Practical Prosecution Strategies In View Of The U.S. Patent Office’s New Continuation Rules – Part I

August 23, 2007

in Examples of Responses,Prosecution Strategy

On August 21, 2007, the long awaited final rules (“the new rules”) substantially changing (limiting) continuation practice and requests for continued examination (RCEs) were published. This post is the first of a series discussing practice suggestions and prosecution strategies to consider in response to these changes.

A Summary of the New Rules Regarding Continuation Practice

The new rules limit the the number of continuations to which an Applicant is entitled to two. The new rules also limit the number of RCEs to which an Applicant is entitled to one. After these quotas are exhausted, an Applicant will be required to show why the content of further filings could not have been previously submitted. Importantly, these restrictions apply to each claim family, which the Patent Office defines as including an initial application and its continuation or continuation-in-part applications. Consequently, an Applicant is entitled to just a single RCE for the an entire claim family, as a matter of right.

The New Rules Are An “Amplification” Of The Patent Office’s Policy Of “Compact Prosecution”

The Patent Office says that these new rules will improve application quality and prevent piecemeal and protracted examination, thereby enhancing the quality and timeliness of both the examination process and issued patents. Commissioner for Patents John Doll has been quoted as saying that “[these changes] will lead to a more focused examination process that will effectively promote innovation.”

Commentary On The New Rules

I find it difficult to see how limiting continuations and RCEs will effect the Office’s desired result. In fact, it seems to me (and many others) that the new rules almost guarantee protracted examination by ensuring that more cases will be appealed to the Board of Patent Appeals. It is my belief that the companies that have the resources to file multiple continuations are the ones who will easily have the resources to appeal final rejections. The end result, I believe, will be a tremendous bottleneck at the Board. One of the best discussions of the problems with the new rules was put forth by the AIPLA in a letter to the Patent Office commenting on the new rules when they were proposed last year. I agree with the AIPLA, deliberate and cautious prosecution should not be punished.

Practice Suggestions And Prosecution Strategies

It is axiomatic that one way to minimize the effects of the new rules is to try to avoid final Office Actions, while still deliberately and cautiously prosecuting applications. The following are a few ways to increase the likelihood of achieving this goal.

1. Use the Office’s policy of “compact prosecution” to the Applicant’s advantage

The Office’s policy of “compact prosecution” imposes obligations on Examiners that have important practical ramifications that can be of strategic value in prosecution. So, I suggest getting reacquainted with the policy and exercise every opportunity to use it to try to preclude the finality of second (and/or subsequent) Office Actions. Aspects of the policy of “compact prosecution” as well as examples of how to advantageously use the policy are discussed here.

2. Maximize persuasiveness by avoiding the temptation to make every possible argument in every response

A natural reaction to the new rules is to make every possible patentability argument in every response. I suggest avoiding this temptation. Instead, try to think like the writer of an appeal brief and present to the Examiner only the best two or three patentability arguments available. In other words, follow the adage “less is more.” This approach tends to avoid inadvertently diluting or “burying” the best arguments. Just make certain to take steps to avoid any implication of a waiver of selectively withheld arguments. I discussed some techniques for avoiding any such implications in a couple of earlier posts here and here.

3. Include a summary when multiple patentability arguments are presented

To increase the likelihood that every argument will be considered, I suggest including a summary of the arguments being presented. This will alert the Examiner that multiple, discrete patentability arguments rather than one long argument will follow. One way to accomplish is might be to use the following technique.

Presume that independent claim 1, recites features of an apparatus that includes, among other features, a curved widget with a center passage. Then, an appropriate summary might look like the following.

Applicant respectfully submits that independent claim 1 patentably defines over the asserted combination of the patents to Smith and Jones for at least the following reasons.

1. The asserted combination is deficient because it does not disclose at least the aforementioned features of claim 1, at least because:

(i) the Smith and Jones patents expressly teach that the widget must be flat; and

(ii) the Jones patent does not disclose the center passage.

2.The asserted combination is improper at least because each of the combined citations teaches against the asserted combination.

Also, Applicant respectfully submits that the Office has failed to make out a prima facie case of obviousness against independent claim 1 because it has failed to sufficiently articulate why one of ordinary skill in the art would have been motivated to make the asserted combination.

Coming Up In Part II – Examiner Interviews, After Final Practice, and Pre-Appeal Requests for Review

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© 2007, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

{ 2 comments… read them below or add one }

Brian September 12, 2007 at 12:10 am

You will note that the BPAI is floating new rules for appeal briefs that will make them significantly longer (i.e., more expensive to file and easier to reject on nitpicky formatting grounds). The PTO is preemptively dealing with the upcoming swell of appeals by making it a lot harder to appeal.

Jason September 15, 2007 at 5:13 pm

As a new patent attorney, (I have been an agent for a few years) I have a few questions about the new rules that I would like comments on from the patent bar,
1. In a family with multiple after final cases, would it be desirable to file RCE’s prior to Nov. 1?
2.a. Can you withdraw a traversal? 2b.Is a withdrawal of traversal of a restriction requirement, where election has previously been made, effective to make restriction final, such that multiple divisionals are allowed, under the new rules in cases without a first office action on the merits yet?

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