Posts Tagged: "requests for continued examination"

The USPTO recently revised Manual of Patent Examination Procedure (MPEP) Section 706.07(b) to retroactively impose a first action final rejection (FAFR) policy that significantly reduces patent applicants’ options (MPEP, E9R10.2019. Fed. Reg. Vol. 85, No. 133 page 41,571). In Part 1 of this two-part series, we analyzed the final agency decision provided by the USPTO as basis for the FAFR policy change. Here, in Part II, we analyze petition decisions relating to FAFRs made on amended claims filed in continuing applications. We discovered, when determining the propriety of a FAFR, the USPTO has been comparing whether claims are drawn to same invention using two separate legal standards: identical scope or patentably indistinct. The majority of the patent corps apply the 1969 legal standard which limits FAFR to claims of identical scope as previously examined. The results of our analysis indicated the new patentably indistinct standard authorizing FAFR on substantially amended claims originated in one Technology Center (TC), was upheld by the FA Decision (defined below), and then adopted by another TC in 2018. Codifying two alternative FAFR standards in the June 2020 MPEP permits all patent examiners to arbitrarily impose FAFRs on substantively amended claims, if they so wish.