July 27, 2007

In a brief press release this week, the USPTO announced that the review of the pending continuations and claims rule changes was completed by the OMB, and that “[t]he final rules will be made public when they are published in the Federal Register, which is expected to be later this summer.”

The first rule change, entitled “Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims,” references in the abstract that “[t]he revised rules would require that second or subsequent continuation applications and second or subsequent requests for continued examination of an application include a showing as to why the amendment, argument, or evidence presented was not previously submitted,” which would “ease the burden of examining multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and common assignee by requiring that all patentably indistinct claims in such applications be submitted in a single application absent good and sufficient reason.”

The second rule change, entitled “Changes to Practice for the Examination of Claims in Patent Applications,” mentions in the abstract that “the Office amends the rules to provide that if an application contains more than 10 independent claims, the applicant must provide a patentability report that covers all of the independent claims in the application,” and that “the Office amends the rules to provide that the Office will give a separate examination only to those dependent claims expressly elected for separate examination, and that the applicant must provide a patentability report that covers all of the independent claims and elected dependent claims in the application if the number of independent claims plus the number of dependent claims elected for examination is greater than 10.”

Common to both abstracts is a statement that the rule changes would mean “faster, more effective examination for the typical applicant without any additional work on the applicant's part, but a small minority of applicants who consume a disproportionate share of agency resources will be required to share the burden they place on the Agency.” Links to the RegInfo.gov web pages for both rule change references are provided below. According to the USPTO, these rules are expected to become effective sometime after October 1, 2007.

USPTO Press Release: LINK
Continuations Rule Change Reference: LINK
Claims Rule Change Reference: LINK

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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