USPTO Issues "Clarification" on Continuation Rules for Transitional Applications

When the continuation rules were released, some of our more obsessive-compulsive brethren (said with all due respect) have scoured the continuation rule changes line-by-line, and started notating disconnects and irregularities within the rules.

A good example is the National IP Researchers Association (NIPRA), which slavishly cut through the rules (and comments, and FAQ's, and slides!) and exposed a regulatory mistake in 37 CFR 1.114(f) regarding RCE's. In fact, it appeared that the PTO caught this mistake, and quietly modified the slide presentations without further fanfare (to view NIPRA's analysis, click here).

Now, it appears that there is additional confusion over the "one more" provision on continuations filed before November 1, and additional confusion over the requirement for identification of certain applications that are commonly owned and have at least one common inventor. In response to the apparent confusion, the USPTO has published a "clarification" in the OG, which was published yesterday.

As far as the "clarifying" effect goes, the notice fails in spades. Again, it's not that the information is bad - it just takes multiple reads to understand what the notice is trying to say. For example:

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.

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) are met.

I'll be slogging through the notice (for the third time) later today, and will have updated posts. In the meantime, enjoy.

Download notice here (link)

UPDATE: Hats off to the Patent Docs Blog, which provides a rundown here (link)