Strategies for the Revision of US Patent Rule



Strategies for the Revision of US Patent Rule


Aki Ryuka

A. What to do before Nov. 1, 2007
1. File RCE, if necessary.
2. If multiple continuations had been filed before Aug. 21, do not rush to file the third continuation.
3. Respond to the outstanding restriction requirement earlier, to receive the first OA before Nov. 1, 2007.

B. General

1. Strategies for Only Two Continuations
(1) Defer US Examination
 – File through PCT
 – File through US Provisional
    (Especially when the inventions were made in the US and will be filed in the limited number of countries.)

(2) Accelerate Examinations in the other countries 瑩 Find Prior Arts Earlier
 – KR: File a request for examination at the time of filing. (9 months to OA)
 – JP: File a request for accelerating the Examination. (3 months to OA)
 – EP Countries: File EP application to obtain ESR.
 – CN: File a request for examination after allowed in JP, with JP
    allowance. (Often, just allowed as in JP, with no new prior arts.)

(3) Consider Preliminary Amendment
 – If the continuation should be saved.

(4) Decide Basic Strategy for Utilizing Continuations for Respective Appln.
  (Type P) Need longer pending period?
  (Type V) Need more claims than 5/25?
  (Type W) Need to wait for prosecutions from other countries?
  (Type N) None of the above applies, and two continuations can be just
       consumed for the response to the final OA.

2. Strategies for 5/25 Claims
(1) File multiple distinct US applications claiming the same JP priority.
(2) Draft JP and PCT applications in accordance with 5/25 rule, if possible.
(3) Draft claims to be restricted, and file SRR.

3. Strategies for the Same Day Presumption
(1) If NOT disclosed in the other application,
  – File JP applications on different days, so as US applications.
(2) If mutually disclosed in the other applications,
  – File JP applications on the same day to avoid EP self-collision.
  – Do not include non-distinct inventions.
   – Consider claiming different categories by each application. ??

4. Strategies for the Disclosure of Related Invention
(1) Build a Software
   Should be separate from main docketing system, because of possible
        re-revision of the Rule.
   Functions: Searching Related Invention
        Printing “Separate Papers”
        Printing instruction letters for US law firms
        Flexibility for possible further revision of the rule.
        Exporting information.
        Limited Docketing for confirming the disclosure to USPTO.
(2) Leave all disclosure issues to one JP firm capable of the items in (1).

C. What RYUKA Can Help.
(1) To Build company-own software of B4(1). or
(2) To Instruct all US attorneys for all pending applications with our
    own software. We need information of the applications and patents filed in
    the US before Jan. 1, 2001 AND those claiming priorities of after Jan. 1, 2006.