Cook Alex News

Important new rule changes are being implemented by the USPTO and will go into full effect for all pending applications on November 1, 2007.

Over the last several years, the United States Patent and Trademark Office (USPTO) has been facing a backlog of patent applications and mounting criticism regarding its examination of patent applications. In its attempt to address these problems, the USPTO recently issued complex new rules:

Imposing additional burdens when filing more than five independent claims or more than twenty-five total claims per application or invention
Limiting the number of continuations or continuations-in-part that may be filed to no more than two
Limiting the applicant to one Request for Continued Examination (RCE) per application family
Modifying how divisional applications are treated
Adding further reporting requirements for new and pending applications

Exceptions may be available, but only upon an additional showing or petition by the applicant.

These new rules limit options previously available to applicants and may impose significant new burdens. We also believe that the new rules may increase patent prosecution costs and will likely shift those costs to an earlier stage of the patent application process. For clients with substantial patent portfolios, significant effort will be required to meet certain reporting requirements starting November 1, 2007. However, we believe that there are alternatives available to address concerns the rule changes raise.

These new rules have been only recently announced and will go into full effect for all pending applications on November 1, 2007. Many rules, however, may affect how patent applications are prosecuted prior to the effective date.

We understand that this announcement may create additional questions or concerns. We will be providing
additional information in the coming weeks regarding these rule changes and the effects they may have on patent portfolios. We at Cook Alex seek to provide services that protect, enforce, defend and maximize your patent portfolio and look forward to working with you to address these new rule changes.


IP Alerts News & Events Media Coverage Publications & Presentations Legal Resources Claim Construction	September 14, 2007 New USPTO Rules Regarding Claims and Continuations
	Important new rule changes are being implemented by the USPTO and will go into full effect for all pending applications on November 1, 2007. Over the last several years, the United States Patent and Trademark Office (USPTO) has been facing a backlog of patent applications and mounting criticism regarding its examination of patent applications. In its attempt to address these problems, the USPTO recently issued complex new rules: Imposing additional burdens when filing more than five independent claims or more than twenty-five total claims per application or invention Limiting the number of continuations or continuations-in-part that may be filed to no more than two Limiting the applicant to one Request for Continued Examination (RCE) per application family Modifying how divisional applications are treated Adding further reporting requirements for new and pending applications Exceptions may be available, but only upon an additional showing or petition by the applicant. These new rules limit options previously available to applicants and may impose significant new burdens. We also believe that the new rules may increase patent prosecution costs and will likely shift those costs to an earlier stage of the patent application process. For clients with substantial patent portfolios, significant effort will be required to meet certain reporting requirements starting November 1, 2007. However, we believe that there are alternatives available to address concerns the rule changes raise. These new rules have been only recently announced and will go into full effect for all pending applications on November 1, 2007. Many rules, however, may affect how patent applications are prosecuted prior to the effective date. We understand that this announcement may create additional questions or concerns. We will be providing additional information in the coming weeks regarding these rule changes and the effects they may have on patent portfolios. We at Cook Alex seek to provide services that protect, enforce, defend and maximize your patent portfolio and look forward to working with you to address these new rule changes.

September 14, 2007 New USPTO Rules Regarding Claims and Continuations

September 14, 2007
New USPTO Rules Regarding Claims and Continuations