On August 21, 2007, the USPTO published new Claims and Continuations Rules which are slated to become effective on November 1, 2007. These rules are poorly written, convoluted, inexplicably verbose, and unnecessarily complex. Moreover, and almost incredibly, they fail by their very wording to achieve the effects described by the USPTO in the Federal Register notice, the FAQs, and the public PowerPoint presentations which interpret them, as noted e.g. here and here and here.

Because these rules are so poorly written, the amount of American resources and capital which would be wasted simply to apply the new Rules to the patent process is staggering. (To understand this effect which has already begun, one only need peruse the comments from lawyers in the posts relating to the new Rules at the legal blog Patently-O to see the differing understandings, the frustrations, and the confusion which the new Rules are creating.)

Below, we provide only one example of how the patent landscape will be unnecessarily muddled and perhaps permanently marred by the new Rules. Countless other examples might also be given.

Determining Permissible Continuations and RCEs
for a Patent Application

Much of the confusion over the new Rules centers around the illogical and disjointed manner in which the new Rules have been laid out. For example, if an attorney wants to determine whether the filing of a continuation application or an RCE would be permissible under the new Rules, he would have to read, analyze, synthesize, and understand at a minimum:

37 CFR 1.78(a) - 279 words
37 CFR 1.78(d)(1)(i)-(iii) - 662 words
37 CFR 1.114(f) - 287 words

That is, in order to answer a single question which would need to be frequently considered in the landscape the new Rules would create, he would have to uncover three new Rule sections and analyze and understand the legal significance of more than 1225 words of regulatory text.  So we asked, would there be better language which could very easily be had?  (Please note that we do not espouse these Rules or the measures they seek to regulate, nor is the USPTO given express or implied permission to use the copyrighted text.  Rather, we are trying to show that the new Rules are poorly written, convoluted, and verbose, and that they are therefore arbitrary, capricious, vague, and an abuse of agency discretion.)

Would there be Better Language Easily to be Had?

In only two hours of labor, we at NIPRA came up with this replacement regulatory language which would (in 256 words) apparently:

1) accomplish the equivalent of what the USPTO has said is intended by the above sections of the new Rules in the Federal Register Notice, the FAQs, and the PowerPoint public presentations;
2) set out all the regulatory conditions for filing of continuations and RCEs in a single place (paragraph (f) below; now wouldn't that be simple?);
3) define application types in a way that wouldn't require "waivers" by the USPTO from the outset to ensure the effects of the Rules were not contrary to Treaty or unfair under law;
4) not require frequently-changing FAQs to redefine restriction practice as expressly promulgated in new Rule 142(a) and as practiced by Examiners for decades;
5) not generate the inconsistencies with the Federal Register notice and the loopholes we noted previously; and
6) make intuitive sense to any attorney who would read such language, without requiring an inordinate amount of time spent by the attorney or expense incurred for the applicant.

Here, then, is the replacement language (in blue) which we believe even a non-patent attorney could understand, with the corresponding USPTO promulgated language (in red) below it:

Continuing Applications and Examination Practice (Replacement Language):

(a) A continuing application is a nonprovisional application or an international application designating the United States of America that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed nonprovisional application or international application designating the United States of America. An initial application is a nonprovisional application or an international application designating the United States of America that is not a continuing application.

(b) A continuing application can be a continuation application, a continuation-in-part application, or a divisional application.

(c) A continuation application is a nonprovisional continuing application that discloses and claims only an invention or inventions that were disclosed in the prior-filed application.

(d) A continuation-in-part application is a nonprovisional continuing application that discloses subject matter that was not disclosed in the prior-filed application.

(e) A divisional application is a nonprovisional continuing application which claims the benefit of the prior-filed application and which is directed only to an invention which was finally restricted pursuant to 37 CFR 1.142 or 1.499 during the examination of the prior-filed application and which was not thereafter examined.

(f) Each initial application and each divisional application may be the direct basis for at most two continuation or continuation-in-part applications and one request for continued examination without a petition and showing under 37 CFR 1.78(d)(1)(vi) or 1.114(g). Each continuation or continuation-in-part application and each request for continued examination must, at the time of filing, find its proper direct basis in a prior-filed initial application or divisional application.

© 2007.  All rights reserved.

Continuing Applications and Examination Practice (USPTO Language)

37 CFR 1.78(a)

(a) Definitions (1) Continuing application. A continuing application is a nonprovisional application or an international application designating the United States of America that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed nonprovisional application or international application designating the United States of America. An application that does not claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application is not a continuing application even if the application claims the benefit under 35 U.S.C. 119(e) of a provisional application, claims priority under 35 U.S.C. 119(a)- (d) or 365(b) to a foreign application, or claims priority under 35 U.S.C. 365(a) or (b) to an international application designating at least one country other than the United States of America.

(2) Divisional application. A divisional application is a continuing application as defined in paragraph (a)(1) of this section that discloses and claims only an invention or inventions that were disclosed and claimed in a prior-filed application, but were subject to a requirement to comply with the requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 in the prior-filed application, and were not elected for examination and were not examined in any prior-filed application.

(3) Continuation application. A continuation application is a continuing application as defined in paragraph (a)(1) of this section that discloses and claims only an invention or inventions that were disclosed in the prior-filed application.

(4) Continuation-in-part application. A continuation-in-part application is a continuing application as defined in paragraph (a)(1) of this section that discloses subject matter that was not disclosed in the prior-filed application.

37 CFR 1.78(d)(1)(i)-(iii)

(d) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed nonprovisional or international application. A nonprovisional application (including an international application that has entered the national stage after compliance with 35 U.S.C. 371) may claim the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States of America under the conditions set forth in 35 U.S.C. 120 and paragraph (d) of this section.

(1) A nonprovisional application that claims the benefit of one or more prior- filed copending nonprovisional applications or international applications designating the United States of America must satisfy the conditions set forth in at least one of paragraphs (d)(1)(i) through (d)(1)(vi) of this section. The Office will refuse to enter, or will delete if present, any specific reference to a prior-filed application that is not permitted by at least one of paragraphs (d)(1)(i) through (d)(1)(vi) of this section. The Office's entry of, or failure to delete, a specific reference to a prior-filed application that is not permitted by at least one of paragraphs (d)(1)(i) through (d)(1)(vi) of this section does not constitute a waiver of the provisions of paragraph (d)(1) of this section.

(i)(A) The nonprovisional application is either a continuation application as defined in paragraph (a)(3) of this section or a continuation-in-part application as defined in paragraph (a)(4) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of no more than two prior-filed applications; and

(B) Any application whose benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in such nonprovisional application has its benefit claimed in no more than one other nonprovisional application, not including any nonprovisional application that satisfies the conditions set forth in paragraph (d)(1)(ii), (d)(1)(iii) or (d)(1)(vi) of this section.

(ii)(A) The nonprovisional application is a divisional application as defined in paragraph (a)(2) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application that was subject to a requirement to comply with the requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121; and

(B) The divisional application contains only claims directed to an invention or inventions that were identified in such requirement to comply with the requirement of unity of invention or requirement for restriction but were not elected for examination and were not examined in the prior filed application or in any other nonprovisional application, except for a nonprovisional application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such divisional application and satisfies the conditions set forth in paragraph (d)(1)(iii) or (d)(1)(vi) of this section.

(iii)(A) The nonprovisional application is a continuation application as defined in paragraph (a)(3) of this section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a divisional application that satisfies the conditions set forth in paragraph (d)(1)(ii) of this section;

(B) The nonprovisional application discloses and claims only an invention or inventions that were disclosed and claimed in such divisional application;

(C) The nonprovisional application claims the benefit under 35 U.S.C. 120, 121, or 365(c) of only the divisional application, any application to which such divisional application claims benefit under 35 U.S.C. 120, 121, or 365(c) in compliance with the conditions set forth in paragraph (d)(1)(ii) of this section, and no more than one intervening prior-filed nonprovisional application; and

(D) The divisional application whose benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in such nonprovisional application has its benefit claimed in no more than one other nonprovisional application, not including any other divisional application that satisfies the conditions set forth in paragraph (d)(1)(ii) or any nonprovisional application that claims the benefit under 35 U.S.C. 120 or 365(c) of such other divisional application and satisfies the conditions set forth in paragraph (d)(1)(iii) or (d)(1)(vi) of this section.

37 CFR 1.114(f)

(f) An applicant may file a request for continued examination under this section in an application without a petition under paragraph (g) of this section if the conditions set forth in at least one of paragraphs (f)(1), (f)(2), or (f)(3) of this section are satisfied:

(1) A request for continued examination under this section has not previously been filed in any of:

(i) The application;
(ii) Any application whose benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in such application; and
(iii) Any application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such application, not including any nonprovisional application that satisfies the conditions set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).

(2) The application is a divisional application that satisfies the conditions set forth in § 1.78(d)(1)(ii), and a request for continued examination under this section has not previously been filed in any of:

(i) The divisional application; and
(ii) Any application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such divisional application, not including any nonprovisional application that satisfies the conditions set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).

(3) The application is a continuation application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a divisional application and satisfies the conditions set forth in § 1.78(d)(1)(iii), and a request for continued examination under this section has not been filed in any of:

(i) The continuation application;
(ii) The divisional application; and
(iii) Any other application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such divisional application, not including any nonprovisional application that satisfies the conditions set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).

An American Plea for Reason

Mr. Dudas, we all understand that a large portion of the patent system is broken, and that fixes will need to be legislated and regulated if we as a nation are going to preserve our worldwide position of industrialized technological leadership.  These new Rules, however, are not part of the solution.  Rather, it is probable that these new Rules will merely exacerbate the problems which already exist in the patentability determination process and will cause countless hours of lost American productivity (as we fear they have already done in private industry and may soon begin to do in the Examining Corps).  There are innumerable individuals in this nation of ours who are ready, willing, and able to begin the process of fixing what is broken with the patent system.  Tap into them, and please do not trouble them further with trying to correct these Rules or other USPTO initiatives which are designed only to serve the agency (if that) while doing a disservice to the country.

Mr. Dudas, we implore you for the love of country, tear down these rules!

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