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

0 comments:

Post a Comment

WIPO Press Releases

WIPO General News

Patent References

Click HERE to search issued U.S. Patents

Click HERE to search published U.S. Patent Applications

Click HERE to browse the MPEP (E8r6 in HTML and PDF, and E8r7 in PDF)

Click HERE to search patent assignments recorded with the USPTO

Click HERE to search Title 37 of the Code of Federal Regulations (rev. 7/1/08)

Click HERE to browse Title 35 of the U.S. Code

Click HERE to view current USPTO fees

Disclaimer

Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

EPO Updates

Trademark References

Click HERE to search issued and pending U.S. Trademarks

Click HERE to search TTAB proceedings (via TTABVUE)

Click HERE to search trademark assignments recorded with the USPTO

The DDIP Author





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.

Click HERE to view my full professional bio at Reichel IP LLC.


Subscribe/Feedback

Click HERE to join the e-mail list for my blog

Click HERE to provide feedback on the DDIP blog

Fellow Blogs/Bloggers

AwakenIP (Kuester)
Counterfeit Chic (Scafidi)
I/P Updates (Heinze)
Internet Cases (Brown)
Likelihood of Confusion (Coleman)
Patent Baristas (Albainy-Jenei)
Patent Docs (Zuhn et al.)
Patently-O (Crouch)
The 271 Patent Blog (Zura)
The Ice Loop (Ice Miller LLP)
The Indiana Law Blog (Oddi)
The Invent Blog (Nipper)
The Patent Prospector (Odom)
The TTABlog (Welch)