The U.S. Patent and Trademark Office recently proposed new rules that, if adopted, will require patent continuation applicants to show why their “amendment, argument, or evidence presented could not have been previously submitted.” 71 Fed. Reg. 48-61 (Jan. 3, 2006). Comments to the proposed rules are due on May 3. The proposed rules would apply to any second or subsequent continued examination filings, whether a continuation application, a continuation-in-part application or a request for continued examination.

The PTO asserts that “current continued examination practice … [is] impairing the Office’s ability to examine new applications without real certainty that these practices effectively advance prosecution, improve patent quality, or serve the typical applicant or the public.” But the PTO acknowledges that its “proposed requirements for seeking second and subsequent continuations will not have an effect on the vast majority of patent applications.” According to PTO 2005 statistics, fewer than 7 percent of applications would be affected by the proposed rules.

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