By: Mel R. Quintos and Darren R. Crew
The USPTO has instituted rule changes pertaining to the examination of claims. The new rules were published on August 21, 2007, and have an effective date of November 1, 2007. A summary of the new rules is shown below.
- The new rules apply to which applications?
- Applications filed on or after November 1, 2007.
- Applications entering the national stage on or after November 1, 2007.
- Applications in which a First Office Action on the Merits (FAOM) was not mailed before November 1, 2007.
- What is the new 5/25 claim threshold?
- Applicant may present up to five (5) independent claims or twenty-five (25) total claims in an application, without an Examination Support Document (ESD). This is the 5/25 claim threshold.
- Applicant may present more than 5 independent claims or more than 25 total claims, if the applicant files an ESD before the FAOM.
- The 5/25 claim threshold does not count or include withdrawn claims.
- The 5/25 claim threshold does count all of the claims present in other copending applications having a patentably indistinct claim, but not the claims in issued patents.