Effective November 1, 2007, and applicable to pending applications in various ways, there are some major changes in the number of claims permitted in an application, and in the number of continuations permitted. A few highlights (with many details left out):

* No more than 5 independent and 25 total claims per application (5/25 rule). For applications exceeding the 5/25 rule, an examination support document (ESD) must be filed before the first office action, or the application must be amended to comply with the 5/25 rule.

* An ESD must include: a preexamination search statement, a listing of references deemed most closely related to the subject matter of each claim, an identification of claim limitations disclosed by each reference, a detailed explanation of patentability, and a showing of support under 35 USC 112 paragraph 1.

* For applications that exceed the 5/25 rule and have claims directed to more than one patently distinct invention, the applicant may submit a suggested restriction requirement (SRR) and elect an invention complying with the 5/25 rule before a first office action or restriction requirement.

* The USPTO will give notice to applicants whose applications exceed the 5/25 rule.

* The new claim rules are in effect for all pending applications for which an office action has not been received before November 1, 2007.

* An application or chain of continuation applications may have only two continuation applications and one request for continued examination (RCE). More than this number of continuations or RCEs must include a petition and showing.

* Divisional applications to non-elected inventions may be filed only if the USPTO issues a restriction requirement.

* The applicant must identify the claims in a continuation-in-part application that are supported by the prior-filed application.

* Applicants may file “one more” continuing application after August 21, 2007, regardless of the number of continuing applications filed before November 1, 2007.

* Applicants must identify other commonly owned pending applications or patents that have an inventor in common, and a claimed filing or priority date within two months of the claimed filing or priority date of the application.

* Applicants must file a terminal disclaimer or explain how the applications (or application and patent) contain only patentably distinct claims if the applications also have the same claimed filing or priority date and contain substantial overlapping disclosure.

* Applicants may be required to put all patentably indistinct claims in a single application unless there is good reason for multiple co-pending applications having patentably indistinct claims. The single application would then be subject to the 5/25 rule.

* Applicants may request a refund of any excess claims fees paid on or after December 8, 2004 for a claim if the amendment canceling the claim is filed before an examination on the merits has been made of the application.

Links: USPTO Claims and Continuation Practice page, Federal Register - Final Rule (72 Fed. Reg. 46716 - 21Aug2007), Claims and Continuations Final Rule powerpoint slides.