# Presentation: 087718

## James Toupin – General Counsel

**February 1, 2006**

## Summary of Proposed Rule Changes to Continuations,Double Patenting, and Claims

## Continuations/Double Patenting Proposed Rulemaking

**Main objectives:  **
**Assure adequate opportunity for prosecution to provide appropriate invention protection**
**Limit the “recycling” of old applications to permit the USPTO to focus examining resources on “new” applications**
**Create greater public certainty on scope of patent protection**
**Reduce the burden on the USPTO to review applications for double patenting**

**3**

## Central Provisions on Continuation Practice

**No change for the vast majority of applications**
**One continuation (broadly defined) always available as of right, whether in the form of**
** ****continuation application, or a request for continued examination (RCE); but with **
**with special rules for divisionals and continuations-in-part (CIPs)**
**Additional continuations available if applicant can show that the amendment, argument or evidence could not have been earlier submitted**

**3**

## Divisionals

**Only involuntary divisionals to be permitted:**
**Prior application subject to unity of invention (PCT Rule 13) requirement or restriction requirement (35 USC 121); and**
**Divisional contains only claims to inventions identified in the requirement and not elected in prior-filed application**
**Divisional application may claim the benefit of only a single prior-filed nonprovisional application.**

**3**

## Continuations-in-Part

**Identify what claims are supported by the parent’s disclosure**
**Identified claims (which are supported by parent’s disclosure) are given the earlier filing date **
**Claims not identified are only entitled to the filing date of the CIP**
**A continuation of the CIP is permitted but all claims only entitled to benefit of filing date of CIP**
**Practice consequence: Only include “new matter” claims in continuation from CIP**

**3**

## Identification of Related Applications and Double-Patenting 

**Identify any other application or patent having:**
**Common inventor;**
**Common assignee, or those so treated under CREATE Act; and**
**Filed within two months (taking into account priority/benefit claims)**
**A rebuttable presumption of double-patenting is established for identified applications/patents if have:**
**Same effective filing date **
**Substantially overlapping disclosure**

**3**

## Double-Patenting: Rebutting the Rebuttable Presumption

**Applicant must:**
**Show claims of application are patentably distinct from claims of other patent or application, or**
**Submit a terminal disclaimer and explanation of why patentably indistinct claims in two or more such applications should be maintained**
**If USPTO finds claims patentably indistinct, it may merge or require cancellation of indistinct claims unless good and sufficient reason shown**

**3**

- Changes to Practice for Continuing Applications
**Examples**

## ContinuationsBenefit Claims under 35 USC 120, 121, or 365(c) 

***One RCE, Continuation, or CIP Permitted***

- Provisional
- Application

- Nonprovisional
- Application claiming the benefit of the provisional application,
- 35 USC 119(e)

**Applicant may file: **
**an RCE, or**
**a continuation or a CIP application, claiming a benefit under 35 USC 120, 121 or 365(c)**

**#1**

**#2**

- #**3**

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## Continuations Benefit Claims under 35 USC 120, 121, or 365(c) 

***Divisional Applications Can Only Claim Benefit of One Prior Nonprovisional Application That Was Subject to a Restriction or Unity of Invention Requirement***

- Nonprovisional
- Application with claims to inventions **A, B, and C**

**Applicant may file **
**Divisional Applications claiming only the benefit of application #1 and the claims must be directed non-elected inventions in application #1**

**#1**

**#2**

- #**3**

- Restriction made in Application #1

- Applicant elected invention **A** and canceled claims directed to **B, and C**

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## Continuations Benefit Claims under 35 USC 120, 121, or 365(c) 

***One Continuing Filing after a Divisional Permitted***

- Provisional
- Application

- Nonprovisional
- Application claiming the benefit of the provisional application,
- 35 USC 119(e)

**Applicant may file: **
**a single RCE, or**
**continuation or CIP application of the divisional application**

- Divisional Application (as defined in proposed rule) to non-elected invention

**#1**

**#2**

- #**3**

- #**4**

- Restriction made in Application #2

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## Continuations Benefit Claims under 35 USC 120, 121, or 365(c) 

***Second Continuing Filing Requires Petition & Showing That the Amendment, Argument, or Evidence Could Not Have Been Earlier Submitted***

- Provisional
- Application

- Nonprovisional
- Application claiming the benefit of the provisional application

**Applicant may file a second or subsequent RCE or continuing application w/ a petition and showing**

- A first continuing application or an RCE

**#1**

**#2**

- #**3**

- #**4**

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## Continuations – Example 1

**Scenario:  Applicant files application #1 with 65 claims.  The USPTO requires restriction between the following groups:**
**Invention 1 - 15 claims; 3 independent + 12 dependent claims**
**Invention 2 - 30 claims; 5 independent + 25 dependent claims**
**Invention 3 - 20 claims; 1 independent + 19 dependent claims**
**Applicant may file two divisional applications, one each for inventions 2 and 3.**
**But, both will need to be filed during the pendency of application #1 in order to be entitled to claim the benefit of application #1’s filing date.  If divisional #3 is filed during the pendency of divisional #2, but not during pendency of application #1, it will only be entitled to the filing date of divisional #2.**

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## Continuations – Example 2

**Continuations – Example 2**

**Scenario: Applicant files application #1 claiming only 1 invention.  Later, applicant files application #2 with the same disclosure but claims direction to a different invention.  In application #2, the applicant claims the priority of application #1’s filing date.**
**This is permitted, but application #2 will be treated as the one continuation of application #1 allowed as a matter of right.  **
**  ****Therefore, neither applications #1 or #2 can have any additional RCEs or continuations absent a petition.**
**  ****Also, as both applications have the same effective filing date, there will be rebuttable presumption of double patenting.  The applicant will need to file a terminal disclaimer or argue persuasively that the claims are patentably distinct.**

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## Examples of a Showing for Filing a Second Continuing Application

**Example 1:****  In a continuation application, **
**An interference is declared in an application containing both claims corresponding to the count(s) and claims not corresponding to the count(s), and **
**The APJ suggests that the claims not corresponding to the count(s) be canceled from the application in interference and pursued in a separate application.**

**79**

## Examples of a Showing for Filing a Second Continuing Application

**Example 2:**** In a continuation application, **
**Data necessary to support a showing of unexpected results just became available to overcome a final rejection under 35 U.S.C. 103, and**
**The data is the result of a lengthy experimentation that was started after applicant received the rejection for the first time.**

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## Examples of a Showing for Filing a Second Continuing Application

**Example 3:**** In a continuation application, **
**The final rejection contains a new ground of rejection that could not have been anticipated by the applicant, and **
**The applicant seeks to submit evidence which could not have been submitted earlier to overcome this new rejection.**

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## Examples of Unacceptable Showing for Filing a Second Continuing Application

**Example 1:**** **
**An argument that a final rejection in one of the prior applications was premature. **
**Applicant should address the propriety of the final rejection during prosecution of the prior application, and not collaterally in a petition for a continuation application.**

**82**

## Examples of Unacceptable Showing for Filing a Second Continuing Application

**Example 2:**** **
**An argument that an amendment after final rejection should have been entered in the prior application.**
**Applicant should address the non-entry in the prior application, and not collaterally in a petition for a continuation application.**

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## To Submit Comments:

- Comments should be sent by electronic mail to the following addresses:
-   Continuations – _AB93Comments@uspto.gov_
-   Claims – _AB94Comments@uspto.gov_

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## Contact Information

**John Doll**
**   ****Commissioner for Patents**
**	****e-mail:****	**_**[john.doll@uspto.gov](mailto:john.doll@uspto.gov)**_
**	****Phone: ****	****571 272 8250 **
**	****	**

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