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The U.S. Patent and Trademark Office (PTO) has become concerned about both the long patent application pendency period and the increasing number of new applications awaiting initial examination in technical areas such as biotechnology, nanotechnology, electronics and software. See, e.g., “PTO Commissioner Doll Says That Limiting Continuations Will Improve Patent Landscape,” 72 Pat. Trademark & Copyright J. (BNA), No. 1791, at 704 (2006). To shorten the average pendency period and to decrease the backlog numbers, the PTO has proposed and has implemented in part a multifaceted rule package. In short, the proposed rules may be thought of as a “one-and-done” mulligan. The best known mulligan, in golf, provides one opportunity at a second chance but only on the first hole. As will be explained below, like the golf mulligan, the proposed rules will provide only one opportunity at a second chance for a patent applicant to convince the examiner that the applicant deserves a patent, but only with respect to the first application for a patent. One proposed set of rules, if implemented, will severely constrain “continuation” practice, whereby an applicant for a patent refiles an original patent application any number of times to obtain the issuance of multiple patents covering various aspects of an invention. Under the current rules, there is no limit to how many such applications can be filed. The proposed rules would essentially limit a patent applicant to a single continuation application, forcing applicants to condense their efforts to obtain a patent into a much smaller window. One likely outcome of implementing these rules is a dramatic rise in the number of appealed cases, which may flood the Board of Patent Appeals and Interferences with more appeals than it can handle. In the end, this may not solve the pendency problem, but could make it worse. As this article goes to print, no one knows for sure whether the PTO will finalize the proposed rules to limit continuation practice, but it looks as if it may be implemented in some form. During the recent meeting of the American Intellectual Property Law Association, the commissioner for patents in the PTO, John Doll, acknowledged the PTO’s in-depth analysis into whether the PTO has authority to explore the new rules. 72 Pat. Trademark & Copyright J. (BNA), No. 1791, at 704 (” ‘We’ve looked into this extensively,’ Doll said. ‘There is no clear indication whether or not we have statutory authority to do this or not. There is some question. We know we’re going to get sued. We’ve weighed the options. We know we have better than a 50/50 chance of prevailing.’ “ ). Thus, the rules may be finalized in the very near future. Many patent attorneys have advocated filing many new second-, third- and later-generation applications before the effective date of the new rules. According to this view, these applications will not fall under the new rules, and it will be business as usual for these applications. Yet the proposed rules do contain a provision limiting the number of related applications that contain “patently indistinct claims.” This provision is both in the proposed rules and in an existing rule that the PTO has in the past not enforced. Furthermore, the PTO has signaled its intention to enforce the existing rule at the same time the proposed rules will be effective. So, regardless of when the applications are filed, if they contain “patently indistinct claims,” the PTO may dispose of them. In the end, the filing of many new second-, third- and later-generation applications before the effective date of the new rules may be detrimental for some existing first-generation applications, useless for some second-, third- and later-generation applications, and wasteful of resources for patents. Patents protect useful, new and nonobvious inventions. To obtain a patent, applicants file a patent application at the PTO. The PTO assigns the application to an examiner, who determines whether the application meets statutory requirements. If so, the application will issue as a patent. If not, the examiner will send to the applicants an office action, containing evidence and providing an explanation that shows why the application cannot issue. The applicants may counter with their own evidence and explanation. If the examiner and applicant reach impasse, the volley between the applicant and the examiner will repeat itself until the examiner sends the applicant a “final” office action. Asking PTO for another chance Currently, the word “final” does not necessarily mean the end of the examiner-applicant volley. Although, at this time, applicants may appeal the final action to other agency officials, they also may make the tactical choice to pay for a “mulligan,” by which we mean the applicants pay a fee and ask the PTO to give them another chance to convince the examiner that their invention is patentable. The two most popular mulligans are filing a request for continuing examining (RCE) or filing a continuing application. The RCE is a popular way to introduce new evidence and/or arguments into the same application so that the applicant may attempt to convince the examiner that the invention is patentable. (In metaphorical terms, an RCE typically resembles a second shot at the same hole in golf.) Unlike the RCE, a continuing application is a child application of the parent application, which contained the subject matter-causing impasse. Commonly, continuing applications are used to claim a new invention or an embodiment of the parent application. (In metaphorical terms, a continuing application typically resembles a second shot at a different hole in golf or a second shot at the same hole-but typically closer.) There is now virtually no limit on the number of continuing applications that may be filed in a single family. Furthermore, there is no limit on the number of RCEs that may be filed in a single application. But the settled practice will end if and when the proposed rules are finalized. What the rules would change At its most basic level, the proposed rules permit a single child application to claim the shielding benefit of only a single prior-filed parent (not grandparent, etc.) application as long as no RCE was filed in the prior-filed parent application. Although other siblings may be filed, no other siblings may claim the shielding benefit of the prior-filed parent application without a petition. (There are exceptions to the general rule for divisional and continuation-in-part (CIP) applications. This article is not a tutorial on the rules but merely provides general concepts.) A grantable petition must show that an amendment, argument or evidence in the continuing application could not have been submitted during the prosecution of that prior-filed application. Although there is no basis to determine whether these petitions will be freely granted, it is likely that these petitions will not be freely granted due to the demanding language. If not permitted as a matter of right or by way of petition, the child application would not be allowed to comply with the statutory requirements for claiming the shielding benefit of the earlier parent application. Proposed 37 C.F.R. 1.78(d)(3); 35 U.S.C 119. As a result, the application will not be shielded from certain patent-defeating events, like the publication of the parent application more than one year earlier (an absolute bar to patentability without the shield). Since most parent applications will publish at 18 months and since most siblings will be examined between 30 and 48 months after the parent was filed, a publication will have had existed for more than a year, an absolute bar to patentability, using the description of the applicants’ own invention against the applicant. Although this tactic may sound shocking, it furthers bean-counter quality, because the PTO will be able to dispose of the application in about two sentences. Along these lines, the RCE practice will change by allowing one and only one RCE to be filed as a matter of right in a parent (first-generation) application. Proposed 37 C.F.R. 1.114(f). No RCE may be filed in a child/sibling application (with some limited exceptions) without a petition showing need. Any improperly filed RCE would not stop the time period of the previous office action. Proposed 37 C.F.R. 1.114(f). In other words, the applicant will be forced to appeal or let the application go abandoned. Despite these results, the practitioner will be hard-pressed to design around the rules. In some patent attorney conferences, however, some attorneys have been advising clients to file many children applications. Heretofore, it has been commonplace for applicants to file parallel applications containing claims to closely related subject matter that may or may not have been patentably distinct. This practice has prevailed notwithstanding a rule allowing the PTO to force applicants to cancel “conflicting” claims from all but one such application unless the applicant can demonstrate need. 37 C.F.R. 1.78(b) (2006). In any case, the lack of enforcement will likely end soon after the proposed rules are finalized. 71 Fed. Reg. 51, cols. 2-3 (Jan. 3, 2006); 37 C.F.R. 1.78(b)(2006). For applications filed after the effective date, the even stricter requirements apply. The new proposed rules further require an applicant to identify any other pending parent or sibling application(s) or patent(s) that were effectively filed within two months of the effective filing date of the application, that name at least one common inventor and that are owned by at least one common assignee. Proposed 37 C.F.R. 1.78(f)(1). Importantly, the “effectively filed date” takes into account the filing date for which the benefit is sought. Thus, if two parent or sibling applications claim the benefit of the same priority document, then the benefit sought is the same. The issue of double patenting A rebuttable presumption of double patenting also arises if two parent or sibling applications contain claims having the same effective filing date, one or more common inventors, one or more common assignees and substantially overlapping disclosures. Proposed 37 C.F.R. 1.78(f)(2). In this case, the applicant will be required to cancel the claims, to rebut the presumption or to submit a terminal disclaimer and a showing why patentably indistinct claims should be maintained as a matter of need. Proposed 37 C.F.R. 1.78(f)(2). Furthermore, if an applicant chooses to file multiple applications that contain substantially the same disclosure, then the PTO wants that applicant to resolve any potential double-patenting issues rather than take no action until faced with a double-patenting rejection. Indeed, the PTO clearly wants to resolve double-patenting issues before the first office action. 71 Fed. Reg. 55, col. 2 (Jan. 6, 2006). Finally, the PTO says it may require elimination of patentably indistinct claims from all but one of the applications, absent the applicant’s showing of need. Proposed 37 C.F.R. 1.78(f)(3). As a result, those who file many children applications either before or after the effective date of the rules run the risk of foreclosing options to file an RCE or a well-timed continuing application in the parent application. For applications filed after the effective date, the applicants will be allowed a one-and-done mulligan. Multiple children applications filed before the effective date may be limited to claims that are patentably distinct (or newly added subject matter as in a CIP) from those in the parent application. For this reason, it appears that many people have focused on the wrong things. Getting it right the first time The best focus seems to be on the claims-that applications contain all the statutory classes and the right range of breadth; on the record-that applications contain all the evidence needed to prove the patentability of the claims; and on all the arguments that could be raised. Further, the record should be examined to make sure that no errors were made, especially because it is unclear how the proposed rules fit into either the current practice on appeal or the current doctrine regarding reissue applications (For example, is failing to gain an allowance at examination/appeal level an error that is correctable by reissue, and if so, what, if anything, was surrendered?) Of course, such things are the subject of other papers in progress. In any case, practitioners should consider filing a sibling only when that filing will not limit options in the parent case or present double-patenting issues. In a parent, they should use international applications (not bypass applications) and amendments under articles 19 and 34, request early examination in foreign countries if needed and by all means, remember the name of the game: claims supported by a record. Sean Allen Passino, an associate at Foley & Lardner, is a member of the chemical and pharmaceutical practice group and of the life sciences and nanotechnology industry teams. Stephen B. Maebius, an IP partner at the firm, is chairman of the nanotechnology industry team, and Stephen A. Bent, a partner at the firm, is co-chairman of the life sciences industry team and founder of the firm’s life sciences practice. All three are resident in the firm’s Washington office.

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