Anticipate This!™ | Patent and Trademark Law Blog

Proposed Limits on Continuations No More?

Posted in Practice Commentary by Jake Ward on March 1, 2007

Per this post by the Patent Prospector (via Hal Wegner), the rumor is continuing to propogate that the USPTO’s proposed limits on continuations are “dead.”  However, there has been no official statement (yet) from the USPTO regarding this matter.

The proposed rules contained restrictions on continuation practice that would allow only one continuation or RCE as a matter of right (although further continuations could be filed with “a showing to the satisfaction of the Director as to why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution after a single continuation, CIP or RCE”).  The proposed rules would also require that multiple applications having the same effective filing date, overlapping disclosure, a common inventor, and a common assignee include either (i) an explanation to the satisfaction of the Director of how the claims are patentably distinct, or (ii) a terminal disclaimer and explanation to the satisfaction of the Director of why patentably indistinct claims have been filed in multiple applications.

The proposed rules can be found here.  Numerous comments received in relation to the proposed rules can be found here.