Bruce H. Stoner, Jr. – Former Chief Judge, USPTO Board of Patent Appeals and Interferences

1. Proposed New Rules in US Patent and Trademark Office, and Related Prosecution/Negotiation/Litigation Strategies Bruce H. Stoner, Jr. – Former Chief Judge, USPTO Board of Patent Appeals and Interferences Bruce H. Bernstein – Senior Partner Greenblum & Bernstein, P.L.C. November 2006 www.gbpatent.com

2. Two Sets of Proposed Rule Changes • First Proposed Rule Changes: - Continuations/RCE’s – Claim Limits – Related Applications • Second Proposed Rule Changes:Information Disclosure Statements • Status of Each Set of Rules www.gbpatent.com

3. I. First Proposed Rule Changes: • January 3, 2006 Federal Register • Comments submitted by May 3, 2006 • No Public Hearing was held-340 comments received (mostly negative) • Unclear when Final Rules are expected www.gbpatent.com

4. I. First Proposed Rule Changes: • Why needed – USPTO Issues • 1,000,000 application backlog • More Examiners Insufficient • Too many Continuation Applications/RCE’s • Bad English Quality of Foreign Origin Applications www.gbpatent.com

5. I. First Proposed Rule Changes: A. Significant Changes • Limits on Continuations/RCE’s • Limits on Number of Claims Examined • Requirement to Identify “Related” Applications www.gbpatent.com

6. I. First Proposed Rule Changes: PTO-noted problems with continuing applications • Unfair to Public –Long delays in Allowance/Rejection • Translations inadequately revised • Applications pending too long – used to cover new technology www.gbpatent.com

7. I. First Proposed Rule Changes: 2005 Statistics • More than 400,000 applications filed • 44,500 Continuations/C-I-P • 11,800 more than one • 18,500 Divisionals • 52,000 RCE’s • 10,000 more than one www.gbpatent.com

8. I. First Proposed Rule Changes: • Limitations on Continuing Applications/RCE’s – 37 C.F.R. §1.78 • Only One Continuation/RCE Allowed as of Right • Bypass Cont. of PCT - Yes • Cont. of Non-provisional – Yes • Claim Priority of Foreign Application(s) – No • Claim Priority of Provisional - No • Divisional – No • CIP – Yes • RCE – Yes www.gbpatent.com

9. PRACTICE TIPS • Use PCT/National Phase to postpone Filing /Examination • Prepare/Revise Claims before filing in U.S. to minimize §112 Rejections and “bad” First Actions www.gbpatent.com

10. I. First Proposed Rule Changes: • Divisional Application Definition - §1.78(a)(3) – Only if… • Subject to restriction/unity of invention in original application • Not elected in original • “Voluntary” divisionals not included www.gbpatent.com

11. §1.78(d)(1) • Continuation/CIP – can normally claim benefit of only a single prior application • No other continuation/RCE allowed • RCE’s/continuations are alternatives, but only one permitted www.gbpatent.com

12. §1.78(d)(1) • Only involuntary Divisionals permitted • Must result from Examiner – required restriction • No “voluntary” divisionals allowed • One Continuation/RCE of each Divisional permitted www.gbpatent.com

13. PRACTICETIPS • Initially file independent claims of various scope/inventions to provoke Restriction Requirement – Increases Divisional Applications www.gbpatent.com

14. Exceptions to “One Continuation Rule” - §1.78(a)(1)(iv) • Additional RCE/Continuation allowed in (likely) rare cases • Petition if “could not have” earlier submitted • Amendment • Argument • Evidence – e.g., commercial success • Must submit petition within 4 months of filing second or subsequent Continuation/RCE www.gbpatent.com

15. §1.78(d) – Deletion of Reference to Prior Application • If Continuation/Divisional/CIP is not permitted by rule/petition • Lose earlier filing date • Prior publication can become prior art www.gbpatent.com

16. §1.78(d)(3) – Identification of CIP Claims • If application is CIP • “New” claims must be identified • “Old” claims must be identified • Helps Examiners to understand “continuing” status of claims www.gbpatent.com

17. PRACTICE TIPS • Do not file CIP’s – file new Applications www.gbpatent.com

18. §1.78(f) – Identification of Commonly Assigned U.S. Applications • Filing date (earliest effective?) within two months • At least one common inventor • Assigned to same entity or assigned to parties to a joint research agreement (§1.78(h)) www.gbpatent.com

19. §1.78(f)(1) – Identification of Commonly Assigned Applications • Must cross-reference both ways • Can be separate paper • Can be in specification • Must file within 4 months of actual U.S. filing date www.gbpatent.com

20. §1.78(f)(2) – Rebuttable Presumption of Patentably Indistinct Claims If… • Conditions as in (f)(1), and same (earliest) filing date • Then USPTO presumes claims are overlapping/not patentably distinct • In such cases, applicant must… www.gbpatent.com

21. §1.78(f)(2) - Rebuttable Presumption of Patentably Indistinct Claims Must… • Rebut presumption by explaining how all claims are patentably distinct or • Submit terminal disclaimer and explain why more than one application is needed www.gbpatent.com

22. §1.78(f)(3) – USPTO Can “Eliminate” Patentably Indistinct Claims If… • Patentably indistinct and • No good explanation given by applicant and accepted by USPTO www.gbpatent.com

23. §1.78 Becomes Applicable… • On or after effective date of final rule www.gbpatent.com

24. PRACTICETIPS • All Applicants should review application portfolios and file desired continuation applications prior to the effective date (“one more” will not be permitted) www.gbpatent.com

25. Proposed Limitations on Number of Claims Examined • USPTO says too many claims in some applications • USPTO wants to concentrate on “Representative” Claims (basically, independent claims) • USPTO wants to limit “serious” examination to ten claims per application www.gbpatent.com

26. §1.75(b) • Must designate (10) claims for examination (exception on next slide) • Dependent claims only examined if designated • Must designate dependent claims or will not be examined (even if less than ten claims) • Designated dependent claims must depend from other designated claims www.gbpatent.com

27. §1.75(b)(1) – Examination Support Documents Required If… • More than ten independent claims presented, or • More than ten claims designated for examination or • PTO “combines” related applications • PTO has requested comments regarding counting of Markush claims www.gbpatent.com

28. PRACTICETIPS • File more independent claims of varying scope • Add dependent claims for important additional features www.gbpatent.com

29. §1.75(b)(2) – “Mixed” Claims to be Considered Independent • Method and Apparatus • Product-by-Process www.gbpatent.com

30. §1.75(b)(4) • USPTO will decide if there are applications with patentably indistinct claims • PTO can “combine” for examination (if such claims are not cancelled), and thus require Examination Support Documents www.gbpatent.com

31. §1.261- Content of Examination Support Documents • USPTO “ultimate” Goal? • Reexamination Search required • List classes and subclasses searched www.gbpatent.com

32. §1.261 – Content of Examination Support Document • IDS must be filed • All claimed features taught by prior art must be listed • Detailed Explanation of patentability of each claim must be provided www.gbpatent.com

33. PRACTICETIPS • “Never” File Examination Support Document • Creates Prosecution History Estoppel • Increased Opportunity for Charges of Inequitable Conduct www.gbpatent.com

34. §1.261 – Content of Examination Support Documents Required • Require concise statement of utility of each independent claim • Showing of where each claimed feature finds support in application www.gbpatent.com

35. §1.261(b) – Preexamination Search • Must include U.S. and Foreign patents/publications, and non-patent references • Must cover all features of every claim • Foreign Search Report Insufficient www.gbpatent.com

36. §1.261(c) – Preexamination Search • One month (only) extension given if insufficient • Must supplement search and Support Document if claims amended www.gbpatent.com

37. Summary-USPTO Proposed Changes Will Eventually Limit • Continuing Applications • RCE’s • Number of Claims • Overlapping Applications www.gbpatent.com

38. II. Second Proposed Rule Changes – Information Disclosure Statements • July 10, 2006 Federal Register Notice • Comments filed by September 8, 2006 – 184 received • No Public Hearing was Held • No Projected Date for Final Rules • Possibly Spring, 2007 www.gbpatent.com

39. II. Second Proposed Rule Changes – Information Disclosure Statements/Duty of Disclosure • PTO-Why Changes Needed • Increase Quality by Early Citation of Prior Art • Improve First Official Actions • Focus Examiner on Relevant Portions of Prior Art • Minimize wasted USPTO Actions www.gbpatent.com

40. II. Second Proposed Rule Changes – Information Disclosure Statements • Major Changes • When to Submit Material – Time is of the Essence • How to Submit – Burden of Explanation Shifted from USPTO to Applicants www.gbpatent.com

41. Proposed Changes In IDS Time Periods 1- 4 Application Prosecution Timeline and corresponding IDS requirements Application Filed First Office Action on the Merits (FAOM) Allowance of Application Payment of Issue Fee Time Sufficient for Consideration Patent • Fourth Period • Timeliness cert.; • Patentability Justification which includes: • Explanation, • Non-cumulative description, • Statement of unpatentable claims, • Amendment, and • Patentability reasons for amended claim(s); and • Petition to w/d from allowance • First Period • Up to 20 citations permitted • w/o any explanation req’d. • Explanations req’d for: • each ref. >25 pages, or in • non-English language, or for • all refs when more than 20 • Second Period • Explanation, and • Non-cumulative • description • Third Period • Timeliness cert., and • Patentability Justification which includes: Explanation, • Non-cumulative description, and either: • (A) Patentability reasons • for unamended claims; or • (B)(1) Statement of unpatentable claims, • (B)(2) Amendment, and • (B)(3) Patentability reasons for amended claim(s)

42. II. Second Proposed Rule Changes – Information Disclosure Statements • Timing of Submissions – Different Rules for Different Times – Four Periods • First Period (37 CFR §1.97(b)) – from Non-Provisional/Reexam/National Stage Filing, until issuance of Initial Examination • Second Period (37 CFR § 1.97(c)) – Between First Period and Notice of Allowability/Allowance – Final Rejection no longer a time limit www.gbpatent.com

43. II. Second Proposed Rule Changes – Information Disclosure Statements • Timing of Submissions – Different Rules for Different Times • Third Time Period (37 CFR § 1.97(d)(1)) – After Notice of Allowance/Allowability and Prior to Issue Fee Payment • Fourth Time Period (37 CFR § 1.97 (d)(2)) – After Issue Fee Payment, but only if Sufficient time for Examination to consider www.gbpatent.com

44. II. Second Proposed Rule Changes – First Time Period • Requirements for Submission (37 CFR § 1.98(a)) • Listing of Prior Art Cited • Submit Copies of All Foreign Patents • Submit Copies of cited Publications • Except U.S. Patents/Publications • Submit Pending/Abandoned U.S. Applications • Unless in USPTO Image File System www.gbpatent.com

45. First Time Period - “Additional Disclosure Requirements (37 CFR § 1.98 (a)(3)) • First Period – An “explanation” is required only when: • Foreign Language documents submitted • More than twenty (20) documents submitted • Documents longer than (25) twenty-five pages • (1-3) do not apply if in foreign search report www.gbpatent.com

46. First Time Period - What Are the “Additional Disclosure Requirements” (37 CFR § 1.98 (a)(3)(vi)) • The “Explanation,” which is required for documents cited under the conditions identified in Time Period 1, must: • Specifically identify relevant features of the cited art; and • Correlate Relevant Features of the cited art to specific claim language www.gbpatent.com

47. PRACTICETIPS • Collect all Prior Art before filing in U.S. • Find and submit English counterparts • If none, provide translation regarding relevant features www.gbpatent.com

48. II. Second Time Period • Requirements for Submission (37 CFR § 1.98(a)) • Listing of Prior Art Cited • Submit Copies of All Foreign Patents • Submit Copies of cited Publications • Except U.S. Patents/Publications • Submit Pending/Abandoned U.S. Applications • Unless in USPTO Image File System www.gbpatent.com

49. Second Time Period - “Additional Disclosure Requirements”(37 CFR § 1.98 (a)(3)) • Second Period – An “explanation” and a “non-cumulative description” is required for all documents submitted, except… • Documents cited as the result of a Foreign Search or Examination Report, when a copy of report is provided and • Certification under 37 CFR 1.97(e)(1) is made – 37 CFR §1.98(a)(3)(viii)(B),(C) [Note: 37 CFR 1.97(e) provides additional exception for newly discovered items (within three months)] • Documents required by Examiner – 37 CFR § 1.105 www.gbpatent.com

50. Second Time Period - “Additional Disclosure Requirements”(37 CFR § 1.98 (a)(3)(vi))? • The “Explanation” which is required for documents cited under the conditions identified in Time Period 2 (see previous slides), must: • Specifically identify relevant features of the cited art; and • Correlate Relevant Features of the cited art to specific claim language www.gbpatent.com