Justify Your Existence: PTO proposed changes to continuation and continued examination practice

Earlier this month, the PTO released a proposed rule presenting major changes to continuation and continued examination practice. In Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims (Fed. Reg. 71: 48-61 (January 3, 2006)), the Office proposes to require justification for filing of second and subsequent continuations (and Requests for Continued Examination - RCE’s). In essence, the proposed rule limits the ability of an applicant to file third and subsequent applications in a chain.

If the proposed rule is adopted in current form, an applicant must submit a petition, and a fee, that includes a showing to the satisfaction of the Director that the amendment, argument, or evidence to be pursued in the continuation or RCE could not have been submitted prior to the close of prosecution in the application. The proposed rule does not give criteria or examples of showings that would satisfy the burden. It does, however, specifically indicate that a refusal to enter an amendment submitted after prosecution is closed will not qualify.

For RCE’s, new section 1.114(f) is the crux of the proposed rule change:

“An applicant may not file more than a single request for continued examination under this section in any application, and may not file any request for continued examination under this section in any continuing application…unless the request for continued examination also includes a petition accompanied by the fee set forth in 1.17(f) and a showing to the satisfaction of the Director that the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application.”

The same burden is placed on applicants for continuation applications by changes made to section 1.78.

It’s difficult to fully assess the effect the proposed rule will have on continuation and RCE practice without knowing the extent of the burden that must be satisfied for third and subsequent filings in a chain. The preamble indicates that one of the purposes behind the proposed rule is to “allow the Office to focus its patent examining resources on new applications instead of multiple continued examination filings that contain amendments or evidence that could have been submitted earlier.” Based on that, it seems safe to assume that the required “showing” will carry a relatively high burden.

It is, however, relatively easy to see some of the effects the proposed rule might produce in other areas. First, if the rule is adopted, it’s probably safe to assume that appeals would increase. The PTO anticipated this effect and addressed it in the preamble with a discussion of recent changes made to bolster the appeal process (”..the appeal process offers a more effective resolution than seeking further examination before the examiner.”). Second, at least initially, a flood of petitions would likely be filed until the extent of the burden is truly known.

Finally, given that the proposed rule would be applicable for all continuation applications and RCE’s filed on or after the effective date of the final rule, an enourmous bolus of continuation applications would likely be filed in the months, weeks, and days before the effective date of the rule. This surge in application filings would likely rival or even exceed the surge of June 7, 1995 when applicants raced to the Office to avoid the new patent term measured from the filing date instead of the issue date. Undoubtedly, the surge would significantly increase the backlog of applications currently present in the Office.

Comments on the proposed rule must be received by May 3, 2006. You can view and/or download a .pdf of the proposed rule here.