New USPTO Rules for Continuation Applications and Claim Examination

On August 21, 2007, the United States Patent and Trademark Office (USPTO) published final rules regarding continuation and claim examination practice. Depending on the circumstances of your patent portfolio, these final rules will affect U.S. patent prosecution practice. Though the rules go into effect on November 1, 2007, certain patent prosecution actions taken prior to this effective date will affect options available after November 1, 2007.

Finnegan's summary of the final rules outlines some of the more immediate issues to consider when practicing under these rules. While this memorandum alerts you to some of the broad issues and strategic concerns that arise under the new rules, the memorandum does not recommend any particular strategy for specific cases. Each situation is different, depending on the particular facts and applicable legal principles.