Search Team

Search by Last Name

Legal Alerts

Fish Seminar on New Rules for Continuations and Claims

January 20, 2009

Legal Alerts

Fish Seminar on New Rules for Continuations and Claims

January 20, 2009

Back to News Listing

On August 21, 2007, the USPTO published final rules….

New! On Thursday, September 6th, John Pegram and Ronald Lundquist hosted an informative web seminar about the new Continuation and Claim rules.

To view the slides as well as an audio recording of the seminar, click here.

Click here for a concise guide to the PTO rules package.

Click here for a pdf version of the alert detailed below.

On August 21, 2007, the USPTO published final rules that impose new limits on the number of claims and the filing of continuations and requests for continued examination (RCEs). These rules go into effect on November 1, 2007, although their impact may be immediate. A PDF copy of the final rules is available here and a link to the USPTO webpage. Contact your Fish & Richardson attorney for more information and legal advice on how these changes affect your intellectual property rights.


Continuation Practice
  • Limit two continuations and one RCE for claims in a particular restriction group.
  • Serial divisionals allowed only for claims that were finally restricted.
Claim Examination
  • Examination of only 5 independent and 25 total claims unless applicants provide a support document on patentability.
  • “Consolidation” of applications with patentability indistinct claims under certain circumstances.


Applicants Limited To Two Continuations And One RCE Absent Special Circumstances
The PTO has limited the number of continuation applications and requests for continued examination (RCE) that are available as a matter of right. In general, only two continuations and one RCE are permitted for each “independent and distinct” invention. Thus, in a typical case, prosecution of a given set of claims directed to a particular “invention” must be completed after four final office actions.

The method for counting continuations and RCEs depends on a formal restriction requirement by the PTO. The rules permit one divisional application for each invention defined by a restriction requirement that has been made final. Each divisional application, similar to the original, non-provisional application, can be followed by no more than a total of two continuations and one RCE drawn to the same invention.

Special exceptions to the limitation on continuations and RCEs are available if the applicants can make a showing that “the amendment, argument, or evidence sought to be entered could not have been submitted” earlier in prosecution. The commentary accompanying the rules suggests that the PTO is likely to interpret these exceptions narrowly.

The final rules also require applicants to identify all other non-provisional applications that have (i) a common inventor, (ii) a common owner, and (iii) a filing or priority date within two months of the application under examination. If such applications have the same filing or priority date and substantially overlapping disclosures, then applicants must explain how the claims in the applications are patently distinct or submit a terminal disclaimer with reasons why the claims are not in the same application. The Office may require elimination of patentably indistinct claims from all but one of the applications so as to prevent applicants from evading the limitations on continuations and number of claims.

Examination Limited to 25 Claims Unless A Support Document is Filed
The PTO will not examine more than five independent claims and 25 total claims in a given application, unless the applicants provide detailed examination support document. To file such a document, the applicants must conduct a pre-examination search and must explain the patentability of each independent claim, identify each claim limitation disclosed in the references deemed most relevant, and show where each claim limitation finds written description support in the specification.

Further, if multiple pending applications, including continuation applications, contain patentably indistinct claims and are commonly owned, the PTO will consider the multiple applications to be a single application for determining whether more than five independent claims or 25 total claims are pending and therefore whether the applicants need to provide an examination support document.

The PTO now permits applicants to suggest their own restriction of the claims prior to the mailing of a formal restriction requirement and a first office action. The suggested restriction must be accompanied by an election without traverse of one of the suggested groups of claims.

Other Developments
In addition to the new rules published on August 21, 2007, the USPTO has proposed new requirements to regulate the submission of Information Disclosure Statements and to limit the examination of claims that use Markush or other alternative language. Earlier this summer, the USPTO also proposed new restrictions and limits on the process of appealing final rejections to the Board of Patent Appeals and Interferences.

Apart from these rule changes, Congress is currently considering amendments that would create a number of substantive changes to United States Patent Law.