"By permitting first action final rejections when amended claims are not 'patentably indistinct', the new policy requires a comparison between the pending claims and the proposed amended claims."
"The USPTO has no authority under the statute to create such phantom prior art, which complicates the patentability assessment of proposed amended claims."
"The Section 706.07(b) policy change appears retroactively applicable to requests for continued examination and continuation applications, even those filed with substantive claim amendments prior to the June 2020 revision."
The USPTO revised MPEP Section 706.07(b) to implement a first action final rejection (FAFR) policy that restricts patent applicants' options. This policy requires a comparison between pending claims and proposed amended claims, assessing their patentability while considering pending claims as potential prior art. The change allows examiners to impose FAFRs on substantively amended claims in continuing applications, retroactively affecting requests for continued examination and continuation applications. This practice contradicts the requirements of 35 U.S.C. Section 132 regarding applicant rights.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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