Tim (littlebluedog) wrote in patentgeeks,

so ...

How bout them new rules?
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You're speaking of the Tafas one, the one that wants the new rules to be "preliminarily and permanently enjoyed"? :)

Do you think it'll go anywhere? I think it's a little clumsily written, and it's not clear he really has an issue here, since he's not prevented from filing continuations as long as he has good reason to do so. To paraphrase another commentator, I'll wait for big pharma to come in swinging a bigger stick.
I'll wait for big pharma to come in swinging a bigger stick.

I agree. It won't even take all that long. All you really need is for one of the big guns to be denied a priority claim in a continuation, and the fight is on.
Did anyone listen to/watch the PTO's webinar from last week? I thought it raised some interesting (but confusing) issues.

After a cursory reading of the rules, and from the PTO slides, I've realized I'm utterly confused about how some parts of the new rules will work.

To wit:

(1) If you have file a parent case with a generic claim and then elect a species after restriction, and the species claim is ultimately allowed, have you lost the right to pursue the generic claim in a subsequent continuation (because of "5/25" rule)?

(2) If you file in the US, and also file a PCT which enters national phase in the US, will the PTO consider the PCT against the total number of continuations, assuming the PCT claims are patentably indistinct from the US claims? (Not that the PTO has ever been clear on what "patentably indistinct" actually means).

(3) What is the point of the examination support document (EDS)? Can you see any patent attorney actually filing an EDS in any case? Wouldn't it be borderline malpractice to do this?

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For (3), we're wrestling with that here. I think that for each app, we'll probably search our database for other apps sharing that inventor, check to see which are co-owned, and identify all related apps with a priority date w/in two months of the app ... but for clients who retain multiple outside counsel, we'll send a compiled list to the client so it can figure out whether other firms filed "related" applications as well. So much fun.
but for clients who retain multiple outside counsel, we'll send a compiled list to the client so it can figure out whether other firms filed "related" applications as well. So much fun.

Heh. We're considering having some of our bigger clients do the same. In fact, some of the clients are already doing this, to allow us to file IDSs citing art from related applications.

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That seems like paperwork for the sake of paperwork.

I guess the aim is ostensibly twofold: to apprise the PTO of any related apps, in order to frustrate applicants who have a labyrinth of similar pending apps; and to deter applicants from initially filing too many related applications.

To be honest, I'm having so much difficulty sussing out how a variety of example applications will be impacted by the rules that I'm not really questioning the why of all of it yet. I'll leave that to the scholars. :)
I watched the webinar. I prepared an in-house presentation for my firm the day before, so I was primarily interested if my analysis had been correct! However, I found the webinar to be informative, but repetitive of the FAQ offered on the new rules on the PTO website. The question-and-answer session afterward was pretty much repeating the material covered in the webinar, and seemed pretty canned.

I'll take a stab at your hypos:

(1) I don't think you have, necessarily, but you'll be required to explain how all of the claims in the continuation are patentably distinct from those allowed in the initial app, or file a terminal disclaimer.

(2) I don't understand this one: why would you file an app in the US, and then enter national phase in the US from a PCT based on the US app? Perhaps I'm misunderstanding, or maybe the national phase from the PCT app has different claims? Either way, it appears that the presumption of patentable indistinctness will exist between the two apps (co-owned, co-invented, share a priority date, and presumably have substantially overlapping disclosures). In this case, it appears that if the apps have different claims, they'll be counted toward the 5/25 threshold and each app will be treated as having the total number of both, for this purpose.

(3) The point is undoubtedly to deter applicants from filing multiple related apps or apps that have a bunch of claims. I think in some cases an ESD might be advantageous to prosecution (if not a litigation nightmare) ... consider that an Examiner probably won't want to read it, and might simply rubberstamp it and bam, issuance. Who knows?
Sorry. I should have been more clear. With respect to (2), I envision a scenario where the client files different claim sets in the US and then in a separate PCT that ultimately enters national phase in the US. I'm concerned that if the claims are seen as being different but patentably indistinct, then it counts against the total number of continuations.

Also, wouldn't it be to our advantage to file all possible continuations on October 31, to ensure that it will be a long time before any Examiner actually looks at the application? (I imagine Oct. 31 will be a lot like June 7, 1995).
Gotcha. Yes, I believe that the two applications would be considered patentably indistinct by their nature: co-owned, common inventor, same priority date, and (in this case) identical disclosures.

As for (1), let me revise my answer: it would be a divisional, not a continuation, if the claims therein had not been examined already. If the restriction requirement could be ... um, withdrawn somehow (i.e. you elected with traverse), you couldn't file a divisional until the base app had been allowed, but the claims would be patentably distinct, so wouldn't count toward 5/25. I think.

I don't know if hastily filing continuations would be advisable in all circumstances. For each, you'd have to wrestle with the patentably distinct presumption that will arise on November 1.