Tomorrow marks the implementation date of changes to the U.S. Patent and Trademark Office’s new restrictions on claims and continuations, and the office issued a five-page notice providing at least some clarification for befuddled patent owners. According to Joseph Teja Jr., a lawyer with Wolf, Greenfield & Sacks, P.C., a Boston law firm specializing in intellectual property, the memo clears up ambiguous language that would have had draconian effects if left uncorrected. “One of the most troubling issues was the provision in the Supplementary Material accompanying the new rules on ‘one more’ permissible continuation in a patent-application family that was already ‘full’ prior to August 21, 2007,” Teja says. The provision implied that divisional applications and continuations of them filed anytime after August 21, 2007 would “use up” the “one more” permissible continuing application in an already-full application family, but the PTO clarifying memo states otherwise. “This will provide many applicants with additional flexibility to advance prosecution strategies that were contemplated in a much different landscape than the one we’re facing now,” Teja says. Another important clarification announcement provides relaxed notice provisions for applications pending prior to November 1. “This update significantly softens what would have been an onerous burden for many applicants to identify ‘related’ applications in their portfolio,” Teja says. That softening is particularly important for applicants with large patent portfolios, he adds, since in many cases compliance would have required a massive research effort into hundreds of potentially related applications. For the full text of the USPTO memo, click here. Also see: IP Frontline

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