New Procedures For Continuation Applications (First in a Series)

December 1, 1997 – Firm News

Effective December 1, 1997

Background

The new PTO rules permit essentially the same alternatives in filing applications that were possible under the previous rules, although there are a number of procedural changes of which you should be aware as the new rules will affect prosecution strategy in filing continuing applications.

In U. S. practice, filing an application and paying the Government filing fee entitles the applicant to a first official action and a second or final action. If the application is not allowed at this point, and further prosecution is desired, then two alternative courses of action for continuing prosecution are possible. Under the old rules one could file a File Wrapper Continuation (FWC) application under Rule 1.62. In an FWC application all existing amendments would remain and prosecution would continue after the case received a new Patent Office serial number. This course of action could only be used if the parent application were to be abandoned. An alternative course of action was to file one or more continuing applications without necessarily abandoning the parent application under Rule 1.60. Such applications were called Rule 60 Continuations or Divisionals. Under this approach, a copy of the originally filed application (i.e. with no amendments) was submitted to the PTO and, upon payment of the official fee, this document received a new serial number and was treated as an entirely new application.

New Rules

Under the new rules, all applications are filed under different sections of Rule 1.53. Rules 1.60 and 1.62 have been completely eliminated.

The new equivalent of the FWC application is called a Continued Prosecution Application (CPA) and is filed under new Rule 1.53(d). The CPA simply amounts to paying a fee and filing a form at the U. S. PTO. While the U. S. PTO treats this activity as the filing of a new application for its internal purposes, in fact a CPA is nothing more than a financial transaction in which an additional fee is paid for which the applicant receives another full examination (first action plus final action). There is no limit to the number of CPAs one may file.

The difference between the CPA and the old FWC is as follows. The CPA will not receive any new PTO serial number, nor will the application be removed from the examining group. Thus the main difference between the old practice and the new one will be that the CPA will receive very quick action, as it will not be necessary to remove it from the examiner for docketing purposes. As a result, if an amendment or new claims are to be entered, they should be filed very quickly (preferably with the CPA form) to prevent a first action final rejection. Under the old FWC practice we often had a month or two to file any necessary amendments.

In our office, the CPA will not receive a new docket number, and will simply consist of continued prosecution under the original docket number.

The equivalent of the old Rule 1.60 continuation practice is now carried out under Rule 1.53(b). Such an application will receive an entirely new U. S. PTO serial number and will be treated as a new application. The main difference between the new practice and the old is that under rule 1.53(b) the copy of the application that we file may (but need not) include all amendments that were made during the prosecution of the original application. Thus it will be possible to file a clean copy of the application including all amendments, rather than filing a copy of the original application and adding necessary changes by preliminary amendment. Of course, the approach of filing a preliminary amendment may still be used, if desirable.

Continuation Applications filed under Rule 1.53(b) do not require abandonment of the parent application. Further, since they will be treated as new applications within the U. S. PTO, they will not be directed immediately to the examiner and will not be acted upon as quickly as CPAs . Accordingly the filing of a continuation under 1.53(b) would tend to slow down the examination of the application relative to a CPA under 1.53(d). This may be an advantage or a disadvantage depending upon existing circumstances.

Other Changes

It is no longer necessary to name inventors when filing a U. S. patent application without a declaration. However, our recommendation is that at least one inventor should be named for purposes of identifying the application within the PTO when it is necessary to file papers or otherwise locate the application before the PTO Serial Number is received. The PTO will determine the names of the inventors from the declaration when it is filed.

Under the new rules, declarations will not be objected to by the U. S. PTO if they are not dated.

It is not proper to add any new matter in a CPA, and thus it is not possible to use the CPA procedure to file a continuation-in-part (CIP) application.