Introduction

For the past several years, the USPTO has been faced with a backlog of patent applications that has raised criticism about the time it takes to issue a patent as well as about the quality of issued patents. In an attempt to address these problems, beginning in January 2006, The PTO proposed several rule changes that would affect how patent applications will be examined. The new rules issued on August 21, 2007, are the result after several hearings and over 500 public comments.

The new rules limit the number of claims that can be filed and the number of continuation applications and requests for continued examination that can be filed without justification. An applicant that exceeds limits on claim numbers must present justification in an Examination Support Document that will become part of the patent’s file history.

The new rules purportedly become effective on November 1, 2007. However, in effect, some rules apply retroactively to pending applications filed prior to that date, and some rules have effect as of the August 21 publication date.

Limits on Claims

Previously, there was no limit on the number of claims in an application as long as required fees for excess claims were paid. This allowed drafting claims to cover many different embodiments of an invention with different degrees of particularity. The new rules limit the number to five independent claims and 25 total claims that may be presented in an application family that contains patentably indistinct claims.¹ If these numbers are exceeded, applicants must file an Examination Support Document (ESD) prior to a First Office Action on the Merits (FAOM). A restriction requirement is not considered to be a FAOM although it may be included with a FAOM.

Following the court decision in Pfizer Inc. v. Ranbaxy Labs. Ltd., 437 F.3d 1284, 1292, (Fed. Cir. 2006), the PTO has heightened the standard for a claim to be considered a dependent claim by requiring incorporation by reference of all the limitations of the claim to which it refers and requiring the claim to specify a further limitation of the subject matter of the previous claim. Claims that do not meet these standards will be considered independent claims and count against the limit of five.

The rules limiting continuation practice, discussed below, in conjunction with the rules limiting the number of claims, allows the applicant a maximum of 15 independent and 75 total claims in an application family that contains patentably indistinct claims without triggering a requirement for filing an ESD.

The 5/25 rule claims is not limited to applications filed on or after November 1, 2007. Rather, it is applicable to all pending applications that have not received a FAOM by that date. In addition, if the family application contains an application that was undergoing examination prior to November 1, the number of claims in that application would be part of the count for the 5/25 rule for any co-pending continuation application that had not received a FAOM by November 1. Thus, for commonly owned applications containing at least one patentably indistinct claim that has not been withdrawn, the Office will treat each application as having the total number of claims present in all of the applications for determining whether each application exceeds the 5/25 claim threshold. This would apply to a co-pending continuation application and to an original application so long as there is at least one patentably indistinct claim.

Examination Support Document Required for Excess Claims

When the 5/25 claim limit described above is exceeded, filing an ESD is mandatory. In essence, the ESD places the burden on the applicants to examine their own application.² An ESD must include the following:

• A pre-examination search statement, which must (a) encompass all the limitations of the independent claims an