On August 21, 2007, the USPTO published new rules relating to claims and continuations in patent applications. The new rules are slated to become effective on November 1, 2007.

The USPTO has asserted to the United States public in the Federal Register notice of final rulemaking (August 21, 2007) that the new Rules will mean more "effective and efficient examination for the typical applicant without any additional work on the part of most applicants." Unfortunately, nothing could be futher from the truth. With the exception of patent applicants who file or have filed only a single patent application, the great majority of patent applicants/assignees will be affected by an extraordinary amount additional busy-work and costs incurred as a result of the new Rules. But perhaps this is the USPTO's purpose with the new Rules: to weave a tangled web and thus increase the present and future barriers for entry to the patent process so that its own workload (and backlog) can be reduced.

Not only will the new Rules unnecessarily burden patent applicants with fictional presumptions and administrative reporting requirements that appear to have little or no benefit or purpose for USPTO operations, but the Rules are also 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.

This page is dedicated to the unintended, hidden, arbitrary, and capricious effects of the new Claims and Continuations Rules, and will be updated in installments.

Unintended consequences?

1) Divisionals: "Be Fruitful and Multiply" After a restriction requirement, new Rule 1.78(a)(2) authorizes the filing of one or more "divisional" applications. The USPTO PowerPoint presentations on the new Rules indicate that an applicant may only file two continuations and one RCE in each divisional application family without a petition. But can you think of a better sequence to follow than this course that the USPTO might suggest?  (We hate petitions.)

Under the new Rules, would you not rather do this (two CONs and two RCEs)?

See, Does the USPTO understand its own new Rules on Divisionals?

2) RCEs for Everyone? (or "File Early, File Often") If you file two continuations in parallel from a single initial application, can you then make RCE requests in each continuation? More poignantly, what if before November 1, 2007 you file numerous "continuation" applications from a single initial application in which no RCE request has yet been filed, can you then (e.g. after November 1, 2007) file a "one more" type RCE request in each such continuation application?

See, Does the USPTO understand its own new RCE Rule 114?

UPCOMING: Suggested Restriction Requirements (SRRs) - are they impotent or are they powerful in ways the USPTO might not have even imagined? Learn about this tool which, as promulgated by the USPTO, might in unintended ways assist patent applicants in effecting safer patent prosecution (while at the same time taking the bite out of new Rule 704).

Homework: Study new 37 CFR 1.75, 37 CFR 1.78, 37 CFR 1.114, 37 CFR 1.265, and 37 CFR 1.704. Check back for more information soon.

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