may refer back to only a single previously filed parent application. That is, serial divisional applications will not be allowed and applicants would be required to file all desired divisional applications during the pendency of the originally filed application. Loss of patent rights is a possibility if applicants are unable to claim the benefit of the original filing date and publication of the earliest application has occurred. Under these circumstances, and since the proposals would be retroactive, applicants may want to consider filing additional divisional applications that take advantage of the earlier filing date of a parent application before the effective date of the rule change, even if those divisional applications are due to a restriction requirement that has been issued by the examiner.

If the above rules are enacted in their present form, we recommend filing all continuing applications and divisionals that you intend to file before the effective date of the rule to reduce the likelihood of loss of rights. New claim sets for the divisional applications should also be prepared. We do not know when the rule will go into effect or if these provisions will be finalized without amendment. However, our best judgment is that they will be finalized between July 1 and October 1 and will likely go into effect between the end of July and end of October. Since any application that is to be filed on an earlier priority application should beneficially be filed before the effective date and since this decision may require review of all pending applications, we are of the opinion that action should be undertaken before the final rule is issued.

Other Changes that May Affect Strategy

Additionally, if these proposals are adopted, it will be necessary for applicants to designate up to ten claims for examination. If representative claims are not designated, only the independent claims will be examined. Because this change will be retroactive to all pending applications that have not yet received an action on the merits, once the final rules are announced, we will be contacting our clients advising them to designate ten claims for examination.

Finally, applicants will be required to identify applications with a common inventor, common owner, or obligation to assign that have been filed on the same day or within two months of each other should these rules go into effect. It is possible that the USPTO may require consolidation of these applications if patentably indistinct claims are present. You should be aware of this possible requirement and the necessity of taking appropriate action in the future if this rule is finalized.

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In conclusion, it must be stressed that these are “proposed” changes at this time, and modifications could be made before the rules are finalized. In the interest of service to our clients we felt it was important to make you aware of these possible changes and to advise you to consider the impact of the changes on your patent strategy. As always, BSKB will work closely with its clients to deal with these changes in a manner that maximizes your patent protection and is cost effective.

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