USPTO Announces New Rules for Continuation Applications and Examination of Claims

On August 21, the United States Patent and Trademark Office (USPTO) published the long-awaited new rules related to continuation filings and examination of claims. As expected, the new rules limit the number of continuation applications that can be filed without justification stemming from a patent application and limit the number of claims an applicant can include in a patent application without including an examination support document. Also, there are new rules that require applicants to disclose related patents and patent applications as well as to distinguish between claims in related patents and/or applications. The continuation rules will become effective as of November 1, 2007. However, the rules regarding the number of claims in an application will apply to applications that are pending on November 1, 2007 and have not received a first office action on the merits.

All IP managers should consider the effect of these rules on both their patent portfolio management and patent litigation strategies, as we believe these rules can profoundly change both IP rights and strategy across many technologies.

The final rules are quite complicated, and we recommend reviewing them in depth. However, following is a summary of some of the major changes.

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