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Patent rule changes are in the wind

In the interest of its own efficiency, the U.S. Patent and Trademark Office is proposing rule changes that would restrict the ability of patent applicants to file and prosecute multiple related applications — and would alter your approach to claiming your invention.

The first rule change affects Continuing applications, Requests for Continued Exami- nation (RCEs), and the filing of Multiple similar applications. You can access the full text of the rule at http://www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf.

The proposed rules would mandate that:

You petition to file a second or subsequent Continuation application or RCE. Foreseen consequences of this rule would include:
• The need to file an Appeal to an Examiner’s final rejection ... with associated costs and time delays.

• The near impossibility of maintaining a pending application for an important patent family ... a tactic often used to craft claims to capture an infringing product or cover advancements of an invention.
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• The inability to get a patent on the allowed claims of an application and carve out rejected claims for a continuation application.

There would be no multiple applications with the same effective filing date, a common inventor and over- lapping disclosures, except with:
• Proof that claims of each application are patentable over claims of the other, or

• The filing of a terminal disclaimer with statement to justify the multiple applications.

The downside of this rule is the inability to file multiple applications targeted to protect different aspects of a complex invention. The second rule change affects strategy for Claims in patent applications. You can see this proposed rule at: http://www.uspto.gov/web/offices/com/sol/notices/71fr61.pdf.

The proposed rule is directed to providing a more focused examination and speeding up the process. In its present form, the rule dictates that:

Only independent and designated dependent claims will be initially examined.

If you are filing more than 10 independent claims, you must file a Support document (similar to a Petition to Make Special), including:
• Results of a pre-examination search of U.S. and foreign patents/applications and the literature (with a copy of the references).

• Identification of the elements of the claims disclosed in each reference.

• Detailed explanation of how each claim is patentable over the references.

• Statement of utility of the invention.

• Identification of support in the specification for each claim element.

Comments are being received by the USPTO until May 3, 2006 and can be submitted directly by email to AB93Comments@uspto.gov, by mail or by fax at (571) 273-7735, marked ATTN: Robert A. Clarke.

We would like to receive your comments on this proposed rule change. Please send to: Awagner@whdlaw.com or Kstrodthoff@whdlaw.com.

Alan E. Wagner is an associate in the Milwaukee office of Whyte Hirschboeck Dudek. His practice is concentrated in intellectual property law. He is experienced in patent drafting and prosecution, providing opinion letters, and intellectual property litigation. Reach him at (414) 978-5538 or awagner@whdlaw.com.

Kristine Strodthoff is a shareholder at Whyte Hirschboeck Dudek S.C. in Milwaukee and practices in Intellectual Property and IP Litigation. You can reach Kristine directly by calling 414-978-5531 or emailing kstrodthoff@whdlaw.com.

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