Practitioners Beware: Hidden MPEP Rule Change May Cause Significant Impacts to After Final PracticeSeptember 25, 2020

With the most recent revision to the Manual of Patent Examining Procedure (MPEP) in June 2020, practitioners have noticed a subtle, but potentially significant modification to one of the MPEP sections. The relevant section pertains to a change to the first-action final rejection (FAFR) practice under 706.07(b), ultimately broadening the criteria to issue a FAFR to continuation and request for continued examination (RCE) applications.

As the United States Patent and Trademark Office (USPTO) has discontinued the practice of providing marked-up revisions of the MPEP, specific changes to the sections can be easily overlooked. With respect to § 706.07(b), the changes indicate that the claims of a continuation application (or substitute for an earlier application) or an RCE, may be finally rejected where the claims are either identical to or patentably indistinct from the claims in the earlier application (i.e. restriction under 37 CFR 1.145 would not have been proper if the new or amended claims had been entered in the earlier application).

By broadening the criteria in § 706.07(b) from “same invention” to also include “patentably indistinct,” the USPTO appears to permit examiners to make a FAFR in continuing and RCE applications even when there is much more than a de minimis amendment to the claims. As further defined in § 804 of the MPEP, the term “same invention” has been defined for FAFR purposes in the same context of double patenting, i.e. identical subject matter being claimed twice, or in other words, identical scope. Therefore, in the context of the majority of continuations and RCEs, historically, claims which have been amended to contain broader or narrower scope than those previously examined would be entitled to a non-final office action (or allowance) as the claims would not have identical scope.

On the other hand, while § 706.07(b) does not explicitly define “patentably indistinct,” the section alludes to 37 C.F.R. 1.145 defining claims that would be considered a different invention, i.e. distinct from and independent of the invention previously claimed. Therefore, under the June 2020 revised rules, examiner’s would have the discretion to issue a final rejection when an applicant files an RCE or continuation with no claim amendments, or with amended claims that are not distinct from and independent of the claims previously examined.

While it is unclear at this time how expansive of an approach Examiners will take in light of the modifications to section 706.07(b), the modified language should cause some concern to applicants and practitioners. Not only do the modifications appear to be retroactively applicable to continuation and RCE applications—even those filed with substantive claim amendments prior to June 2020—the modification further conflicts with 35 U.S.C. § 132. This section requires that should “applicant persist[s] in his claim for a patent, with or without amendment, the application shall be re-examined.” (emphasis added). It appears at this time, in order to avoid a FAFR in a continuation or RCE, applicants must file an after final submission and receive confirmation from the USPTO/examiner that (A) new issues were raised that require further consideration and/or search, or (B) the issue of new matter was raised.

Due to the complex nature of after-final procedures, should you have any questions regarding the first-action final rejection practice under the revised June 2020 MPEP rules, please consult an MVS attorney.

Tina G. Yin-Sowatzke, Pharm.D. is an Associate Attorney in the MVS Biotechnology & Chemical Practice Groups. To learn more, visit our MVS website, or contact Tina directly via email.

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