RECENT DEVELOPMENTS IN THE USPTO FOR US APPLICANTS
- USING PLACEHOLDER CLAIMS IS NOT RECOMMENDED AND MAY GIVE RISE TO UNINTENDED EXTRA COSTS
“Placeholder claims” are temporary claims used in continuation applications to keep the new application legally connected to the original one and to preserve the same priority date before the parent application officially becomes a patent. “Placeholder claims” are, for example, a single broad, and typically unpatentable, claim, used to buy time, until replaced by a refined claim set, typically filed in the continuation application as a preliminary amendment.
The use of placeholder claims has increased as the result of the United States Patent and Trademark Office (USPTO) issuing patents electronically, cutting issue time to anywhere from two to three weeks after payment of the issue fee.
This practice has become riskier than it was. In many cases, the USPTO will issue a First-Action Final Rejection for applications with only placeholder claims. Further prosecution will likely require filing a Request for Continued Examination (RCE), including a refined claim set, which is suitable for a substantive first examination, known as a First Office Action on the Merits (FOAM), which will not result in a First Action Final Rejection. Filing the RCE comes with its own additional costs.
Simultaneously, the time to FOAM of the continuation application has shortened, as a result of internal USPTO docketing policies and procedures. New continuation applications are now auto-docketed almost immediately, and Supervisory Patent Examiners are requiring their examiners to issue first actions within weeks of docketing. The previous informal practice in many USPTO Examination Units—quietly “holding” a newly filed continuation for a month or two so applicants could file a preliminary amendment with real claims—is effectively gone.
As a result of the potential short time to examination, applications containing only the placeholder claim, including broader claims that are clearly unpatentable, may receive a First Action Final Office Action. This practice is fully supported by longstanding US Examination rules and procedures, which has always permitted a first office action to be made final when claims are either identical to previously examined/rejected claims or are manifestly unpatentable.
To avoid the chances of receiving a First Action Final Office Action from the USPTO, the following practices for US continuation patent applications are suggested:
- File a claim set of a different scope than the parent patent application, or the narrowest allowed claim rewritten in independent form, with a continuation application by no later than payment of the issue fee. This will also guarantee continuity (continuation application status with priority in the USPTO); and
- If placeholder claims must be filed to maintain continuity, a preliminary amendment with the aforementioned refined claim set should be filed for the continuation application, within two weeks after filing the continuation application.
However, there is good news here, as filing the continuation with a refined claim set allows substantive examination to being early, reducing pendency.
- CONTINUING APPLICATION FEES ARE REQURED IN SOME CASES TO MAINTAIN A PRIORITY CLAIM
As of January 19, 2025, applicants are required to pay a Continuing Application Fee for continuing applications – Divisionals, Continuations, Continuations in Part, which are filed between six and nine years after the Earliest Benefit Date (EDB) ($2700 for large entities, $1080 for small entities) and more than nine years after the EBD $4000 for large entities and $1600 for small entities). The EBD is earliest filing date of the earliest priority application from which the continuing application claims priority
