Monday, December 10, 2007

Preparing for the USPTO Rule Changes

The new U.S. Patent and Trademark Office (USPTO) rules for Continuations and Claims (published on August 21, 2007, and currently enjoined pending legal challenge), has caused perhaps the greatest level of consternation in recent memory of rules changes implemented by the USPTO. In addition to the Continuations and Claims rules, the USPTO has also proposed new requirements related to Information Disclosure Statements (IDS), which will cause material changes to the patent practices of applicants and their representatives.

With the admirable goal of reduced work volume and pendency backlogs, and increased examination quality, the barrage of new rules have the practical effect of shifting many tasks traditionally conducted by the USPTO to the applicant (or their representative) and to dramatically increase the management complexity of pending application dockets.

While the final implementation of these rules remains uncertain, many IP owners have taken the opportunity to understand the underlying principles of the rules, and assess how management of their patent prosecution operations can be improved. The new rules are particularly intensive in their demands to cross-reference application-related information. Not surprisingly the IP department’s IAM systems are being challenged to provide the capabilities needed for data and workflow support implicated by the new rules.

At Anaqua we have worked closely with our clients to develop a comprehensive approach to providing the systems support needed to meet the various components of the new USPTO rules—and more importantly to improve the efficiency and effectiveness of patent operations in a new paradigm of application disclosure requirements. In this edition of IAM Perspectives, I provide an overview of some of the ways our clients are using Anaqua’s Integrated IAM Solution to meet and exceed their increased prosecution management demands.

Continuing Applications and RCE Limit

Under the new rules, applicants will be limited to two (2) continuing applications (continuations and continuation-in-part applications), and to a single (1) request for continued examination (RCE), in any application family (unless an exception argument for justification is presented.) In determining which families will be subject to the limitations, an application family includes: original application, continuations, CIPs and RCEs; divisional applications are not subject to the limitation, as they would not contain patentably indistinct claims.

To manage the limit on pending applications, our clients are increasingly relying on Anaqua’s ability to manage the application family through the Create Application and Family Tree view tools. Anaqua’s application creation process automates the process for creating a patent family, including the requirement to define the related application type, all action dates and related correspondences.

Anaqua’s Family Tree view provides a graphical representation of the entire patent family, including the ability to easily navigate between related applications. The Family Tree includes important application information including application number, file date, priority date, and status. In addition, users can also easily run Anaqua’s standard patent family tree report or create a custom report that meets the desired requirements.

The “5/25” Claims Limit

The new rules also impose a limit on the number of claims in a patent application. An application may include up to five (5) independent claims and up to twenty five (25) dependent claims (the “5/25 rule”). If an application does not comply with the 5/25 rule, the applicant must submit an Examination Support Document (ESD), a considerably burdensome disclosure process which will likely motivate applicants to work within the rule except in the most necessary situations.

Anaqua provides a number of features which help automate and proactively manage the 5/25 rule. First, claim count fields for both independent and dependent claims are available, which allow case managers to enter the number of application claims (as well as capture actual claim language, if desired).

To provide automated compliance with the 5/25 rule, the Anaqua Law Engine has been enhanced to automatically monitor the claim number fields, and flag those applications in which the 5/25 rule has been violated. The notifications of these violations can be sent via email or the Anaqua calendaring feature to the appropriate case manager. Also, where an ESD is required, the Law Engine automatically dockets the tasks and associated reminders, including appropriate task manager assignments.

From a reporting perspective, our clients are using Anaqua’s standard and ad hoc reporting toolset to review their application portfolios. Anaqua’s standard claims report provides a listing of all applications and their independent and dependent claim counts. These reports can be reviewed and shared amongst the IP team to ensure rule compliance.

Co-Pending Applications

A critical aspect of the 5/25 rule is its applicability to co-pending applications. The rule is triggered if multiple applications exist which contain at least one patentably indistinct claim between them. In this case, the 5/25 rule will be counted across the related application family. Thus, if at least one claim in a first application and at least one claim in a second application are patentably indistinct, all the claims in both applications are summed to determine if the combined applications exceed the 5/25 rule.

In aiding the examiner’s 5/25 claim count, applicants must identify all commonly owned applications and patents that, (1) have at least one common inventor, and (2) were filed (or claim a priority date) within two months of a filing (or claimed priority date). With regard to the claimed filing or priority date, applicants must be cognizant of the actual filing date and the priority date of both the application being prosecuted, and the commonly owned applications and patents. The identification must be made in a separate filing paper.

In working with our clients, we are finding that the biggest challenge of the co-pending application requirement is the ability to survey applications being handled by different outside counsel. For many of our clients, assignment of drafting and prosecution work is determined by the combination of subject matter and work load. It is common for separate but similar subject matter to be assigned across a group of qualified firms, and therefore causing challenges to identify cases to which the rule would apply.

Within Anaqua, our clients are first relying on the identification of applications with common inventors. Through the standard and ad hoc reporting tools, our clients are able to generate inventor reports which identify applications falling within the purview of the rule. In addition, filed and priority date filters can be applied to focus on only those application which would fit the reporting requirements. In some instances, our clients are using the review process for not only USPTO compliance, but also to reconsider more cost effective assignment of cases to outside counsel.

Also providing substantial benefit, are Anaqua’s Classification tools, such as the IP Review Module. Using technology and UPC classification schemes, Anaqua users are able to easily group and organize related applications, thereby more readily reviewing the portfolio for the possibility of meeting the co-pending rule.

Finally, our clients are relying on Anaqua’s collaboration capabilities to enlist their outside counsel to be more closely involved in reviewing the portfolio for co-pendency issues. Through Anaqua’s security model and access controls, clients are able to allow outside counsel to access and review their assigned application cases.

Retroactive Applicability of New Rules

One important aspect of the new USPTO rules is its retroactive applicability date. Under the rule, applications which have not received a First Action on the Merits on or before the November 1, 2007, effective date will be required to comply with the rules, or file an Examination Support Document (ESD).

To help clients better review their portfolios, Anaqua has leveraged its ability to provide filters to both its Find screens, and standard and ad hoc reports. The reports allow all pending US applications to be reviewed which are not yet “allowed”, and compare whether the rule(s) apply. The report will run with a +/- 2 month window, to compare the filing and priority dates between applications. In addition, many of our clients have also developed their own custom reports which meet the specific requirements of their operations.

Information Disclosure Statements (IDS)

While still pending final publication, the USPTO is expected to promulgate an extensive set of new rules related to the submission of Information Disclosure Statements (IDS). The objective of the rules changes are to improve the efficiency and timeliness of examination by requiring applicants to take a more proactive role in both limiting the amount of disclosure materials and advising examiners as to the relevancy of such disclosures. While the USPTO’s research found that upward of 85% of applications would likely not be materially affected by the changes, the consensus amongst most patent practitioners is that the new IDS requirements will cause substantial adjustment to how the IDS requirements are met.

The new IDS filing rules, as proposed, will include (among other requirements) that an IDS be filed before a First Office Action on the merits, and that the IDS be limited to twenty (20) material, non-duplicative references, with each reference no more than twenty-five (25) pages. For IDS filings after the First Office Action, or which exceed the number or page limits, applicants will be required to provide detailed explanation as to the relevance.

The practical effect is that applicants and their representatives will be more formally accountable for the content and materiality of the references provided in an IDS.

Anaqua provides a number of features to aid with the management of IDS filings, documentation and related references. Each application record in the system allows for the listing of Related Art including applications, patents and non-patent materials. These Related Art references include descriptive information concerning their materiality to the application and other supporting explanation. Importantly, the references will be archived for future reference. Analysis documents, such as a patentability or technology review can also be archived as part of the reference as an electronic Document within the application record.

Another important feature is the Anaqua Law Engine. The Law Engine provides automated docketing of IDS related tasks and reminders, including assignment to appropriate case managers and/or outside counsel. The IDS ensures that the IDS is filed timely (prior to the First Office Action).

For IDS forms and supporting materials, Anaqua provides an electronic Documents repository which allows both PTO filing templates and related Office documents to be stored within the record. The documents can be locked and shared amongst the responsible team.


While the status of the new USPTO rules remain uncertainty, IP Owners and their outside counsel are well advised to proactively assess how their patent operations—and particularly their patent information systems—will support compliance with the rule changes. Anaqua has worked closely with both its clients and leading practitioners to develop a comprehensive approach meeting the USPTO requirements.

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