News Patents and designs 2007

US Patent & Trademark Office: final rules for patent application prosecution.

The US Patent & Trademark Office has announced final rules for patent application prosecution, effective from november 1, 2007, whose main provisions are described below.

Patent applications will be limited to 25 total claims including 5 independent claims, unless an Examination Support Documentation is submitted, providing an explanation of patentability, including showings for novelty and non-obviousness. For commonly owned co-pending applications with at least one claim that is not patentably distinct, the USPTO will count all the claims of each application together in assessing the number of total and independent claims. This new rule will also apply retroactively to cases already filed but not yet examined. In such cases, if these limits are exceeded, the number of claims can be reduced by amendment and the excess claim fees will be refunded.

Furthermore, there will be a limit of two continuation applications and one Request for Continued Examination per case, unless an extraordinary showing can be made of why more are needed. This will also have retroactive effect, in that continuations and the Request for Continued Examination which has already filed will count toward the limit. However, one extra continuation will be permitted if all previous continuations were filed before August 21, 2007.

Note that divisional applications, whose filing was necessitated by a restriction requirement, do not count towards these limits.

Further, for cases having a common inventor and priority dates which are less than two months apart, a special paper must be filed in each case cross-referencing the other(s).


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