Bankruptcy law in US with concentrate on Maryland: A preliminary guide for novice

o tightening the definitions of continuation and divisional applications and restricting the kinds of claims that can be pursued in divisional applications;

o limiting the number of claims per application to 5 independent claims or more than 25 total claims (the "5/25" rule), unless an "examination support document" (ESD) is filed along with the application;

The new rules limit the number of continuation (or continuation-in-part) applications that applicants may file per application without justification to only two. Additional continuation or continuation-in-part (CIP) applications require justification. Beyond the above mentioned two continuations, applications pending prior to August 21, 2007 in which two continuation or continuation-in-part applications have already been filed are allowed to have one additional continuation application filed without justification. This additional continuation application may be filed before or after November 1, 2007.

Divisional applications may only be filed to non-elected groups of claims created when an Examiner finally restricts claims of an application. A properly filed divisional may also have two additional continuation applications filed without a justification; however, CIP applications claiming priority to a divisional application are not permitted.

The new rules also state that any continuing application that contains claims previously examined in any prior-filed application is not a proper divisional application. Under the new rules, only one RCE may be filed per application and its continuation applications without justification. Each divisional application and its accompanying continuation applications, if any, are also entitled to one RCE without justification.

The new rules thus effectively limit the number of claims for most applications. It is important to understand how the USPTO will calculate the number of independent and dependent claims per application.

o count all of the claims in copending applications containing patentably indistinct claims (including applications having a continuity relationship), but not in issued patents containing patentably indistinct claims, in determining whether each such application contains more than five independent claims or more than twenty-five total claims;

o count multiple dependent claims as the number of claims from which they depend.

For pending applications in which an RCE has been filed previously, only one RCE may be filed for each application after November 1, 2007 without a justification.

Consequences for Patent Application Filing Strategies

The new rules change the number of claims that can be filed in a given patent application. Now, only 5 independent claims and/or 25 total claims may be filed unless an examination support document is filed along with the application. This rule cannot be circumvented by filing multiple patent applications claiming the same invention because, as discussed above, applications filed with the same ownership and patentably indistinct claims will be considered to be the same application for the purposes of this 5/25 rule.

While only five independent and twenty-five total claims will be examined in an application, there is one way to file more than 5/25 claims initially in an application without filing an examination support document.

The new rules require that if two patent applications with the same ownership have patentably indistinct claims, the applications will be treated as one application under the 5/25 rule. Thus, both applications must have 5 independent and/or 25 total claims in this situation. Indeed, if the applications have the same effective filing date, overlapping disclosure, one identical inventor, and the same ownership, there is a rebuttable presumption that the claims of the two applications are indistinct.