United States Patent and Trademark Office OG Notices: 06 Nov 2007
Clarification of the Transitional Provisions
Relating to Continuing Applications and
Applications Containing Patentably Indistinct Claims
The United States Patent and Trademark Office (USPTO) published
a final rule notice revising the provisions of 37 CFR 1.78 pertaining
to continuing applications and applications containing patentably
indistinct claims. See Changes to Practice for Continued Examination
Filings, Patent Applications Containing Patentably Indistinct Claims, and
Examination of Claims in Patent Applications, 72 Fed. Reg. 46716 (Aug. 21,
2007), 1322 Off. Gaz. Pat. Office 76 (Sept. 11, 2007) (final rule notice).
The changes to 37 CFR 1.78 in this final rule notice are effective on
November 1, 2007. This notice clarifies provisions of that final rule
notice concerning the "one more" continuing application provision,
continuation-in-part applications filed before November 1, 2007, and
the requirement for identification of certain applications that are
commonly owned and have at least one common inventor.
Clarification of the Transitional "One More" Continuing Application
Provision: The final rule notice provides a transitional "one more"
continuing application provision. This permits an applicant who filed more
than two continuation or continuation-in-part applications of an initial
application before August 21, 2007, to file "one more" continuing
application on or after November 1, 2007, without a petition and
showing, if there is no other application filed on or after August 21,
2007, that claims the benefit of the prior-filed applications.
Specifically, the final rule notice indicated that "[w]ith respect
to applications that claim the benefit under 35 U.S.C. 120, 121, or
365(c) only of nonprovisional applications or international
applications filed before August 21, 2007: an application is not
required to meet the requirements set forth in 37 CFR 1.78(d)(1) if:
(1) The application claims the benefit under 35 U.S.C. 120, 121, or
365(c) only of nonprovisional applications filed before August 21, 2007
or applications entering the national stage after compliance with 35
U.S.C. 371 before August 21, 2007; and (2) there is no other
application filed on or after August 21, 2007 that also claims the
benefit under 35 U.S.C. 120, 121, or 365(c) of such prior-filed
nonprovisional applications or international applications." See
Changes to Practice for Continued Examination Filings, Patent
Applications Containing Patentably Indistinct Claims, and Examination
of Claims in Patent Applications, 72 Fed. Reg. at 46717 and
46736-37, 1322 Off. Gaz. Pat. Office at 76 and 93. However,
under the transitional "one more" continuing application provision
as set forth in the final rule notice, if applicant files another
continuing application after the filing of the "one more"
continuing application, the benefit claim submitted in the "one
more" continuing application would no longer be proper, even when the
later-filed continuing application is an application that satisfies the
conditions set forth in 37 CFR 1.78(d)(1).
This notice modifies the transitional "one more" continuing application
provision to permit applicant to file "one more" continuing application and
any continuing applications that satisfy the conditions set forth in 37 CFR
1.78(d)(1)(ii), (d)(1)(iii), or (d)(1)(vi) (e.g., a divisional application
that claims a non-elected invention that has not been examined) on or after
November 1, 2007, without a petition and showing. More specifically, a
continuing application that satisfies the conditions set forth in 37 CFR
1.78(d)(1)(ii), (d)(1)(iii), or (d)(1)(vi) will not be taken into account
for purposes of determining whether there is an "other application filed on
or after August 21, 2007 that also claims the benefit under 35 U.S.C. 120,
121, or 365(c) of such prior-filed nonprovisional applications or
international applications" under the transitional "one more" continuing
application provision. For example, applicant may file "one more"
continuation application on or after November 1, 2007, without a petition
and showing, even if applicant already filed a divisional application that
satisfies the conditions set forth in 37 CFR 1.78(d)(1)(ii) on or after
August 21, 2007 (assuming applicant did not file any other continuation or
continuation-in-part application on or after August 21, 2007). As another
example, applicant may file a divisional application that satisfies the
conditions set forth in 37 CFR 1.78(d)(1)(ii) claiming the benefit of the
"one more" continuation application filed on or after November 1, 2007,
without a petition and showing.
The provisions of 37 CFR 1.78(d)(1) in effect on November 1,
2007 are hereby waived to the extent that a continuing application that
satisfies the conditions set forth in 37 CFR 1.78(d)(1)(ii),
(d)(1)(iii), or (d)(1)(vi) will not be taken into account for purposes
of determining whether there is an "other application filed on or
after August 21, 2007 that also claims the benefit under 35 U.S.C. 120,
121, or 365(c) of such prior-filed nonprovisional applications or
international applications" under the transitional "one more"
continuing application provision as set forth in the final rule notice.
See 37 CFR 1.183.
Treatment of Continuation-In-Part Applications Filed
Before November 1, 2007: The final rule notice also revised
37 CFR 1.78(d)(3) to provide that: "[I]f an application is
identified as a continuation-in-part application, the applicant must
identify the claim or claims in the continuation-in-part application
for which the subject matter is disclosed in the manner provided by the
first paragraph of 35 U.S.C. 112 in the prior-filed application." The
final rule notice does not provide any special applicability or
compliance date for this provision of 37 CFR 1.78(d)(3). Thus, the
final rule notice makes this change to 37 CFR 1.78 applicable to
pending continuation-in-part applications as of November 1, 2007. The
USPTO is in this notice waiving or delaying the requirement for
compliance with this requirement of 37 CFR 1.78(d)(3) with respect to
pending continuation-in-part applications.
First, for any continuation-in-part application in which a
first Office action on the merits has been mailed before November 1,
2007, the requirement in 37 CFR 1.78(d)(3) that an applicant must
identify the claim or claims in the continuation-in-part application
for which the subject matter is disclosed in the manner provided by the
first paragraph of 35 U.S.C. 112 in the prior-filed application is
hereby waived. This waiver does not affect the authority provided in 37
CFR 1.105(a)(1)(ix) for the Office to require that, in appropriate
situations, the applicant show where a prior application provides
support under the first paragraph of 35 U.S.C. 112 for the invention as
defined in the claims of an application.
Second, for continuation-in-part applications filed before
November 1, 2007 but for which a first Office action on the merits has
not been mailed before November 1, 2007, the applicant may
delay compliance with the requirement in 37 CFR 1.78(d)(3) that an
applicant must identify the claim or claims in the continuation-in-part
application for which the subject matter is disclosed in the manner
provided by the first paragraph of 35 U.S.C. 112 in the prior-filed
application until February 1, 2008.
Identification of Applications Having a Common Owner and at Least One
Common Inventor under 37 CFR 1.78(f)(1): The USPTO is waiving the "or
within two months of" provision of 37 CFR 1.78(f)(1)(i)(A) for applications
filed before November 1, 2007. Specifically, in an application having an
actual filing date before November 1, 2007 ("subject application"), the
applicant in the subject application is not required to identify any other
pending or patented application that does not have the same actual filing
date or the same benefit or priority filing date as the subject application,
even if the other application has an actual filing date or benefit or
priority filing date within two months of the subject application. However,
the applicant in the subject application is required to identify any other
pending or patented nonprovisional application that has the same actual
filing date or the same benefit or priority filing date as the subject
application, if the conditions set forth in 37 CFR 1.78(f)(1)(i)(B) and
(C)[1] are met.
For example, if the subject application has an actual filing
date of August 1, 2007, and claims the benefit of a provisional
application filed on August 1, 2006, and if there is another
application (application "B") that has an actual filing date of
August 15, 2007, and claims the benefit of a provisional application
filed on August 15, 2006 (and having an inventor in common and commonly
owned with the subject application), the applicant in the subject
application is not required to identify application "B". This is
because the subject application and application "B" do not have the
same actual filing date or the same benefit or priority filing date
(even though they have actual filing dates or benefit or priority
filing dates within two months of each other).
The USPTO is also waiving the "or within two months of"
provision of 37 CFR 1.78(f)(1)(i)(A) in certain instances for
applications filed on or after November 1, 2007.
Specifically, in an application having an actual filing date on
or after November 1, 2007 ("subject application"), the
applicant in the subject application is not required to identify any
other pending or patented application that has an actual filing date or
benefit or priority filing date before November 1, 2007, unless: (1)
the subject application has a benefit or priority filing date that is
the same as the actual filing date or the benefit or priority filing
date of the other application; or (2) the subject application has an
actual filing date or benefit or priority filing date on or after
November 1, 2007 that is the same as or within two months of the
actual filing date or the benefit or priority filing date of the other
application. Thus, if the actual filing date of the subject application
is on or after November 1, 2007, 37 CFR 1.78(f)(1)(i)(A), as partially
waived in this notice, requires the applicant in the subject
application to identify each other pending or patented nonprovisional
application for which the conditions set forth in 37 CFR
1.78(f)(1)(i)(B) and (C) are met only if: (1) the subject application
has a benefit or priority filing date before November 1, 2007, that is
the same as the actual filing date or the benefit or priority filing
date of the other pending or patented application, or (2) the subject
application has an actual filing date or benefit or priority filing
date on or after November 1, 2007, that is the same as or within two
months of the actual filing date or the benefit or priority filing date
of the other pending or patented application.
For example, if the subject application has an actual filing
date of December 1, 2007, claims the benefit of a nonprovisional
application filed on August 1, 2007, and also claims the benefit of a
provisional application filed on August 1, 2006, and if there is
another application (application "B") that has an actual filing
date of August 15, 2007, and claims the benefit of a provisional
application filed on August 15, 2006 (and having an inventor in common
and commonly owned with the subject application), the applicant of the
subject application is not required identify application "B". This
is because the subject application does not have an actual filing date
or priority or benefit filing date before November 1, 2007, that is the
same as the actual filing date or the benefit or priority filing date
of application "B", and because the subject application does not
have an actual filing date or benefit or priority filing date on or
after November 1, 2007, that is the same as or within two months of the
actual filing date or the benefit or priority filing date of
application "B".
Comparing to the following example, if application "C" has
an actual filing date of December 15, 2007, claims the benefit of a
nonprovisional application filed on August 15, 2007, and also claims
the benefit of a provisional application filed on August 15, 2006, the
applicant in the subject application is required to identify
application "C". This is because the subject application has an
actual filing date or benefit or priority filing date on or after
November 1, 2007 (i.e., December 1, 2007) that is within two
months of the actual filing date or priority or benefit filing date of
application "C" (i.e., December 15, 2007).
This notice is also clarifying the meaning of the term "examined" as
used in 37 CFR 1.78(d)(1)(ii)(B): The term "examined" in 37 CFR
1.78(d)(1)(ii)(B) is limited to examination within the meaning of 35 U.S.C.
131 and 37 CFR 1.104 in a national application under 35 U.S.C. 111(a) or a
national stage application resulting from an international application
entering the national stage in the United States under 35 U.S.C. 371. The
term "examined" in 37 CFR 1.78(d)(1)(ii)(B) does not include
the international phase examination under PCT Article 31 that occurs as
a result of the filing of a Demand for international preliminary
examination. Therefore, if an applicant files an initial application
which is an international application designating the U.S. and the
International Searching Authority determines that the international
application lacks unity of invention under PCT Rule 13, the filing of a
Demand and the examination of all the inventions in Chapter II would
not preclude the applicant from filing a divisional application for
each invention not elected for examination in the application after
entry into the national stage, assuming that such divisional application or
applications otherwise meet the conditions set forth in 37 CFR
1.78(d)(1)(ii). The question and answer (C11) on this issue that was
originally posted on September 26, 2007, will be revised for consistency
with this notice.
For further information concerning this notice, please consult
the Claims and Continuation Final Rule webpage which is available at
http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/clmcontfinal-
rule.html, and if further information is needed, please contact the Office
of Patent Legal Administration, by telephone at (571) 272-7704, or by
e-mail at PatentPractice@USPTO.gov.
October 10, 2007 JOHN LOVE
Deputy Commissioner for
Patent Examination Policy
[1] 37 CFR 1.78(f)(1)(i)(B) and (C) pertain to the conditions of naming at
least one inventor in common with the other pending or patented application,
and being owned by the same person, or subject to an obligation of assign-
ment to the same person, as the other pending or patented application.