Patent Prosecution: Tafas v. Doll INTELLECTUAL PROPERTY

United States Patent Office Publishes New Rules on Continuing Applications and Claims

On August 21, 2007, the US Patent and Trademark Office published revised rules that make a number of controversial revisions relating to patent prosecution. Two key aspects of the revised rules involve limitations on the number of continuation applications and the number of claims in an application. In particular, the revised rules provide that an applicant seeking to file more than two continuation or continuation-in-part applications, or more than one request for continued examination, must present a showing as to why an amendment, argument or evidence sought to be entered could not have been previously submitted. The revised rules also require an applicant to file an examination support document covering all of the claims in any application containing more than five independent claims or 25 total claims. Revised rules also were published regarding multiple applications having the same filing or priority date, substantial overlapping disclosure, a common inventor and common ownership.

WilmerHale Commentary
PTO Resources
Litigation Resources
Parties' Briefs
Amicus Briefs Supporting GSK/Tafas
Amicus Briefs Supporting PTO

WilmerHale Commentary

PTO Resources

Litigation Resources

Parties' Briefs - Federal Circuit

Parties' Briefs - District Court

Amicus Briefs Supporting GSK/Tafas - Federal Circuit

Amicus Briefs Supporting GSK/Tafas - District Court

Amicus Briefs Supporting PTO - Federal Circuit

Amicus Briefs Supporting PTO - District Court

United States Patent Office Publishes New Rules on Continuing Applications and Claims

On August 21, 2007, the US Patent and Trademark Office published revised rules that make a number of controversial revisions relating to patent prosecution. Two key aspects of the revised rules involve limitations on the number of continuation applications and the number of claims in an application. In particular, the revised rules provide that an applicant seeking to file more than two continuation or continuation-in-part applications, or more than one request for continued examination, must present a showing as to why an amendment, argument or evidence sought to be entered could not have been previously submitted. The revised rules also require an applicant to file an examination support document covering all of the claims in any application containing more than five independent claims or 25 total claims. Revised rules also were published regarding multiple applications having the same filing or priority date, substantial overlapping disclosure, a common inventor and common ownership.

Read More

Publications & News

View

July 25, 2008

The Supreme Court Returns to the Patent Law: Why Now and What's Next?

February 8, 2008

Court Hears Summary Judgment Motions on Challenge to New PTO Rules

December 4, 2007

Discovery Denied and Briefing Schedule Set in Litigation over New Patent Office Rules

October 31, 2007

US Court Enjoins New Patent Office Rules

Senior Judge James Cacheris of the US District Court of Eastern Virginia today enjoined the US Patent and Trademark Office (PTO) from putting its new patent prosecution rules into effect. The Rules otherwise would have become effective tomorrow, November 1, 2007.

August 22, 2007

United States Patent Office Publishes New Rules on Continuing Applications and Claims