About 18 months ago, the U.S. Patent and Trademark Office announced new rules that would dramatically change the way patents are prosecuted.  

Final Rule 78 would limit the number of continuation applications that could be filed to two unless the patent applicant can show justification for an additional continuation application. 

Final Rule 114 would limit the number of Requests for Continued Examination to 1 per family. 

Final Rule 75 limits the number of independent claims to 5 or the total number of claims to 25.  

Final Rule 265 allows an Applicant to exceed the 5/25 rule if he or she submits an Examination Support Document (ESD).  Filing an ESD requires the applicant to "conduct a broad search of patents, patent applications, and literature, and provide, among other things, a ‘detailed explanation’ of ‘how each of the independent claims is patentable over the cited references.’"

Patent attorneys were overwhelmingly opposed to the new rules.  Fortunately, Judge James C. Cacheris of the United States District Court for the Eastern District of Virginia found the rules exceeded the authority of the U.S. Patent and Trademark Office and enjoined application of the rules the day before they were to take effect in November of 2007.

Unfortunately, the Court of Appeals for the Federal Circuit, in a 2-1 decision, has upheld three of the rules.  While the Court unanimously held that the U.S.P.T.O. exceeded its authority in limiting the number of continuation applications that could be filed, two of the three judges upheld the limitations on Requests for Continued Examination and the limitation of 5 independent claims and 25 claims total.

The new rules will substantially increase the costs of many patent applications - both in time and money.  Under the old rules, if a patentee received relevant prior art after paying an Issue Fee, the applicant could file an RCE to get prompt consideration of the claims in light of the new prior art.   Where this will become very problematic is where a piece of prior art is relevant to several applicants in the same family.  An applicant will get only one RCE, which now require use of continuation applications which can substantially delay the issuance of a patent.

Under the new 5/25 rule, if an application has 5 or more independent claims or 25 claims total, an examination support document may be required.  The odd thing is that early comments on the rules suggested that this would apply at any point during a case.  Thus, if an examiner rejected two independent claims, but indicated three dependent claims to be allowable on each, converting the allowable dependent claims into independent claims would trigger the requirement for an EDS.  This an odd result, as they Examiner has had to do no additional work.

If you have an application pending, you should promptly contact your patent attorney and discuss how the Federal Circuit's opinion will affect your application.  In the meantime, you might want to hope, pray, etc., that the Federal Circuit will reconsider the decision with an en banc hearing.