strategies for continued prosecution and extra claims

Strategies for Continued Strategies for Continued Prosecution and Extra Prosecution and Extra

ClaimsClaims

San Francisco IP Law San Francisco IP Law AssociationAssociation

September 13, 2007September 13, 2007

February 2, 2008February 2, 2008

Best of Times? Worst Best of Times? Worst of Times?of Times?

In re SeagateIn re Seagate (CAFC) (CAFC) eBay v. MercExchangeeBay v. MercExchange (S. (S.

Ct.)Ct.) H.R. 1908 – Goodbye, H.R. 1908 – Goodbye,

Marshall, TexasMarshall, Texas Continued increases in Continued increases in

total application filing total application filing volumevolume

Plenty to analyze Plenty to analyze creatively and respondcreatively and respond

KSR v. TeleflexKSR v. Teleflex (S. Ct.) (S. Ct.) H.R. 1908 – Submission of H.R. 1908 – Submission of

search report (like ESD) in search report (like ESD) in every applicationevery application

Long pendency, green Long pendency, green examiners, examiner examiners, examiner language issues, 50% language issues, 50% allowance rate, low quality of allowance rate, low quality of Office actions based on Office actions based on management imperative to management imperative to rejectreject

Rejections under 35 U.S.C. Rejections under 35 U.S.C. 101; 101; Macrossan/AerotelMacrossan/Aerotel (UK- (UK-EPO)EPO)

ESD (“Explicit Self ESD (“Explicit Self Destruction”?), rebuttable Destruction”?), rebuttable presumptions, identification presumptions, identification of related cases, limits on of related cases, limits on claimsclaims

Explain references in IDSs Explain references in IDSs but no change in inequitable but no change in inequitable conduct lawconduct law

AgendaAgenda

Highlights of rule changesHighlights of rule changes Strategies for considerationStrategies for consideration

Faulty strategiesFaulty strategies Applications for a related set of Applications for a related set of

inventionsinventions What to do between now and What to do between now and

November 1, 2007 & February 1, 2008November 1, 2007 & February 1, 2008 New routine tasks in prosecutionNew routine tasks in prosecution

Highlights of Rule ChangesHighlights of Rule Changes

LIMITS ON CONTINUATION APPLICATIONS LIMITS ON CONTINUATION APPLICATIONS AND REQUESTS FOR CONTINUED AND REQUESTS FOR CONTINUED EXAMINATION (RCE)EXAMINATION (RCE) 2 continuations or CIPs as of right, 1 RCE as of 2 continuations or CIPs as of right, 1 RCE as of

rightright Any number of RCEs, Continuations, and CIPs Any number of RCEs, Continuations, and CIPs

for causefor cause USES OF THE TWO OF-RIGHT CONTINUATIONSUSES OF THE TWO OF-RIGHT CONTINUATIONS

to continue prosecution of claims not allowed in a to continue prosecution of claims not allowed in a parent case (after using one RCE)parent case (after using one RCE)

to cause consideration of newly-discovered prior art to cause consideration of newly-discovered prior art (after using one RCE)(after using one RCE)

to pursue broader/different claims than those allowed to pursue broader/different claims than those allowed in a parent casein a parent case

to “keep the chain alive” to allow claims to be to “keep the chain alive” to allow claims to be custom-tailored to later-identified infringing productscustom-tailored to later-identified infringing products

Highlights of Rule ChangesHighlights of Rule Changes

EXPEDITED HANDLING OF CERTAIN OF-EXPEDITED HANDLING OF CERTAIN OF-RIGHT CONTINUATIONSRIGHT CONTINUATIONS For scheduling purposes, of-right For scheduling purposes, of-right

continuations will be treated as RCEs if the continuations will be treated as RCEs if the applicant expressly abandons the parent applicant expressly abandons the parent case and agrees to only pursue the case and agrees to only pursue the invention of the parent case in the invention of the parent case in the continuationcontinuation

Highlights of Rule Changes—“For Cause” RCE, Highlights of Rule Changes—“For Cause” RCE, CON, CIPCON, CIP

Must be:Must be: Filed with a petition and $400 feeFiled with a petition and $400 fee Filed to obtain consideration of an amendment, argument or Filed to obtain consideration of an amendment, argument or

evidenceevidence Supported by a showing as to why the amendment, argument Supported by a showing as to why the amendment, argument

or evidence sought to be entered or evidence sought to be entered could not could not have been have been previously submittedpreviously submitted

If petition not granted, then the deadline for response If petition not granted, then the deadline for response continues running from the final Office Actioncontinues running from the final Office Action

Of-right RCE must be used before any for-cause RCEs, but Of-right RCE must be used before any for-cause RCEs, but applicant may file a for-cause RCE before using any of-right applicant may file a for-cause RCE before using any of-right continuationscontinuations

Of-right continuations must be used before any for-cause Of-right continuations must be used before any for-cause continuationscontinuations

Filing a for-cause CON before using the of-right RCE is not Filing a for-cause CON before using the of-right RCE is not expressly prohibited, but USPTO probably less likely to expressly prohibited, but USPTO probably less likely to grant the petition for the continuation.grant the petition for the continuation.

For-cause RCEs, CONs and CIPs cannot be used merely to For-cause RCEs, CONs and CIPs cannot be used merely to have newly-discovered prior art considered.have newly-discovered prior art considered.

For-cause CON or CIP is likely to be permitted only in For-cause CON or CIP is likely to be permitted only in limited circumstances, since CONs and CIPs are not filed limited circumstances, since CONs and CIPs are not filed with argument, amendments, or evidencewith argument, amendments, or evidence

Highlights of Rule Changes—Highlights of Rule Changes—Retroactive EffectRetroactive Effect

No currently-filed case will become invalid, No currently-filed case will become invalid, even if its family violates the 2/1 ruleeven if its family violates the 2/1 rule

For cases that belong to families that have For cases that belong to families that have already had an RCE, no further RCEs will be already had an RCE, no further RCEs will be available after Nov. 1available after Nov. 1

For cases that belong to families that have For cases that belong to families that have already had two CONs/CIPs, any number of already had two CONs/CIPs, any number of CONs/CIPs can be filed before Nov. 1, but the CONs/CIPs can be filed before Nov. 1, but the CONs/CIPs will be subject to the 5/25 per-CONs/CIPs will be subject to the 5/25 per-family claim limit rule.family claim limit rule.

For every case that belongs to a family that For every case that belongs to a family that has already had two CONs/CIPs, has already had two CONs/CIPs, AND no AND no CONs/CIPs were filed in the family CONs/CIPs were filed in the family between Aug. 21 and Nov. 1between Aug. 21 and Nov. 1, a single , a single CON/CIP can be filed after Nov. 1CON/CIP can be filed after Nov. 1

Highlights of Rule Changes—5/25 Claim Highlights of Rule Changes—5/25 Claim LimitLimit

No more than 5 independent claims and 25 No more than 5 independent claims and 25 total claims may be pending in all total claims may be pending in all applications of a familyapplications of a family

Divisional branches excludedDivisional branches excluded Issued patents excludedIssued patents excluded Allowed claims excluded (allowed applications are Allowed claims excluded (allowed applications are

not “pending”—72 Fed.Reg. 46726 col. 1 not “pending”—72 Fed.Reg. 46726 col. 1 paragraph 2)paragraph 2)

Each divisional branch has a separate 5/25 Each divisional branch has a separate 5/25 claim limit for the branchclaim limit for the branch

Divisionals cannot be used to pursue non-Divisionals cannot be used to pursue non-restricted inventionsrestricted inventions


Avoidable by filing an Examination Support Avoidable by filing an Examination Support Document (ESD)Document (ESD)

Must be filed before the first Office ActionMust be filed before the first Office Action Must be updated when IDSes filed and when claims Must be updated when IDSes filed and when claims

amendedamended Must includeMust include

Pre-examination search reportPre-examination search report Listing of referencesListing of references Mapping of limitations of claims to content of Mapping of limitations of claims to content of

prior art references; small entities are exempt prior art references; small entities are exempt from thisfrom this

Arguments of patentability for each Arguments of patentability for each independent claim, including arguments why it independent claim, including arguments why it would not be obvious to combine the referenceswould not be obvious to combine the references

Identification of where in the specification there Identification of where in the specification there is support for each limitation of every claimis support for each limitation of every claim


Possibly avoidable by filing a Suggested Possibly avoidable by filing a Suggested Restriction Requirement (SRR)Restriction Requirement (SRR)

For cases filed before Nov. 1, SRRs may be For cases filed before Nov. 1, SRRs may be submitted in response to requests to conform to submitted in response to requests to conform to the 5/25 rulethe 5/25 rule

If the SRR is accepted, no refund is given for If the SRR is accepted, no refund is given for previously paid extra claims fees (even previously paid extra claims fees (even though you later cancel the claims)though you later cancel the claims)

For cases filed after Nov. 1, SRRs must be For cases filed after Nov. 1, SRRs must be submitted within four months of filingsubmitted within four months of filing


Retroactive EffectRetroactive Effect Applies to all not-yet-allowed casesApplies to all not-yet-allowed cases Refund of extra claim fees must be requested Refund of extra claim fees must be requested

within 2 months of canceling claims, for fees paid within 2 months of canceling claims, for fees paid on or after Dec. 8, 2004, or USPTO keeps all on or after Dec. 8, 2004, or USPTO keeps all previously paid feespreviously paid fees

Highlights of Rule Changes—Common-Inventor Highlights of Rule Changes—Common-Inventor CasesCases

Applicant must identify all common-inventor Applicant must identify all common-inventor cases with filing and/or priority dates within cases with filing and/or priority dates within 2 months of each other2 months of each other

An identification need not be filed in allowed An identification need not be filed in allowed cases, but allowed cases must be included cases, but allowed cases must be included in the identifications submitted in other in the identifications submitted in other casescases

For the purpose of identifying the cases, a For the purpose of identifying the cases, a two-month window around two-month window around each filing date each filing date in the priority chainin the priority chain must be considered. must be considered.

Identification must be made within four Identification must be made within four months of the filing date—by February 1, months of the filing date—by February 1, 2008 for all now-pending cases2008 for all now-pending cases


A rebuttable presumption is established that A rebuttable presumption is established that claims in common-inventor cases with claims in common-inventor cases with samesame priority date and substantial overlapping priority date and substantial overlapping disclosure are patentably indistinctdisclosure are patentably indistinct

Allowed cases are excluded from the need to Allowed cases are excluded from the need to rebut the presumptionrebut the presumption

Rebuttable presumption must be rebutted within Rebuttable presumption must be rebutted within four months of the filing datefour months of the filing date

Rather than rebutting the presumption, an Rather than rebutting the presumption, an applicant may file a terminal disclaimer. applicant may file a terminal disclaimer. However, doing so will cause the cases to be However, doing so will cause the cases to be collectively subject to the 5/25 limitation on collectively subject to the 5/25 limitation on claims, and to be consolidated at the Examiner’s claims, and to be consolidated at the Examiner’s discretiondiscretion

Use of “incorporation by reference” could result in Use of “incorporation by reference” could result in otherwise unrelated cases having “substantial otherwise unrelated cases having “substantial overlapping disclosure”overlapping disclosure”


Why is the USPTO doing this?Why is the USPTO doing this? USPTO can require applicant to remove all claims USPTO can require applicant to remove all claims

from one of the applications. 37 CFR 1.78(f)(3)from one of the applications. 37 CFR 1.78(f)(3) When the cases have the When the cases have the same same effective filing effective filing

date and the presumption is not rebutted clearly date and the presumption is not rebutted clearly USPTO almost certainly will require this. Standard USPTO almost certainly will require this. Standard for effective rebuttal is unknown.for effective rebuttal is unknown.

When the cases have different effective filing When the cases have different effective filing dates but within the 2-month window, the USPTO dates but within the 2-month window, the USPTO still can require this, but will probably do so in still can require this, but will probably do so in more limited circumstances. more limited circumstances.

Main purpose of the data may be to see if one Main purpose of the data may be to see if one examiner can do a single search for all casesexaminer can do a single search for all cases

Does not supplant requirements of Does not supplant requirements of DaycoDayco


Retro-Active EffectRetro-Active Effect Identification of common-inventor cases due in all Identification of common-inventor cases due in all

not-yet-allowed cases not-yet-allowed cases by Feb. 1, 2008by Feb. 1, 2008 Presumption must be rebutted in all not-yet-Presumption must be rebutted in all not-yet-

allowed same-priority common-inventor cases allowed same-priority common-inventor cases by by Feb. 1, 2008Feb. 1, 2008

Highlights of Rule Changes—Final Highlights of Rule Changes—Final RejectionsRejections

FIRST-ACTION FINAL REJECTIONSFIRST-ACTION FINAL REJECTIONS RCEs, CONs and CIPs can still have first action RCEs, CONs and CIPs can still have first action

final rejectionsfinal rejections Unless the applicant was denied entry in the Unless the applicant was denied entry in the

parent case of an amendment, argument, or new parent case of an amendment, argument, or new evidenceevidence

SECOND-ACTION FINAL REJECTIONSSECOND-ACTION FINAL REJECTIONS Second-action rejections with new grounds of Second-action rejections with new grounds of

rejection can be made final if the new grounds arerejection can be made final if the new grounds are Necessitated by an amendmentNecessitated by an amendment Based on information submitted in an IDS Based on information submitted in an IDS

under 37 C.F.R. 1.97(c)under 37 C.F.R. 1.97(c) Based on double-patenting Based on double-patenting Necessitated by an applicant identifying a CIP Necessitated by an applicant identifying a CIP

claim as one that is supported by the parent claim as one that is supported by the parent casecase

Highlights of Rule Changes—Highlights of Rule Changes—MiscellaneousMiscellaneous

CIPsCIPs Applicant must identify which claims are Applicant must identify which claims are

supported by parentsupported by parent Identification should be made before the searchIdentification should be made before the search

New Treatment of Certain ClaimsNew Treatment of Certain Claims Dependent claims that do not incorporate by Dependent claims that do not incorporate by

reference all limitations of the parent claim are reference all limitations of the parent claim are counted as independent for both fees and the counted as independent for both fees and the 5/25 limit5/25 limit

Dependent claims that change statutory category Dependent claims that change statutory category are counted as independent for both fees and the are counted as independent for both fees and the 5/25 limit5/25 limit

Priority ClaimPriority Claim Priority claim must now be in a separate Priority claim must now be in a separate

paragraph than the paragraph that merely recites paragraph than the paragraph that merely recites related casesrelated cases

Possible Filing-Claiming StrategiesPossible Filing-Claiming Strategies

File SRRs in all cases where it can be reasonably File SRRs in all cases where it can be reasonably argued that claims are to distinct inventionsargued that claims are to distinct inventions

Concurrently cancel all (or do not include any) claims Concurrently cancel all (or do not include any) claims to non-elected inventions except for one independent to non-elected inventions except for one independent claim each, to permit requesting a refund (or avoid claim each, to permit requesting a refund (or avoid payment) of the claim fees of the cancelled (not filed) payment) of the claim fees of the cancelled (not filed) claims if the SRR is granted. If the SRR is not granted, claims if the SRR is granted. If the SRR is not granted, you can always add as many claims as possible back you can always add as many claims as possible back into the case.into the case.

When reasonable arguments for patentability When reasonable arguments for patentability exist, appeal instead of using of-right RCEs, exist, appeal instead of using of-right RCEs, CONs, CIPsCONs, CIPs

Every response should leave the case “ready for Every response should leave the case “ready for appeal”. appeal”.

Amend as necessary to avoid making arguments that Amend as necessary to avoid making arguments that are not strong enough to comfortably appeal.are not strong enough to comfortably appeal.


File a PCT with more than 5/25 claims. Use File a PCT with more than 5/25 claims. Use the information obtained from the PCT the information obtained from the PCT search and examination to make better use search and examination to make better use of the 5/25 claims that the case will be of the 5/25 claims that the case will be limited to when it enters national phase in limited to when it enters national phase in the U.S.the U.S.

To increase the period between priority date and To increase the period between priority date and examination, file a U.S. provisional, then a PCT, examination, file a U.S. provisional, then a PCT, and then a U.S. national stage application.and then a U.S. national stage application.

For pending CIPs that do not need a priority For pending CIPs that do not need a priority claim, cancel the priority claim so that they claim, cancel the priority claim so that they are not counted against the family to which are not counted against the family to which they currently claim priority, and so that they currently claim priority, and so that their family is not counted against them.their family is not counted against them.


If some claims are allowed, but you want to If some claims are allowed, but you want to continue arguing other claims that are not, file continue arguing other claims that are not, file an appeal with all claims rather than using an an appeal with all claims rather than using an of-right continuation.of-right continuation.

If a final Office Action contains bad rejections If a final Office Action contains bad rejections based on newly-cited art, appeal rather than based on newly-cited art, appeal rather than use an RCE and file a request for pre-appeal use an RCE and file a request for pre-appeal brief conference with the 5-page mini-brief.brief conference with the 5-page mini-brief.

For applications that received first actions on For applications that received first actions on the merits before Nov. 1, take advantage of the merits before Nov. 1, take advantage of their exemption from the 5/25 rule by adding their exemption from the 5/25 rule by adding new claims in these cases (or in RCEs of these new claims in these cases (or in RCEs of these cases) instead of filing continuations.cases) instead of filing continuations.

Faulty StrategiesFaulty Strategies

File separate applications, each of which File separate applications, each of which contains claims to all of the inventions; file contains claims to all of the inventions; file SRRs in each case, where each SRR elects a SRRs in each case, where each SRR elects a different invention; if the restrictions are different invention; if the restrictions are granted, divisionals may be filed in each granted, divisionals may be filed in each case to get more claims and continuations case to get more claims and continuations on the inventions pursued in the other caseson the inventions pursued in the other cases

Problem: the invention of claims pursued in a Problem: the invention of claims pursued in a divisional cannot have been examined in any divisional cannot have been examined in any other applicationother application

Faulty StrategiesFaulty Strategies

File a single application that contains claims File a single application that contains claims to all of the inventions; file an SRR that to all of the inventions; file an SRR that elects the most important invention; use the elects the most important invention; use the continuations of the divisional cases to continuations of the divisional cases to continue to pursue claims on the most continue to pursue claims on the most important inventionimportant invention

Problem: the invention of claims pursued in a Problem: the invention of claims pursued in a continuation of a divisional must be directed to continuation of a divisional must be directed to the same invention as the divisionalthe same invention as the divisional

Strategies for Related Inventions:Strategies for Related Inventions:

1. Single Original Application with Claims to All 1. Single Original Application with Claims to All InventionsInventions

2. Single Original Application to One Invention, CON 2. Single Original Application to One Invention, CON to Claim All Other Inventionsto Claim All Other Inventions

3. Separate Applications for Each Invention, Filed on 3. Separate Applications for Each Invention, Filed on the Same Daythe Same Day

4. Separate Applications for Each Invention, Filed on 4. Separate Applications for Each Invention, Filed on Different DaysDifferent Days

Strategies for Related Inventions:Strategies for Related Inventions:1. Single Original Application with Claims to 1. Single Original Application with Claims to

All InventionsAll Inventions SpecificsSpecifics

file a single “original” application with a specification that file a single “original” application with a specification that describes all of the inventions and that includes one describes all of the inventions and that includes one independent claim for each of the distinct inventionsindependent claim for each of the distinct inventions

include with the filing a Suggested Restriction Requirement include with the filing a Suggested Restriction Requirement (SRR), arguing why the claims are patentably distinct(SRR), arguing why the claims are patentably distinct

if the restriction requirement is granted, cancel the non-if the restriction requirement is granted, cancel the non-elected claims and use the available claim slots for more elected claims and use the available claim slots for more claims to the elected inventionclaims to the elected invention

while any application in the priority chain to the original while any application in the priority chain to the original application is pending, file divisionals for the non-elected application is pending, file divisionals for the non-elected inventionsinventions

PROSPROS The divisionals may be filed serially or in parallel. The option The divisionals may be filed serially or in parallel. The option

to serially file the divisionals allows the applicant to defer both to serially file the divisionals allows the applicant to defer both filing and prosecution costs.filing and prosecution costs.

CONSCONS Each of the divisionals must have an inventor in common with Each of the divisionals must have an inventor in common with

all applications in its priority chain to the original application. all applications in its priority chain to the original application. This option only works if there are five or fewer distinct This option only works if there are five or fewer distinct

inventions.inventions. Even if the inventions are patentably distinct, the Examiner Even if the inventions are patentably distinct, the Examiner

may decide to examine all claims anyway. In that case, all may decide to examine all claims anyway. In that case, all claims to all inventions are limited to the 5/25 claim number claims to all inventions are limited to the 5/25 claim number rule.rule.

Strategies for Related Inventions:Strategies for Related Inventions:2. Single Original Application to One 2. Single Original Application to One

Invention, CON to Claim All Other InventionsInvention, CON to Claim All Other Inventions SpecificsSpecifics

file an application with a full set of claims for one of the file an application with a full set of claims for one of the inventionsinventions

when the original application is allowed, use one of the when the original application is allowed, use one of the continuations of the pending application to file a multi-invention continuations of the pending application to file a multi-invention application as described in Option 1application as described in Option 1

PROSPROS the divisionals may be filed serially or in parallel. The option to the divisionals may be filed serially or in parallel. The option to

serially file the divisionals allows the applicant to defer both filing serially file the divisionals allows the applicant to defer both filing and prosecution costs.and prosecution costs.

CONSCONS Uses one of the original application’s continuationsUses one of the original application’s continuations The multi-invention application will have only one continuation (if The multi-invention application will have only one continuation (if

not already used by the original application)not already used by the original application) the multi-invention application will have only one RCE (if not the multi-invention application will have only one RCE (if not

already used by the original application)already used by the original application) Each of the divisionals must have an inventor in common with all Each of the divisionals must have an inventor in common with all

applications in its priority chain to the original application. applications in its priority chain to the original application. This option only works if there are five or fewer distinct This option only works if there are five or fewer distinct

inventions.inventions. Even if the inventions are patentably distinct, the Examiner may Even if the inventions are patentably distinct, the Examiner may

decide to examine all claims anyway. In that case, all claims to decide to examine all claims anyway. In that case, all claims to all inventions are limited to the 5/25 claim number rule.all inventions are limited to the 5/25 claim number rule.

Strategies for Related Inventions:Strategies for Related Inventions:3. Separate Applications for Each Invention, 3. Separate Applications for Each Invention,

Filed on the Same DayFiled on the Same Day SpecificsSpecifics

File on the same day a separate application, with a full set File on the same day a separate application, with a full set of claims, for each inventionof claims, for each invention

File, with each application, a listing that identifies the File, with each application, a listing that identifies the other applicationsother applications

File, with each application, an explanation that rebuts the File, with each application, an explanation that rebuts the presumption that the claims are patentably indistinctpresumption that the claims are patentably indistinct

PROSPROS The various separate applications need not have The various separate applications need not have

overlapping inventorship.overlapping inventorship. As long as you successfully rebut the presumption that As long as you successfully rebut the presumption that

the claims are patentably indistinct, you cannot be forced the claims are patentably indistinct, you cannot be forced to consolidate the claims. Therefore, each patentably to consolidate the claims. Therefore, each patentably distinct invention will have the full 5/25 claims available.distinct invention will have the full 5/25 claims available.

CONSCONS The applications are subject to the rebuttable The applications are subject to the rebuttable

presumption that they are not patentably distinctpresumption that they are not patentably distinct This option is available only when the first application is This option is available only when the first application is

filed. filed. All applications are prosecuted in parallel, without All applications are prosecuted in parallel, without

deferring any filing or prosecution costs.deferring any filing or prosecution costs.

Strategies for Related Inventions:Strategies for Related Inventions:4. Separate Applications for Each Invention, 4. Separate Applications for Each Invention,

Filed on Different DaysFiled on Different Days SpecificsSpecifics

file on different days (e.g. 1 day apart) separate applications file on different days (e.g. 1 day apart) separate applications for each inventionfor each invention

file, with each application, a listing that identifies the other file, with each application, a listing that identifies the other applicationsapplications

PROSPROS Not subject to the rebuttable presumption that the claims are Not subject to the rebuttable presumption that the claims are

not patentably distinctnot patentably distinct The various separate applications need not have overlapping The various separate applications need not have overlapping

inventorship.inventorship. As long as you successfully rebut the presumption that the As long as you successfully rebut the presumption that the

claims are patentably indistinct, you cannot be forced to claims are patentably indistinct, you cannot be forced to consolidate the claims. Therefore, each patentably distinct consolidate the claims. Therefore, each patentably distinct invention will have the full 5/25 claims available.invention will have the full 5/25 claims available.

CONSCONS If inventorship is not identical, then the first-filed application If inventorship is not identical, then the first-filed application

may be used as a 102(e) reference against the other may be used as a 102(e) reference against the other applications. The applicant may have to file an affidavit (131 applications. The applicant may have to file an affidavit (131 or 132) to overcome this rejection.or 132) to overcome this rejection.

Impact on novelty in corresponding EPO filings needs Impact on novelty in corresponding EPO filings needs consideration.consideration.

This option is only available at the time the first application is This option is only available at the time the first application is filed.filed.

All applications are prosecuted in parallel, without deferring All applications are prosecuted in parallel, without deferring any filing or prosecution costs.any filing or prosecution costs.

Action Between Now and November 1, Action Between Now and November 1, 20072007

DEVELOP MECHANISM FOR IDENTIFYING DEVELOP MECHANISM FOR IDENTIFYING COMMON-INVENTOR CASESCOMMON-INVENTOR CASES

Challenges in identificationChallenges in identification File identification papersFile identification papers

FILE RCES IN CERTAIN CASESFILE RCES IN CERTAIN CASES In any pending applications that In any pending applications that

currently have a Final Office Action issued; currently have a Final Office Action issued; an RCE has previously been filed in any case an RCE has previously been filed in any case

in its family (excluding divisional branches); in its family (excluding divisional branches); another RCE is desirableanother RCE is desirable

The second or subsequent RCE must be filed The second or subsequent RCE must be filed before Nov. 1, 2007before Nov. 1, 2007

After Nov. 1, 2007, no other RCE can be filed in After Nov. 1, 2007, no other RCE can be filed in that casethat case


DETERMINE NEW CLAIM GUIDELINESDETERMINE NEW CLAIM GUIDELINES Strategies that result in large numbers of claims Strategies that result in large numbers of claims

(e.g. multiple claim forms, multiple independent (e.g. multiple claim forms, multiple independent claims for each claim form, and full sets of claims for each claim form, and full sets of dependent claims in each claim form) will no dependent claims in each claim form) will no longer be viablelonger be viable

Determine conditions for filing an SRRDetermine conditions for filing an SRR


DETERMINE GUIDELINES TO GOVERN DETERMINE GUIDELINES TO GOVERN CANCELLATION OF CLAIMSCANCELLATION OF CLAIMS

Determine how to respond to notices of 5/25 Determine how to respond to notices of 5/25 violation (the reply period is only 2 months)violation (the reply period is only 2 months)

Example: to minimize the decision-making cost, Example: to minimize the decision-making cost, the default response could be to cancel all non-the default response could be to cancel all non-method dependent claims. method dependent claims.

Alternative: Hold claim decision conferences in Alternative: Hold claim decision conferences in which the in-house counsel, outside attorneys, which the in-house counsel, outside attorneys, and inventors brainstorm about which claims and inventors brainstorm about which claims would be most valuable to keep.would be most valuable to keep.

DETERMINE Whether to Immediately Cancel DETERMINE Whether to Immediately Cancel Priority Claims in Pending CIPsPriority Claims in Pending CIPs

If you wait until final rejection or allowance, it If you wait until final rejection or allowance, it may be too late—the required showing is may be too late—the required showing is stringentstringent

New Routine Prosecution TasksNew Routine Prosecution Tasks

AT THE TIME OF FILINGAT THE TIME OF FILING In all cases, identify common-inventor casesIn all cases, identify common-inventor cases In all cases, determine whether to file an SRRIn all cases, determine whether to file an SRR In some cases, file an SRRIn some cases, file an SRR In common-inventor/same-priority cases In common-inventor/same-priority cases

(including those already pending), file rebuttal of (including those already pending), file rebuttal of the presumption that the claims are patentably the presumption that the claims are patentably indistinctindistinct

New Routine Prosecution TasksNew Routine Prosecution Tasks

DURING PROSECUTIONDURING PROSECUTION In all currently-pending cases that have not yet been In all currently-pending cases that have not yet been

examined, determine whether to file an SRR and/or examined, determine whether to file an SRR and/or determine which claims to canceldetermine which claims to cancel

In all currently-pending CIPs, determine whether to In all currently-pending CIPs, determine whether to cancel the claim of prioritycancel the claim of priority

Consider appealing rather than using an of-right RCE Consider appealing rather than using an of-right RCE or CON.or CON.

Consider filing petitions to obtain for-cause RCEs, Consider filing petitions to obtain for-cause RCEs, CONs, and CIPs; be aware of large extension and/or CONs, and CIPs; be aware of large extension and/or revival fees if for-cause petitions are deniedrevival fees if for-cause petitions are denied

Make all responses “ready for appeal”Make all responses “ready for appeal” AT ALLOWANCEAT ALLOWANCE

Determine whether claims can be added to any Determine whether claims can be added to any other application having patentably indistinct claimsother application having patentably indistinct claims

Thank youThank youDiana Hamlet-Cox Ph.D.Diana Hamlet-Cox Ph.D.

Vice President and Chief Patent CounselVice President and Chief Patent CounselMedarex, Inc.Medarex, Inc.

Duane R. ValzDuane R. ValzAssociate General Counsel, PatentsAssociate General Counsel, Patents

Yahoo!, Inc.Yahoo!, Inc.

Christopher J. PalermoChristopher J. PalermoPartner, Hickman Palermo Truong & Becker LLPPartner, Hickman Palermo Truong & Becker LLP

[email protected]@hptb-law.com

strategies for continued prosecution and extra claims

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