The USPTO has proposed rules to alter the filing of "children" patent applications. Essentially, the rules will remove an applicant’s right to re-file her application more than one time. Currently, there isn’t a limit on the number of continuations that can be filed. Ostensibly, this new rule is being promulgated to reduce the back-log of pending applications and to reduce the amount of time applications spend in the patent office before being granted (or rejected). Patent strategy will need to dramatically change if these rules withstand challenge that is sure to come; similar rules were proposed, but not approved by the U.S. Congress. To say that the rules are controversial is a gross understatement - more than 300 comments were filed in response to the USPTO’s announcement.
The "children" applications at issue are generally called "continuation" applications. The continuation is a filing that presents the original claims for another examination. Continuations are filed for any of a number of reasons: the parent application issues with narrow claims and the applicant wants to try to obtain claims for the full scope of the invention; the applicant wants to keep an application pending for when the law is more favorable or for a potential licensee to pursue protection for a particular form of the invention, among others.
While continuation practice is peculiar to the United States, patent office procedures in other countries are more favorable to applicants making continuations less necessary. In the U.S. a patent application is examined a first time, resulting in an "Office Action" - usually a rejection of the claims. The applicant gets ONE chance to respond to the rejections before a "Final Office Action". Although an applicant can respond to a Final Office Action, the patent office is not required to consider the response. At this point, options are limited for an applicant - appeal, file a continuation or abandon. In other countries, multiple rounds of examinations and responses are the norm. It often takes a few rounds for both the examiner and the applicant to fully develop an appreciation for subject matter that is patentable. I, for one, prefer the style of patent examination in other (non-U.S.) countries.No tags for this post.