The USPTO announced on July 25, 2007 that the Office of Management and Budget ("OMB") completed its review of the new rules regarding continuation applications and claims limits, and that the final rules will be made public when they are published in the Federal Register, which is expected to be later this summer. The rules will become effective at least 60 days after publication in the Federal Register, and no earlier than October 1, 2007. Abstracts of the new continuation and claims rules can be found on the Federal Regulatory Information website and via the hyperlinks below.
The first rule change, entitled "Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims," references in the abstract that the revised rules will require that second or subsequent continuation applications and second or subsequent requests for continued examination of an application include a showing as to why the amendment, argument, or evidence presented was not previously submitted which is intended to ease the burden of examining multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and common assignee by requiring that all patentably indistinct claims in such applications be submitted in a single application absent good and sufficient reason.
The second rule change, entitled "Changes to Practice for the Examination of Claims in Patent Applications," mentions in the abstract that the USPTO amends the rules to provide that if an application contains more than 10 independent claims, the applicant must provide a patentability report that covers all of the independent claims in the application. It goes on to state that the USPTO will give a separate examination only to those dependent claims expressly elected for separate examination.
Both abstracts provider that the rule changes would allow faster and more effective examination for the typical patent applicant without any additional work on the applicant’s part, but a small minority of applicants who consume a disproportionate share of USPTO resources will be required to share the burden they place on the USPTO.