Anticipate This!™ | Patent and Trademark Law Blog

§ 1.78(f) Applications and patents naming at least one inventor in common.

Posted in Practice Commentary by Jake Ward on August 21, 2007

The new claims and continuations rules are certain to receive a good deal of treatment in the IP blogosphere over the next several days. That being said, the following is a brief summary of just one of the new rules, § 1.78(f), promulgated as part of the rules package published in the Federal Register today.  

Rule § 1.78(f) appears to require identification in a separate paper (possibly an IDS? JW Note 8/24/07:  See comments) of a serial number of a co-pending application that is filed within 2 months (before and after?), shares a common inventor, and is owned or assigned to a same person.  The paper identifiying the co-pending application must be filed within a prescribed time period (e.g., four months from filing date). 

Notably, if the applications have the same filing date and a “substantial overlapping disclosure,” a rebuttable presumption is now made that the applications contain at least one claim that is not patentably distinct (double patenting rejection).  Thus, an applicant must rebut the presumption by:  1) establishing that the claims of the applications are patentably distinct, or 2) filing a terminal disclaimer, within a prescribed time period (e.g., four months from the filing date).  The rule also states that, absent good and sufficient reason for the two or more applications having patentably indistinct claims, the Office may require elimination of the indistinct claims from all but one of the applications.

The new Rule § 1.78(f) is repeated in its entirety below.

§ 1.78 Claiming benefit of earlier filing date and cross-references to other applications. 

(f) Applications and patents naming at least one inventor in common. 

(1)(i)  The applicant in a nonprovisional application that has not been allowed (§ 1.311) must identify by application number (i.e., series code and serial number) and patent number (if applicable) each other pending or patented nonprovisional application, in a separate paper, for which the following conditions are met:
 (A) The nonprovisional application has a filing date that is the same as or within two months of the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;           
 (B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application; and           
 (C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application.            

(ii) The identification of such one or more other pending or patented nonprovisional applications if required by paragraph (f)(1)(i) of this section must be submitted within the later of:            
 (A) Four months from the actual filing date in a nonprovisional application filed under 35 U.S.C. 111(a);
 (B) Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371; or
 (C) Two months from the mailing date of the initial filing receipt in such other nonprovisional application for which identification is required by paragraph(f)(1)(i) of this section.

(2)(i) A rebuttable presumption shall exist that a nonprovisional application contains at least one claim that is not patentably distinct from at least one of the claims in another pending or patented nonprovisional application if the following conditions are met:
 (A) The nonprovisional application has a filing date that is the same as the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;
 (B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application;
 (C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application; and
 (D) The nonprovisional application and the other pending or patented nonprovisional application contain substantial overlapping disclosure. Substantial overlapping disclosure exists if the other pending or patented nonprovisional application has written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the nonprovisional application.           

(ii) If the conditions specified in paragraph (f)(2)(i) of this section exist, the applicant in the nonprovisional application must, unless the nonprovisional application has been allowed (§ 1.311), take one of the following actions within the time period specified in paragraph (f)(2)(iii) of this section:
 (A) Rebut this presumption by explaining how the application contains only claims that are patentably distinct from the claims in each of such other pending nonprovisional applications or patents; or
 (B) Submit a terminal disclaimer in accordance with § 1.321(c). In addition,where one or more other pending nonprovisional applications have been identified, the applicant must explain why there are two or more pending nonprovisional applications naming at least one inventor in common and owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims.

(iii) If the conditions specified in paragraph (f)(2)(i) of this section exist,the applicant in the nonprovisional application must, unless the nonprovisional application has been allowed (§ 1.311), take one of the actions specified in paragraph (f)(2)(ii) of this section within the later of:
 (A) Four months from the actual filing date of a nonprovisional applicationfiled under 35 U.S.C. 111(a);
 (B) Four months from the date on which the national stage commencedunder 35 U.S.C. 371(b) or (f) in a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371;
 (C) The date on which a claim that is not patentably distinct from at least oneof the claims in the one or more other pending or patented nonprovisional applications is presented; or
 (D) Two months from the mailing date of the initial filing receipt in the one ormore other pending or patented nonprovisional applications.

(3) In the absence of good and sufficient reason for there being two or more pending nonprovisional applications owned by the same person, or subject to an obligation of assignment to the same person, which contain patentably indistinct claims, the Office may require elimination of the patentably indistinct claims from all but one of the applications.

Our initial thoughts are related to the practicality of complying with this rule, particularly for large companies that may spread patent preparation and prosecution between more than one firm? 

Any thoughts on this rule among our AT! readers?  Feel free to leave a comment.

One Response

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  1. Jake Ward said, on August 24, 2007 at 12:53 pm

    According to the USPTO Webcast on August 23rd, the “separate paper” recited in Rule 1.78(f) may be in the form of a new USPTO form that will be distributed sometime in October, 2007 (before the new rules take effect on November 1st).


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