new continuation rules released -- let the games begin . . . and continue

This morning, the USPTO published the long-awaited final rules limiting continuation practice and requests for continued examination (RCE’s) (Click here for a text file).

Among other highlights, the new rules permit two continuation and/or continuation-in-part applications, as well as one RCE, of right, in each application family.  Beyond these, applicants will be required to show why the content of further filings could not have been previously submitted.  Additionally, applications will be limited to 5 independent claims and 25 total claims.  Applicants wishing to submit a greater number of claims must provide an examination support document that covers all of the claims in an application.

So which applications will these rules apply to?  The limitations on continuation applications appear to apply to any application filed after Nov. 1, 2007.  The rules also appear to limit the rush to file continuations before Nov. 1 by exempting one continuation filed after Aug. 21, 2007 from the new limitations, as long as no other continuation claiming the same benefit is filed after Aug. 21, 2007.

The claim limitations apply to any nonprovisional application filed or entering the national phase on or after Nov. 1, 2007, and any nonprovisional application filed before Nov. 1, 2007 in which a first office action on the merits is not mailed prior to Nov. 1, 2007.

That’s the short version of several of the more anticipated changes.  We’ll be posting more in the coming weeks after more detailed reading and as the long-term effects begin to take shape.  Feel free to send us any specific questions you might have about the new rules and what their practical effects might be.