Major changes to US patent rules- Need-to-know e-news issue #9

MAJOR CHANGES TO US PATENT RULES
-but will they reduce the backlog in the USPTO?

On 21 August 2007, the United States Patent and Trademark Office (USPTO) announced new rules aimed at improving patent quality and reducing the backlog of applications awaiting examination*. The new rules will cause radical changes in US patent practice, and potentially place a significantly greater burden on applicants. The changes attempt to limit the number of:
• Continuation and Continuation-in-Part (CIP) applications
• Requests for Continued Examination (RCE)
• Applications with more than 5 independent claims, or more than 25 claims in total
• Multiple applications by the same applicant for closely related inventions.

The USPTO aims to stem a perceived abuse of the patent system, whereby increasing numbers of continued examination filings and multiple applications comprising patentably indistinct claims are being lodged. The USPTO wishes to change the practice of relying on continuing applications to make amendments to the specification which should have been made earlier, and to prevent the inclusion of claims encompassing subsequently developed products or processes of other parties.

Although these rules are less stringent than those initially proposed in January 2006, they impose major restrictions upon applications and significant additional burdens upon the applicant. There appears to be a clear shift in onus from the USPTO to the applicant for many procedural requirements.

As of right, applicants may file two continuing applications and one request for continued examination from any one application. Any additional applications will require a petition demonstrating that the amendment, argument, or evidence “could not have been submitted during the prosecution of the prior-filed application”. However, the limit on the number of applications does not include divisional applications lodged in order to pursue claims which have been withdrawn in response to a restriction requirement.

Furthermore, each application may contain a maximum of 25 claims, of which up to five claims may be independent. This limit applies to each initial application, continuation, CIP, and RCE. These rules apply to an initial application plus a combination of up to two continuation or continuation-in-part applications. Therefore up to 15 independent and 75 total claims may be filed without providing justification. Similarly, the limit applies to a divisional application plus its two continuation applications, so it is possible to pursue additional claims.

If an application has more than 25 claims in total or more than 5 independent claims, the applicant must provide an “examination support document”, setting out the most relevant prior art, and identifying support in the specification and priority document for the claimed features. However, the requirements for the examination support document are very onerous, and provide a considerable incentive to applicants to limit the number of claims.

If two or more applications which are co-owned, were filed within two months of each other, and have substantially the same disclosure, the USPTO will regard their claims as being “patentably indistinct”, and will consider all the claims of this set of applications as having been filed in each of the cases; thus they will count towards the total number of claims for each case.

Application of the new rules will be retroactive. Applications filed before 1 November 2007 will count towards the continuations limit for continuations filed on or after that date. Similarly, where an RCE has been filed before 1 November 2007, no additional RCE may be filed without justification. Furthermore, the new rules will require applicants to limit patentably indistinct claims in multiple applications. Therefore filing continuations prior to 1 November 2007 in order to avoid the new restrictions may not be worthwhile. However, if an RCE has already been filed and a final rejection has issued or is anticipated, a further RCE before this date should be considered.

In addition, new rules, published on 10 August 2007, are proposed regarding the use of alternative language within a claim which claims more than one species**. The USPTO will accept comments on the proposed rules until 9 October 2007.

The most common such claims employ the phrase “selected from the group consisting of” (the Markush-type claim), or list the alternatives. Markush claims are commonly used to define a chemical compound or a portion thereof, or to define process steps or components of a claimed invention, and may encompass enormous numbers of alternatives. However, where unity of invention exists, all species within a claim must be examined, irrespective of the burden to the examiner. According to the USPTO, this is a major cause of backlogs in examination.

The USPTO proposes to limit each claim to a single invention, and to define acceptable formats for use of alternative language. When alternative language is employed in a claim, unity will be acknowledged if
(1) all species within the claim share a substantial feature which is essential for common utility, or
(2) all species are prima facie obvious over each other.
Thus the USPTO will adopt language similar to that provided in the PCT Guidelines regarding alternative language. Furthermore, when alternative language is employed, an explanation must be provided to show why the claim comprises a single invention. Nested alternatives will be precluded unless there is no other way of defining the invention within the claim.

The USPTO aims to encourage applicants to file a series of claims of descending scope, from the broadest claim to which the applicant believes it is entitled down to the narrowest claim which the applicant is willing to accept. Thus the scope of the claims should be narrowed by using separate claims, not by using overlapping and/or nested alternatives.

The ramifications of the proposed new rules will probably be felt most acutely within the pharmaceutical and biotechnology industries. Because of the proposed restriction on the use of alternative language within claims, the limitations on the number of independent claims and total claims cannot be circumvented in this way.

*Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications (2007) 72 Federal Register 46716

**Examination of Patent Applications that Include Claims Containing Alternative Language (2007) 72 Federal Register 44992

NeedToKnow: TAKEAWAY
In an effort to clear its substantial and growing backlog, the USPTO has implemented new rules that substantially restrict the number and extent of patent claims, and the number of further (continuation) patent applications that can be filed. From 1 November 07, applicants and their attorneys will, from the outset, need to have a very clear strategy for a US patent filing, and be clear on what needs to be protected. The greatest impact will be felt with chemical and biotechnological patent applications.

For further information regarding this article please contact:
Vivien Santer: vivien.santer@griffithhack.com.au  or
Malcolm Lyons: Malcolm.lyons@griffithhack.com.au 

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