A preliminary injunction issued in Tafas v. Dudas, 2007 U.S. Dist. LEXIS 80474 (E.D. Va. Oct. 31, 2007), blocked the U.S. Patent and Trademark Office from implementing the Final Rules on Continuations and Claims that were set to go into effect November 1, 2007. On April 1, 2008, Judge Cacheris made the injunction permanent, and voided the rules. In her expert commentary discussing the Final Rules and the Tafas case, Laurie A. Axford writes:
Under the Final Rules regarding continuations practice, Applicants would only be allowed two continuations and one request for continued examination (RCE), absent a showing of “special circumstances” for each “independent and distinct” invention. This provision is generally regarded as giving an Applicant “four bites of the apple,” i.e., four chances to conduct further examination after receipt of a Final Office Action.
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If history repeats itself as it often does, the PTO will eventually succeed in implementing rules and/or promoting legislation that both limits the number of continuation applications that may be filed as a matter of right, and limits the number of “patentably indistinct” claims that may be filed in one (or more) applications.
Ms. Axford concludes with some practical advice in case the Final Rules eventually are implemented:
First, in-person Examiner Interviews should be conducted after receipt of the first office action in all applications. This serves to establish rapport with the Examiner and to limit issues of patentability, which may reduce the need to file successive continuation applications and prolong prosecution. Secondly, Applicants and practitioners should draft as many claims as they deem necessary to encompass all aspects of the patentable inventions described in any given specification. This comprehensive claim list can then be put in the Summary of Invention section of the patent application to provide written description support for claims in subsequent continuing applications, while leaving only the maximum number of claims in the case for initial prosecution.
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