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Building a Patent Portfolio in View of the New Patent Rules

By Robert Hulse

The latest change in the rapidly evolving field of patent practice emerged in August 2007, when the U.S. Patent and Trademark Office ('PTO') published its new rules for practice. Covering examination of patent claims and continued examination filings, these rules may be the most fundamental change to patent practice in decades. In particular, they will significantly limit applicants' ability to present patent claims in a single application, and they will in many cases prevent applicants from pursuing additional claims in continued application filings. These rules will generally make the patent process significantly more time-consuming, more complicated, and, as a result, more expensive.

The rules become effective Nov. 1, 2007, and can be broken into three main areas: 1) limits on presenting continued examination filings, 2) limits on examining patent claims in an application, and 3) additional requirements for presenting multiple related applications. The first two categories limit the mechanisms by which an applicant can pursue patent protection for a particular invention. The third category ' intended to prevent applicants from circumventing the first two categories ' introduces additional burdens when an applicant presents multiple applications that may be related.

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