Boston, Massachusetts: Software Patents Law Firm
Robert Plotkin, P.C.
Boston, Massachusetts
Toll-Free: 877.651.8039 | Office Phone: 978.318.9914
E-Mail
The U.S. Patent and Trademark Office (USPTO) is in the process of enacting new rules that will significantly limit your ability file follow-on patent applications known as "continuation" applications. Until now, you have had the right to file an unlimited number of continuation applications, so long as they did not add "new matter."
Continuations have been an essential tool for refining patent applications over time to secure broader protection. Sometimes continuations are necessary simply to continue the conversation with a patent examiner who unreasonably refuses to grant a patent or who does not understand the invention.
The new limitations on continuation applications will provide a strong incentive, and in some cases make it necessary, to file appeals - which typically cost more than twice as much as continuations and take years rather than months to resolve - when responding to a rejection from the Patent Office.
The new rules do not go into effect until November 1, 2007. We, and the patent bar more generally, anticipate a flood of continuation patent applications to be filed before the changes take effect. Therefore, patent applicants should consider filing any necessary continuation applications soon to avoid the harmful effects of the new rules.
The best strategy to pursue for a particular patent application will vary from case to case. In some situations it will be useful to file one or more continuations before the effective date of the new rules (November 1, 2007). In other situations it may be worthwhile to amend the claims in an existing patent application to cover any modifications or improvements that have made to the invention. These and other alternatives should be evaluated with the assistance of patent counsel so that the best strategy can be pursued based on the circumstances of each case.
Please contact Robert Plotkin, P.C. directly should you have any questions about the new continuation application rules or any other patent-related issues.
