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TataBoxInhibitor
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Quick New Rule Questions
« on: Oct 25th, 2007, 8:34am »
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Group:
 
If the Examiner restricts an invention, thus allowing the applicant to submit divisionals, does this essentially mean that different divisionals are NOT a "patent family."  In turn, each divisional is limited to the 2 + 1 rule.
 
I am just wondering what steps the Examiner is going to take after 11/1.    Seems like:
 
1. Require an ESD if over the 5/25, 15/75 limits
allow us to amend to comply or submit ESD.
 
2. Restrict in combination with #1.
 
 
Regards,
 
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TataBoxInhibitor
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Re: Quick New Rule Questions
« Reply #1 on: Oct 25th, 2007, 8:44am »
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My reading of the rules indicates that the answer to my first question is yes.
 
Regards,
 
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Isaac
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Re: Quick New Rule Questions
« Reply #2 on: Oct 25th, 2007, 10:11am »
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on Oct 25th, 2007, 8:44am, TataBoxInhibitor wrote:
My reading of the rules indicates that the answer to my first question is yes.
 
Regards,
 

 
Each compliant divisional is it's own family.   I don't believe divisional families can include a CIP, and the subject matter of the continuations must be to the same invention as the divisional.  
 
For cases pending before, you have the option to submit a suggested restriction requirement (SRR) in addition to your other options, and I believe that the option will be presented without examiner interaction, so you should not routinely get a restriction requirement prior to the ntoice.
 
For cases filed after Nov. 1, you won't be given the opportunity to file an SRR when you receive a notice, and it seems likely to me that the notice will be an administrative action that happens shortly after filing the application.  If you want to use the SRR, you should file it with the application or very shortly afterwards.
 
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Isaac
TataBoxInhibitor
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Re: Quick New Rule Questions
« Reply #3 on: Oct 25th, 2007, 1:39pm »
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If I have a pending application with 100 claims and I do not want to file an ESD, I must hope they restrict me.  Otherwise, I have to cancel to meet the requirement?
 
As a side note:  How exactly does one get to the 15/75 limit?   Do I have to file 3 apps with 25 apeice?
 
It would seem prudent to file divisionals now, get 15/75 for the patent family and cancel the remaining claims if you wanted to avoid an ESD, verses, not getting restricted with 100 claims and having to cancel 75 to get within the 5/25.
 
Regards,
 
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Isaac
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Re: Quick New Rule Questions
« Reply #4 on: Oct 25th, 2007, 2:33pm »
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on Oct 25th, 2007, 1:39pm, TataBoxInhibitor wrote:
If I have a pending application with 100 claims and I do not want to file an ESD, I must hope they restrict me.  Otherwise, I have to cancel to meet the requirement?

 
Something like that.  You can file a suggested restriction requirement and hope that the examiner follows it.  While I haven't done so, I'd be sorely tempted to try to discuss the restriction with the examiner when she picks up the case if I had 100 claims in it.
 
Quote:
As a side note:  How exactly does one get to the 15/75 limit?   Do I have to file 3 apps with 25 apeice?

 
Yes.  The assumption here is that you have a parent and two continuations.   In the interest of keeping my blood pressure within its control band, I'm not going to say anymore about 15/75.
 
Quote:
It would seem prudent to file divisionals now, get 15/75 for the patent family and cancel the remaining claims if you wanted to avoid an ESD

 
Well, no.
 
A true divisional (as of Nov. 1) is an application containing unelected, unexamined claims as a result of a restriction imposed by the PTO.  
 
Voluntary "divisionals" are really continuations of the same family as the parent case regardless of whether they contain patentably distinct claims.   That means a single RCE between them, and no more continuations if you do a 3 way restriction.  Further, after Nov. 1, you won't be able to file more than a 3 way split as a voluntary divisional without a petition and showing.
 
« Last Edit: Oct 25th, 2007, 5:59pm by Isaac » IP Logged

Isaac
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