Round 2 – Part 3 – Review of the New Continuation Rules

As you may or may not already know, on November 1, 2007, the USPTO’s new claims and continuation rules become effective.  The new rules change various aspects of continued examination filings, requests for continued examination, and divisional filings.  This post covers the key rule changes regarding to related applications.   

I digress, before reading the rest of this article, think of the great song of the late 70s, We are Fa-mily, I got all my sistas with me!  We are Fa-mily, get up ev-rybody and sing!  It sets the tone for the remainder of this article since this post discusses patent Fa-milies.   

According to the new rules, an applicant must identify other pending and issued patents within its patent family.  This means, the applicant must identify patents that:

1. Other commonly owned applications  -OR-
2. Patents that have:

1. an inventor in common with the application; and
2. a filing date within 2 months of the filing date of the application.

1. Are commonly owned,
2. have an inventor in common with the application; AND
3. have a priority date within 2 months of the priority date of the application. 

Also, the new rules state that a rebuttable presumption exists that the application contains at least one claim that is not patentably distinct from at least one of the claims from its patent family if the related family patent:

1. has an inventor in common with the application
2. has a claimed filing or priority date that is the same as the claimed filing or priority date as the application; and
3. has substantial overlapping disclosure with the application. 

Where there is a rebuttable presumption, the applicant must:  

1. rebut the presumption that the claims are not patentably distinct by explaining how the application contains only patentably distinct claims
   -OR-
2. submit a terminal disclaimer. 

For additional information click here.  Also click here for a chart detailing the rule changes to “Commonly Owned Applications and Applications Containing Patentably Indistinct Claims”.

You may be interested in reading the following related posts:

1. round 2 – continuation rules review – part one
2. new continuation rules released — let the games begin . . . and continue
3. round 2 – continuation and claim rule review – part deux
4. overview of the patent reform act of 2007
5. phosita ::: quick links for 2005-09-01 (Part 2)

Posted by Douglas Sorocco, September 26, 2007 at 1:47 pm
Permalink: Round 2 – Part 3 – Review of the New Continuation Rules
2 Comments

Comments

On September 26th, 2007 at 3:53pm BabelBoy said…

Emily
Thanks for the effort you folks are making as to getting the work out on the new rules. I just stumbled into your site and haven’t had time to review it all, but will do so by the end of the week. We badly need a site dedicated, at least temporarily, to sharing strategies.

I am confused in your comment that applicants must identify:

1. Other commonly owned applications -OR-
2. Patents that have:
1. an inventor in common with the application; and
2. a filing date within 2 months of the filing date of the application.

Does this mean:

Other commonly owned applications or patents that have: ….

I don’t believe under Rule 78 that common ownership alone of either a patent or application is sufficient to trigger the notification requirement.

Babel Boy

On September 26th, 2007 at 4:59pm Emily Campbell said…

Babel Boy -

Thank you for pointing out a source of confusion. I have revised the posting and it should make more sense now.

Thank you for your comments!
Emily Campbell