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TataBoxInhibitor
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Re: Quick New Rule Questions
« Reply #5 on: Oct 25th, 2007, 10:03pm »
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Isaac:
 
Do you not think it comes down to how "patently distinct" certain claims of your application are?   For instance, it would be better to file divisionals and argue they are distinct verses waiting after 11/1.   Because then the Examiner either restricts (which would be great) or holds you to 5/25.    
 
In the previous case, say you have 100 claims and you file 3 divisionals.   The Examiner says "indistinct", then all you have to do is cancel some claims in the application that has over 25, then you essentially get 15/75.
 
The downside to filing divisionals now is that you are limiting the number of the 2+1 applications.
 
Regards,
 
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TataBoxInhibitor
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Re: Quick New Rule Questions
« Reply #6 on: Oct 26th, 2007, 5:04am »
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Isaac:
 
I guess the real questions is:  What are practitioners doing who manage applications with over the limit before 11/1?
 
Regards,
 
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Isaac
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Re: Quick New Rule Questions
« Reply #7 on: Oct 26th, 2007, 8:29am »
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on Oct 25th, 2007, 10:03pm, TataBoxInhibitor wrote:
Isaac:
 
Do you not think it comes down to how "patently distinct" certain claims of your application are?

 
Yes.  I agree 100%, and of course I haven't seen the claims in question.   My point is only that there is no single right answer for what to do with a 100 claim case.
 
Generally speaking, filing a "voluntary" divisional has the advantage that the new applications are continuations from which you can file CIPs and continuations for any disclosed inventions.   The downside include having to go on record to rebut the presumption that the claims are patentably distinct and that you get only one RCE between the applications.  Further, you may not be able to handle 100 claims using just 2 continuations, so you may have to chose which inventions to pursue.
 
On the other hand, if you are able to lead the examiner to a favorable restriction (using an SRR), you maintain the option of filing "real" divisonals which get an RCE per divisional and you may be able to point to the examiner's restriction requirement to rebut the presumption, which means that you don't have to trash your client's claims.   The downside includes limitations on what types of claims you can file in continuations from the divisionals, but perhaps you can still file the divisionals as continuations if you want and you should still be able to rely on the examiner's restriction to rebut the presumption.   Also, maybe some combination of continuations and divisonals may be prudent.
 
In a given case, either option might be favored, and different sub options should be pursued.   If you know the prior art, and how the examiner is going to interpret your claims, you can make a more informed  decision.   Unfortunately, by creating differences between divisionals and continuations that have distinct substantive and procedural effects that affect prosecution (rather than minimal effects that can be addressed with terminal disclaimers in most cases), you have to make these decisions up front with less than perfect knowledge.
 
Of course there's always the option to file an ESD.  I wonder if an attorney will ever be successfully sued for recommending that a client file an ESD.
 
Maybe we should buy some "I love GSK" t-shirts this weekend Smiley.  
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Isaac
TataBoxInhibitor
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Re: Quick New Rule Questions
« Reply #8 on: Oct 27th, 2007, 11:03am »
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on Oct 26th, 2007, 8:29am, Isaac wrote:

 
Generally speaking, filing a "voluntary" divisional has the advantage that the new applications are continuations from which you can file CIPs and continuations for any disclosed inventions. The downside include having to go on record to rebut the presumption that the claims are patentably distinct and that you get only one RCE between the applications.

 
 
If you do rebut that presumption, you should be able to get 2 + 1.   If not, then you are entitled to one RCE if you used two continuations before 11/1.
 
 
on Oct 26th, 2007, 8:29am, Isaac wrote:

 Further, you may not be able to handle 100 claims using just 2 continuations, so you may have to chose which inventions to pursue.[/guote]
 
 
You are correct.  However, if you have 75 claims, then it may make sense when you are unsure if you think you have patently distinct inventions.
 
 
[quote author=Isaac link=board=patent_filing;num=1193322898;start=0#7 date=10/26/07 at 08:29:52]
On the other hand, if you are able to lead the examiner to a favorable restriction (using an SRR), you maintain the option of filing "real" divisonals which get an RCE per divisional and you may be able to point to the examiner's restriction requirement to rebut the presumption, which means that you don't have to trash your client's claims.

 
If you get a favorable SSR, then each divisional will get 2 + 1, just not CIPs?
 
 
 
on Oct 26th, 2007, 8:29am, Isaac wrote:

The downside includes limitations on what types of claims you can file in continuations from the divisionals, but perhaps you can still file the divisionals as continuations if you want and you should still be able to rely on the examiner's restriction to rebut the presumption. Also, maybe some combination of continuations and divisonals may be prudent.

 
 
True.
 
 
 
In any event, you generally have to argue distinction, whether it be in response to the presumption of serial applications filed or in your SSR.    
 
Only where the Examiner restricts you, are you not going to place any argument in the file wrapper.
 
 
 
 
Regards,
 
 
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Isaac
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Re: Quick New Rule Questions
« Reply #9 on: Oct 27th, 2007, 12:21pm »
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on Oct 27th, 2007, 11:03am, TataBoxInhibitor wrote:

 
If you do rebut that presumption, you should be able to get 2 + 1. If not, then you are entitled to one RCE if you used two continuations before 11/1.

 
Just to be clear, divisional applications that are filed without a restriction requirement are treated as continuations.  You get one RCE per continuation family.  If you take a voluntary three way split now rather than waiting to be restricted, you will use up your as of right continuations.  Rebutting the presumption with respect to those continuations does not give you any more RCEs or give you any more continuations.  It simply allows you to have 5/25 claims per application.  
 
Quote:
If you get a favorable SSR, then each divisional will get 2 + 1, just not CIPs?

 
Yes.  
 
Quote:
In any event, you generally have to argue distinction, whether it be in response to the presumption of serial applications filed or in your SSR.

 
Yes.  But the standards may be different.
 
Examiners routinely specify restrictions that don't separate the claims into patentably distinct groups.  Instead, the groups of inventions subject to restriction have to be independent and (or) distinct (in the sense that they differ in some significant way) and there has to be a burden on the examiner.   The difference need not be a patentable one, however it appears for now at least that if the examiner makes a restriction, the PTO is going to honor the examiner's decision and allow you to file the divisionals.  
 
Your SRR is only a suggestion and does not need to justify a restriction on a basis different from the one an examiner would use, and might be persuaded to accept.   In fact, it would be pointless to try to prove that sets of claims are patentably distinct in an SRR, because the examiner can still refuse the restriction.
 
For that reason, I believe an SRR is likely to contain less damaging admissions that would a paper attempting to rebut a presumption that the claims in sibling applications are patentably indistinct.   But in a specific case, maybe rebutting is the way to go.
 
 
 
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Isaac
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