Unfortunately, patents must be obtained in every foreign country where protection is desired. Thus, a United States patent will only protect against infringement in the United States; although, it does also protect against importation of infringing articles into the United States.

Because almost all foreign countries are based on a first-to-file system and prevent filing after any public disclosure, it would seem necessary to simultaneously file a patent application in every foreign country where protection was desired before any disclosures were made. However, such simultaneous filing would be extremely difficult logistically and would involve significant expenses at a time when the marketability of an invention is likely to be questionable at best.

Fortunately, it is possible to achieve simultaneous filing without actually doing so by filing an international PCT application within one year of the earliest filed United States patent application. Thus, if a provisional application were filed on August 1, 2007, it would be necessary to file an international PCT application by August 1, 2008. It would then be necessary to file one or more foreign patent applications with specific foreign patent offices within thirty months of the earliest filed United States patent application, in this case 30 months from August 1, 2007 or February 1, 2010. By adhering to this procedure, the foreign patent applications are then treated as if they were filed on August 1, 2007.

Accordingly, use of an international PCT application delays the time for filing patent applications in foreign countries, but makes it possible for those later filed foreign applications to be treated as if they were filed up to 30 months earlier. This time can be used to test the marketability of an invention before wastefully expending resources.

June 17, 2008
Improvements: New Application or CIP

Once a non-provisional patent application is filed and docketed for examination, what is the proper course of action to protect an improvement that is not contained in the application? There are two options: file a new unrelated application that contains the improvement or file a continuation-in-part (CIP) related application.

A CIP application is the traditional route because it is specifically designed for accommodating improvements to an invention already contained in a previous non-provisional application. The downside to a CIP application is that the patent term runs from the filing date of the previous non-provisional application. Historically, this was not an issue because the patent term was measured from the issuance date. However, the patent term now runs from the filing date thereby resulting in a truncated patent term for any improvements contained in a CIP application.

Differently, filing a new and unrelated provisional or non-provisional application restarts the patent term. While it would seem like this would be an obvious choice over a CIP application, it has a number of hidden risks. First, the previously filed application can be cited against the newly filed application during examination because of the previous filing date and similar disclosure. There is a way around this rejection by filing a terminal disclaimer, but it requires truncating the patent term of the newly filed patent application to end at the expiration of the previously filed application. This is the same result as filing the CIP application. Second, public uses, offers for sale, and publications of the subject matter contained in the previously filed application can be cited against the newly filed application or be used to invalidate any patent issued on the newly filed application. This type of rejection cannot be overcome by filing a terminal disclaimer and could result in complete loss of patent rights to the improvements. Third, other patent applications filed before the newly filed application and containing subject matter similar to that in the previous patent application can be cited as a basis for rejection during examination. Because the newly filed application is unrelated to the previously filed application, it would not benefit from the earlier filing date of the previously filed application and could not use that as a basis for circumventing the rejection.

In short, the issues surrounding improvements are complicated. Despite the truncated patent term of a CIP application, the benefit of the earlier filing date should be carefully considered against the risks of filing a new and unrelated patent application.

June 11, 2008
Basic IP Checklist

The following is a non-exhaustive basic checklist for protecting your intellectual property.

Logo & Brand Names
   - File Federal Trademark Application
   - Provide Proper Public Notice

Useful Inventions
   - Implement Non-Disclosure Agreements
   - Avoid Disclosures & Commercialization of Invention
   - Obtain Co-Inventor or Employee Assignment Agreements
   - File Provisional Patent Application
   - Provide Proper Public Notice

Artistic Creations
   - Implement Work-For-Hire and Assignment Agreements
   - File Copyright Application
   - File Design Patent Applications

June 10, 2008
Trademark Priority

A registered trademark may still be cancelled based upon a demonstration that the trademark was previously used by another. For example, assume party A began using the trademark Xenon to sell household furnishings beginning in 1990, but party A failed to register Xenon. Next, assume that party B, without knowledge of party A’s use, began using the same trademark Xenon to also sell household furnishings beginning in 2000 and secured a trademark registration in 2002. Despite party B’s registration, party A can petition to cancel party B’s registration based upon the fact that party A was previously using Xenon.

The question then becomes, what is the purpose of securing a federal registration if all that matters is use. While federal registration isn’t absolute title to the mark, it does confer a presumption of ownership and trademark validity and nationwide priority. Note that party B above is the presumed owner and party A is required to take affirmative steps to eliminate party B. However, nationwide priority is perhaps the most important aspect of federal registration because a federal trademark is treated as having been used across the entire country as of its filing date. Thus, if party C begins using Xenon to sell household furnishings in a different geographic area, party B still has superior rights. This would not be the case without a federal registration because party B would only have trademark rights in the geographic area for which Xenon was used.

May 30, 2008
Proper Trademark Care

Federal registration of a trademark is only the first step to protecting trademark rights. Once a registration is obtained, it is necessary to properly care for the trademark to prevent erosion, cancellation, or unenforceability. The primary steps for proper care are as follows.

First, you must continuously use your trademark with the ® symbol on the goods or services listed in your registration. And, you must document the use of your trademark so that you can prove its continuous use if necessary. Documentation should include sales and advertising figures and locations, dated samples of advertisements, dated samples of labels, and dated pictures showing the trademark being used on the goods.

Second, you must police the market for potentially confusingly similar trademarks and monitor trademark applications. The existence of similar trademarks erodes the strength of your trademark. And, trademark applications that mature into registrations are extremely difficult and expensive to eliminate. One way to police the market is to use a trademark watching service to automatically monitor new federal trademark applications. Such a service will automatically notify you whether a federal application for a similar mark has been filed so that you can consider whether to file a letter of protest or opposition to impede the application before it matures into a registration and acquires its presumption of validity.

Third, you must file Section 8 and 15 affidavits with the U.S. Trademark Office between the 5th and 6th years after registration and Section 9 and 15 affidavits between the 9th and 10th years after registration. After the first ten years, you must only do the latter every subsequent 9th and 10th year. Failure to do so will result in cancellation of your trademark registration and will severely compromise your trademark rights.

Fourth, you should record your registration with U.S. Customs & Border Protection. Doing so offers you significant and inexpensive protection against imported counterfeit goods bearing your trademark. U.S. Customs maintains a trademark recordation system for trademarks registered with the U.S. Trademark Office. U.S. Customs agents use this recordation system to monitor imports at all 317 ports of entry to seize counterfeit goods before they even enter the U.S. market. You will receive detailed notices of any such seizure, including country of origin and addresses of the exporter and importer, so that you can take appropriate action. Without recordation, U.S. Customs will not deny entry to counterfeit goods and your only remedy is expensive civil litigation for trademark infringement.

May 14, 2008
Trademark Abandonment

Trademark rights exist only when a given trademark is used on or in association with products and services in bona fide sales to consumers. This is true for common law unregistered marks as well as federally registered marks. This is intuitive with regards to unregistered marks, given that if a mark isn’t being used in commerce and there isn’t a registration for the mark, there really isn’t anything else that would support trademark rights. However, with registered marks, there is often the assumption that registration alone grants trademark rights without use of the trademark being required. Unfortunately, this assumption is not true as registration merely provides a presumption that a trademark is valid. This presumption can be rebutted and a trademark registration can be cancelled if the underlying trademark is not continuously used to sell the products or services listed in the registration. As a side note, it is critical to file the requisite affidavits for federally registered trademarks every 5 years with the trademark office. Failure to do so will result in cancellation of a federally registered mark and complete loss of the presumptions that flow therefrom.

April 20, 2008
Online Patent Auction and Listing Service

Ocean Tomo® has also introduced the first online marketplace for patents. An individual or business can place an unsolicited bid on any patent in any country while remaining anonymous. The patent owner is then contacted with the bid and can accept the bid or counteroffer. Similarly, the owner of any patent can set an asking price for a patent, which is published online for potential buyers to review. Buyers and sellers can communicate anonymously in an online forum to conduct due diligence prior to completing a transaction. The minimum bid and ask price is $10,000.

In addition to the online marketplace, Ocean Tomo® also provides a listing service whereby patent owners can provide details for a patent that are quickly reviewable by potential buyers. Interested parties can then contact the patent owner to discuss purchasing or licensing the patent. The online auction and listing service are exciting and significant steps toward increasing the liquidity of intellectual property rights.

April 8, 2008
Records Broken at Live Patent Auction

Ocean Tomo® held another live patent auction on April 4, 2008 in San Francisco, California. Total reported sales were $19 million with average lot sales of around $370k each. One lot in particular sold for a record $6.6 million, the largest price ever paid for a portfolio of patents at a live auction event.

Independent inventors, especially in the software and internet technology fields, are finding that the live auction format is making it significantly easier to market patents. After all, prior to the live auction format, inventors had the burden of navigating the bureaucracies of companies and negotiating for licenses. Corporations often found it more economical to infringe on a patent, rather than purchase or license it, knowing that an independent inventor lacked the resources to bring a patent infringement suit. Now with live auctions, the jig is up. Companies can no longer infringe without recourse as a patent can quickly move from an independent inventor’s hands into a large company’s hands. And, the problem with a large company is that it does have the means to bring an infringement suit. Thus, companies that that previously ignored patents of small time inventors are now forced to bid or suffer the consequences.

Ocean Tomo Website

March 4, 2008
Patent and Trademark Notices

It is important to apply the correct notices to inventions, marks, and creative works of art. Notices ensure that the public is aware of your rights and that damages are available for infringement. The ‘patent pending’ or ‘patent no.’ notice may only be used if the invention that the notice is applied to is actually the subject of a pending patent application or an issued patent. With trademarks, there are two notices to be considered. The ‘TM’ notice may be used for a trademark at any time without any prior registration of the trademark. This notice indicates to the public that you consider the trademark to be valid and enforceable under common law trademark rights. The ‘R’ symbol may only be used if the trademark has been federally registered with the U.S. trademark office. Federal registration results in a presumption of validity and enforceability and nationwide priority, whereas common law trademarks do not.

February 15, 2008
Entrepreneurs and Copyright Ownership

Rights to creative expressions such as books, sculptures, music, and pictures initially vest in the author of the work. This can create a problem when a business owner or entrepreneur hires someone to produce a creative expression because, as the author, that person can end up owning the copyright in the underlying work. While there is a work-for-hire doctrine in the law which provides that any creative expression created by an employee for an employer is owned by the employer, this doctrine does not apply in the case of independent contractors. Thus, independent contractors retain the copyright interests in any creative works for which they are hired to produce. The only way to avoid this problematic result is for the independent contractor to agree to assign their copyright interests to the business owner or entrepreneur. Such an assignment should be recorded with the U.S. Library of Congress.

February 8, 2008
Unique Product Designs

A uniquely designed product shape is potentially protectable through trademarks, design patents, and copyrights. First, copyright law protects creative expressions that are fixed in a tangible form, which can include uniquely designed products. In order to secure the full rights provided for by copyright law, it is necessary to file a copyright application with the Library of Congress. The application process is quick and inexpensive; however, copyrights do not protect against independent creation and they are subject to a limited term.

Next, design patents protect new and non-obvious ornamental designs on useful articles, which again can include uniquely designed products. In order to secure a design patent it is necessary to file a formal patent application with the Patent Office and undergo a complex examination process. Design patents provide strong protection against unauthorized making, using, selling, and importing of the specific design. However, design patents are expensive, easy to design around, and expire after a very limited term.

Lastly, trademarks protect names, logos, and any other item that serves to identify the source of a product in the marketplace, which also can include uniquely designed products. In order to secure a trademark for a unique product design, it is necessary to file a trademark application with the Trademark Office and undergo an examination process. Trademarks provide fairly strong protection against confusingly similar product designs and can last indefinitely. However, registration and infringement require actual sales of products and it can take up to five years to receive full trademark protection for a product design.

February 4, 2008
Trademark Oppositions

After a trademark application is filed, it is examined by a trademark examining attorney at the United States Trademark Office. The examining attorney confirms that the application complies with formal requirements and makes a determination as to whether there is likely to be consumer confusion between the applied for trademark and any other registered trademark. The trademark process is not complete even if the examining attorney approves the application. Instead, the application is published for a thirty day public opposition period, during which time any member of the public may oppose the application. If an application is opposed, a proceeding commences with the Trademark Trial and Appeals Board which is analagous to a typical court proceeding with some notable differences.

Failing to respond to an opposition will result in a default judgment against the applicant; that is, the application will be cancelled. Further, an opposition can only be filed during the thirty day period. Failure to timely oppose a mark will result in registration of the mark and registered marks are much more difficult to cancel.

January 29, 2008
Foreign Patent Applications

Filing a U.S. patent application does not protect inventions abroad. Instead, if foreign patent protection is desired it is necessary to file a separate patent application in each foreign country of interest. Furthermore, it is necessary to these foreign patent applications within twelve months of the earliest filed patent application. For example, if a U.S. provisional patent application is filed on January 1, 2008 it is necessary to file all foreign patent applications before January 1, 2009. When there are a number of foreign countries of interest, a single international PCT patent application can be filed within the twelve month period. This PCT application only extends the time frame to enter foreign countries by around another eight to twenty months and does not actually mature into a patent application.

Inventors should also be aware that most foreign countries operate on a first to file basis and do not permit any disclosures of an invention prior to patent filing. This means that if there is a potential for later foreign filing, it is important to file U.S. applications early and prior to any disclosures. Provisional applications should also include at least one claim so that they can properly serve as the foundation for later foreign applications.

January 18, 2008
Pending Senate Patent Reform Bill

The United States Senate is currently considering patent reform bill S.1145, a companion to the patent reform bill already passed by the House. The main aspects of the bill are switching to a first-to-file system, simplifying filing and examination, providing less expensive administrative procedures for questioning patent validity, allowing for 3rd party prior art submissions during examination, and requiring prior art searches when filing a patent application. Other provisions include ending US Patent Office fee diversion, clarifying damage calculations, and limiting venue.

“The purpose of the Patent Reform Act of 2007, as reported by the Senate Judiciary Committee, is to ensure that the patent system in the 21st century reflects the 18th century Constitutional imperative. Congress must promote innovation through the enticement to inventors of temporally limited monopolies on their inventions, and it must do so for the ultimate benefit of the public. The legislation is designed to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs. If the United States is to maintain its competitive edge in the global economy, it needs a system that will support and reward all innovators with high quality patents. The time has come for Congress to reconsider the 50 year old patent statute and how it is currently being applied.”

Summary of Senate and House Patent Reform Bills by John R. Thomas

January 9, 2008
Registered vs. Unregistered Marks

Ownership in a mark begins upon use of the mark to sell goods or services to bona fide consumers. Thus, unlike patent law, trademark registration is optional and not required. However, trademark registration includes a number of benefits that make it highly desirable and advantageous. First, unregistered marks can result in multiple entities selling under the same mark in different geographic regions. This issue can make expansion and subsequent registration of a mark difficult. Next, there is no way to preserve rights in an unregistered mark prior to using the mark in sales like there is with federal registration. Thus, an unregistered mark is not protected between the time the mark is selected to when actual products and services are sold. Also, unregistered marks must be proven valid and enforceable whereas registered marks are presumed valid and enforceable. Lastly, owners of registered marks are able to enlist the aid of U.S. Customs to prevent the importation of infringing products. In short, careful consideration must be made early on as to whether to register a trademark as unregistered marks are weak and are associated with a number of other risks.

December 21, 2007
New Prior Art Disclosure Rules

The new prior art disclosure rules are expected to be published by the Patent Office in early 2008. One of the requirements for patentability is that an invention be new over the prior art, which includes patents, patent applications, foreign patents, foreign patent applications, and other publications. Although there is no affirmative duty to search for prior art before filing a patent application, applicants are required to submit a list of any known prior art references to assist the examiner with examination. Although there are some limits on when prior art can be submitted in the examination process, there are absolutely no limits on the number of prior art references that can be submitted. Because a patent is harder to invalidate using prior art that was submitted to the patent office during examination, some applicants submit thousands of prior art references to overwhelm an examiner and bury material prior art. Further, third parties are not able to independently submit prior art references to an examiner even when the prior art references indicate that an invention is not new.

In an attempt to address these issues, the new prior art disclosure rules are expected to make at least two significant changes. First, the number of prior art references that can be submitted will probably be limited to twenty. If more than twenty prior art references are submitted, they would need to be accompanied by an explanation as to the significance of the references. Second, third parties will be able to submit prior art references in published applications to assist examiners with examination.

November 27, 2007
Presidential Candidates on Patents

Presidential candidates Mitt Romney and Barak Obama have issued statements regarding their views on the U.S. patent system. Romney believes that a strong U.S. patent system is critical for a healthy economy. If elected President, Romney would support abolishment of the new patent office rules that restrict claims and continuation applications; would ensure that the Undersecretary of Commerce and Director of the Patent Office were patent attorneys; and would consider appointing patent attorneys to the U.S. Federal Circuit.

Obama also believes that a strong U.S. patent system is essential for global competitiveness. If elected President, Obama would increase funding for the Patent Office; would open the patent process to peer review; and would provide inexpensive and timely administrative proceedings for reviewing patent validity.

Romney's Statment
Obama's Statment

November 14, 2007
New Patent Rules Delayed

The U.S. Patent Office promulgated new rules for claims and continuations that were to become effective on November 1, 2007. A Virginia Federal Court issued a preliminary injunction against the U.S. Patent Office blocking the rules from being enforced until it could be determined whether they are consistent with the U.S. Constitution and the Patent Act of 1953. The U.S. Patent Office has complied and deferred enforcement of the rules until further notice. Currently, there are no limits to the number of claims that can be presented or to the number of continuation applications that can be filed for a single invention. The Patent Office believes that limits to claims and continuations are necessary to improve the overall efficiency of the patent application process. However, the U.S. Constitution and the Patent Act seem to preclude any limits to the number of claims and continuation applications that can be filed. In short, the new rules are being delayed until further notice from the Virginia Federal Court. Note that these rules are different from the proposed revisions to the Patent Act that are working their way through Congress. The proposed revisions include switching to a first-to-file system, permitting third party prior art submissions, and providing for a post-grant opposition period.

October 30, 2007
Prior Art Searching

Prior to filing a patent application for an invention, it is important to conduct a prior art search to determine whether an invention is new. The relevant sources of prior art include issued patents, pending patent applications, foreign issued patents, foreign patent applications, and any other non-publication reference. Non-publication references include articles, existing products, theses, websites, textbooks, press releases, advertisements and other publications.

Although a prior art search is not required, it is good practice because an examiner will be conducting a prior art search during examination. Furthermore, an issued patent is subject to being invalidated with prior art by the patent office or by a court of law. Thus, knowing whether an invention is new before filing a patent application can save time and resources and can help focus the application on its most innovative aspects.

US Patent Office
Canadian Patent Office
Japanese Patent Office
European Patent Office
International Patent Applications

October 16, 2007
Employee Rights to Inventions

Within the context of an employer/employee relationship, the question often arises as to who owns the rights to any inventions created by an employee. The default rule in the United States is that absent an agreement, the employee owns rights to any inventions they conceive of, and any patent applications or patents based thereon, during the course of employment.

Therefore, when entering into an employer/employee relationship, employees concerned about their invention rights should proceed cautiously and diligently review all employment agreements, company policies, or any other express or implied agreements to ensure that their rights to current and future inventions are not compromised. Similarly, when it is intended that an employee assign his or her inventions to a company, it is important for employers to formalize such agreements at the onset of employment to ensure an employee doesn’t retain ownership rights to patent applications and issued patents. Washington law sets forth specific requirements and limitations for such agreements.

To complicate the issue, the default for copyright ownership is with the employer rather than the employee under the Work for Hire doctrine. This raises interesting issues with regards to software patents, which may be protected with both patents and copyrights.

October 2, 2007
Improved Marketability for Patents
Intellectual Ventures Website
Ocean Tomo Website

There are three traditional ways for an inventor to profit from his or her patent. The first is to create and sell the product covered by the patent and preclude others from doing the same. The limited monopoly provided by the patent permits the seller to command higher prices in the market. This route requires significant resources to both bring the product to market and to enforce the patent against infringers. Given that this is an obstacle to many inventors, a second method is to license or sell the patent to a company that has the resources and know-how to exploit it in the marketplace. This arrangement is ideal in that it rewards the inventor for his or her contribution, rewards the consumers with a better product, and rewards the company with increased profits. However, there are sizable barriers for inventors pursuing this option. First and foremost, it is difficult for an inventor to contact the right person within a company. Further, a company is not incentivized negotiate with an inventor unless the company both needs the patent and believes that the inventor is willing and able to enforce it. Given these difficulties, it is not surprising that a third method has become popular: do nothing, wait for infringement, and file a lawsuit. This route is attractive given that no resources are required to make a product or to negotiate with potential manufacturers and because there is a strong incentive for an existing infringer to settle. Unfortunately, this route introduces substantial chaos in the business world through legal uncertainty and precludes consumers from benefiting from new inventions.

Improved marketability for patents has the best potential to eliminate inventor reliance on patent lawsuits, permit consumers to benefit from new inventions, and allow companies to earn higher profits. Two companies in particular are making significant headway to achieve patent liquidity: Ocean Tomo® and Intellectual Ventures®. Ocean Tomo® promotes the first live public auctions for intellectual property where inventors can offer patents for sale and buyers can research and purchase the same. Intellectual Ventures®, on the other hand, is a well-funded organization which purchases intellectual property and markets the same to other entities. Both auctions and intellectual property intermediaries are likely to play an important role in improving the marketability of patents.

September 21, 2007
New Limitations on ‘Business Method’ Patents
Link to Comiskey Decision

Ever since the State Street Bank Federal Circuit decision of 1994, the law regarding ‘business method’ patents has been in considerable disarray. It is well settled that abstract ideas, truths, principles, and motives are not patentable subject matter. Instead, patentability is limited to new or improved machines, compositions of matter, and processes. The court in State Street Bank, however, held that a method for managing financial services was patentable because it was a process and that patentability does not depend upon whether the process does business. This decision blurred the distinction between unpatentable ideas and patentable processes and introduced significant uncertainty.

Following the State Street Bank decision, inventor Comiskey filed a patent application for a method of conducting mandatory arbitration. However, the Federal Circuit affirmed a series of patent office rejections and held that standalone business methods are no longer patentable unless they are tied to a machine or composition of matter.

September 20, 2007
Differences Between Business Names and Trademarks

A trademark is any name, phrase, logo, or other device that is used to identify the source of a good or service and distinguish that good or service from others in the marketplace. With goods, trademarks must be displayed on the good itself or associated product packaging. With services, trademarks must be displayed within advertisements for the services such as on brochures, signs, or displays. Common trademarks include Nike, the Starbuck’s logo, and Perrier’s bottle shape. A business name is the name of the legal entity under which a business is conducted. A business name is not a trademark unless it is used as a source identifier for a good or service as discussed above. Further, a given business entity can own a number of different trademarks for various goods and services.

September 12, 2007
Proposed Patent Act
Link to Act

The House of Representatives has passed revisions to the current Patent Act and it is now being considered by the Senate. The revisions are sweeping and they include a first-to-file system, third party art submissions, post grant proceedings, and required search reports.

Currently, the U.S. is on a first-to-invent system whereby a patent is generally awarded to the first inventor to conceive of an idea regardless of who files first. The first-to-file change means that a patent will be awarded to the first inventor to file regardless of who invented first. The first-to-file system will introduce more certainty, but it will require prompt and expeditious filing of ideas.

Regarding third party submissions, current examination of patent applications is completely sealed off from third parties. Thus, even if a third party knows that a pending patent application is meritless there is nothing that can be done to intervene until after the patent issues. Third party art submssions permit any third party to notify the patent office of other patents, patent applications, or publications that may help the examiner in determing whether a patent should be granted. Third party submissions will assist the examiners with determining patentability, but competitors could abuse the process by filing excessive art submissions.

Presently, the only remedy to invalidate a patent at the patent office is through re-examination proceedings, which are complicated and expensive. The post grant proceedings are an alternative to re-examination proceedings and permit a third party to oppose a patent within one year of issuance. Unless the post grant proceedings are significantly easier and less expensive than current re-examination proceedings, they will probably not add much value.

Prior art searches and search reports are not currently required in new patent applications. However, under the proposed Patent Act the Patent Office may require search reports for everyone but micro-entities, which generally include independent inventors and small businesses. Placing a burden on large businesses to help the Patent Office determine patentability will probably improve patent application examination efficiency.

September 10, 2007
New Patent Rules
Link to Rules

New patent rules pertaining to claims and continuation practice will go into effect on November 1, 2007 and are retroactive to all applications that have yet to receive a first office action on the merits. The new rules are an attempt by the patent office to reduce patent application backlog and improve overall efficiency of the patent process by permitting examiners to focus more on new applications.

The claims are the section of the patent application that set forth the ownership rights of the invention. The standard non-provisional filing fee permits up to 3 independent claims and 20 total independent and dependent claims to be filed without additional charge. However, an applicant can exceed this baseline number of claims without limit by paying additional fees. In some cases, applications include thousands of claims making it more difficult for prompt examination of the application. The new rules therefore limit the number of claims that can be filed in an application to 5 independent claims and 25 total claims. Although additional claims are allowed when an examination support document is filed prior to the first office action, the costs associated with preparing the examination support document are significant.

Continuation practice refers to the practice of filing continuation, continuation-in-part, and divisional applications and requests for continued examination during the examination process. A request for continued examination requires the examiner to review an application for patentability again after a final rejection is issued. A continuation application is an additional non-provisional application for an invention already contained in a previous non-provisional application. A continuation-in-part application is similar to a continuation application, but it also contains new subject matter. A divisional application is a non-provisional application having claims directed towards an invention that was restricted out from a previous non-provisional application. Current continuation practice has no limitation on the number of these applications and requests that may be filed thereby making it more difficult to attend to entirely new applications. Therefore, the new patent rules limit the number of continuation and continuation-in-part applications to 2 and the number of requests for continued examination to 1 per family of applications. Although additional continuation practice is possible upon a showing of necessity, it will presumably be difficult for applicants to meet this standard.