Several Rule Changes under Consideration by the USPTO

In an effort to increase the efficiency of the US patent examination process, the United States Patent and Trademark Office (USPTO) has recently proposed two significant changes to its rules of practice. One change affects the number of claims that may be filed in any application, and the other affects the number of add-on applications that may be filed by an applicant. Under the first change, an applicant wishing to have more than 10 "representative claims" or more than 10 independent claims examined must submit an "examination support document". In any application, the "representative claims" consist of the independent claims and the dependant claims designated by the applicant for initial examination. An "examination support document" must state that a pre-examination search was conducted by the applicant, and provide a detailed explanation of how each of the representative claims are patentable over the references cited in the information disclosure statement. The second proposed rule change revises the continued examination practice by limiting to one the number of continued examination filings that an applicant may file as a matter of right. The USPTO's notice explains that subsequent continued examination filings, whether a continued examination, a continuation-in-part application or a request for continued examination, must be accompanied by additional fees and an explanation why the amendment, argument or evidence presented could not have been previously submitted. By virtue of this change, patentably indistinct claims from applications having the same effective filing date, overlapping disclosure, a common inventor and common assignee must be submitted in a single application. If implemented, each of these rule changes will apply retroactively to any pending application which has not yet been issued a first Office action on the merits. The USPTO is holding meetings across the United States to discuss the proposed rule changes and is also accepting written comments on the proposals. To review the USPTO's notice on the proposed rule changes and for more information on the meetings scheduled, visit: http://www.uspto.gov/web/offices/com/sol/notices/71fr48.pdf Summary by: Lenni Carreiro