About The USPTO Continuation Rules Webinar . . .
For the many that participated in the USPTO's webinar, the 271 Patent Blog will be providing free ibuprofen (or an analgesic of your choice) for all attendees - email me for a free dose.
All-in-all, the webinar was minimally helpful - for the most part, the webinar was a ver batim read from the USPTO slides (for a copy, click here), delivered in a late-night infomercial format:
(Voice 1): "Could you explain to the practitioners listening out there, if applicants have to show original support for claims in a CIP application?"
(Voice 2): "Yes they do! Under the rules, applicants must identify the claims in a CIP application that are supported by the prior-filed application . . ."
There was some useful information during the Q&A, but it is clear that there is a lot of material to digest before anyone is minimally comfortable with the rule changes. It would have helped if the presentation didn't sugar-coat some of the more serious ramifications of the rule changes (raise your hand if you noticed that some questions weren't actually answered when asked).
For example, regarding the continuation "limit", it was repeatedly stated that, if a continuation was found to be improper, "priority would not be granted, and prior art documents could be considered up to the filing date of the original filing date of the continuation."
It sounds rather innocuous, but the reality is that the application is dead in the water: unless your continuation filing date is less than one year after original publication, your own application will become a 102(b) reference.
One question I wanted to ask was about the petition and showing - "could you provide one or two examples of a proper 'showing' that would justify the filing of an additional continuation?" To be honest, I can't imagine what an applicant could say that would be convincing. The PTO's been eerily quiet on this topic, and apparently has no interest in giving guidance on this.
The other problem was with the Examination Support Documents and their effect on the PTO. Presumably, examiners will be charged with referencing/cross-referencing claims from different applications. If there are families of applications, Examiners will now have to spend time slogging through multiple applications, looking for "substantial overlap", patentably indistinct claims, divisional rejoinders, and potential "15/75" violations before they can even begin to search for prior art. If examiners are already pressed for time in examining applications, I have no idea how they will deal with these changes.
It also appears that cross-referencing applications is now considered a "material" part of USPTO examination. I wonder how McKesson v. Bridge Medical will view the applicant that failed to properly cross-reference all related filings on an issued patent?
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I asked that question as well via email at the very beginning of the Webcast. It wasn't answered. I also had the follow-on question regarding what happens if a petition is denied. Does the case stay alive for appeal? So if I get a final, and want to file an RCE with a petition, does the clock keep ticking when I file it? Or do I then have a chance to appeal instead if my petition is denied?
Here's what I can't figure out -- it's not clear in the FR notice, the webinar gave inconsistent answers, and PTO didn't respond to the emailed question:
If applicant has a family of applications, including multiple continuations pending on 8/21, how many continuations can be filed by 10/31? One? One off each pending? As many as the applicant wants?
What about after 11/1? My take is only 1 continuation can be filed after that date (for the whole family, not per application). True?
How about this: You file an application with three embodiments and 6/30 claims and an SRR. The examiner can either:
1) restrict, and the search one embodiment and examine 2/10 claims, doing normal examination work; or
2) not restrict, and wait for you to abandon and refile (due to the ESD time limit), receiving two counts; or
3) not restrict, have you file the ESD which analyzes the prior art and 6/30 claims for him, and then restrict you either before or after the FAOM (if this happens to you more than once, shame on you!); or
4) not restrict, have you file the ESD which analyzes the prior art and 6/30 claims for him, and then register your claims; or
5) not restrict, have you file the ESD which analyzes the prior art and 6/30 claims for him, and issue a willy-nilly rejection.
However, I expect an internal memo to be circulated in the USPTO shortly forthwith preventing examiners from choosing options 1), 4), or 5), in as much as they would be bad for office operations.
I asked that question as well via email at the very beginning of the Webcast. It wasn't answered. I also had the follow-on question regarding what happens if a petition is denied. Does the case stay alive for appeal? So if I get a final, and want to file an RCE with a petition, does the clock keep ticking when I file it? Or do I then have a chance to appeal instead if my petition is denied?
I wouldn't file an RCE with a petition in that case. The RCE abandons the parent case. if the petition fails, you are out of luck.
If applicant has a family of applications, including multiple continuations pending on 8/21, how many continuations can be filed by 10/31? One? One off each pending? As many as the applicant wants?
You can file as many as you want before november 1, but you are using your "one more" continuation.
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