Devoted to Corporate Attorneys, Corporate Lawyers, and Corporate Counsel

The following is not meant to be legal advice.

During the week of August 22, 2007, the United States Patent and Trademark Office (USPTO) published rules for patent prosecution. The rules take effect on November 1, 2007.  Some of the rules have retroactive effect for patents already pending.

The rules relate to: 1) continuation practice; 2) divisional practice; and 3) the examination of claims by the USPTO.  

Continuation practice allows an applicant to obtain additional patent protection for an invention by filing additional applications within a patent family.  Continuing applications have been filed when patent coverage is desired beyond the current patent family. Under the new rules, an applicant can file only two continuation applications.

Divisional practice allows an applicant to request patent protection for multiple ideas disclosed in the same application.  Divisionals claiming different ideas contained in a single application can be filed only when required by the USPTO.  Divisional applications have been filed when an original application contains multiple ideas, with a separate divisional application filed to cover each idea.  Before the new rules, there is no limit on the number of divisional applications that can be filed. Under the new rules, applications protecting different ideas can be filed only when the examiner requires it, or if the applicant decides to voluntarily use the continuing application.