An Analysis of the New Rules: 37 C.F.R. § 1.142: Suggested Restriction Requirements

    By Donald Zuhn --

On August 21, 2007, the U.S. Patent and Trademark Office published new rules concerning continuation and claims practice that will undoubtedly have a profound effect on the way patent attorneys and agents prosecute applications before the Patent Office.  In view of the 128-page Federal Register notice regarding the new rules, the Patent Office's nearly two hour webcast on August 23, 2007 (and the webcast's accompanying 109-page presentation), and the Office's 45-page list of Frequently Asked Questions, Patent Docs believes it may be helpful to examine the rules piece-by-piece in an attempt to identify areas where patent attorneys and agents will need to modify their patent prosecution practice.

37 C.F.R. § 1.142:

In view of the "2 + 1" rule, which allows an applicant to file only two continuation or continuation-in-part applications and only one RCE per application family without any justification (see our earlier reports on 37 C.F.R. §§ 1.78(d)(1) and 1.114), the new continuation and claims rules will almost certainly leave patent practitioners seeking out that which they previously disdained: restriction requirements.  The reason for this change of heart?  Under the new rules, an applicant is allowed to file a divisional application for each restricted invention after receiving a restriction requirement, and each divisional application forms the basis of a new application family entitling an applicant to file an additional two continuations and an RCE (under the new rules, an applicant cannot file a continuation-in-part off of a divisional).

Under newly added 37 C.F.R. § 1.142(c), the Patent Office has provided a mechanism by which applicants can now actively seek a restriction requirement: the suggested restriction requirement (SRR).  In particular, this provision of the rules allows an applicant to file a suggested requirement for restriction if two or more independent and distinct inventions are claimed in a single application.  Under Rule 142(c), an SRR must be filed before the earlier of the first Office action on the merits or an Office action that contains a restriction requirement or invitation to comply with the unity of invention requirement.  In addition, the SRR must be accompanied by an election without traverse of an invention to which there are no more than five independent claims and no more than twenty-five total claims (i.e., to comply with the 5/25 rule; see our earlier report on 37 C.F.R. § 1.75(b)), and must identify the claims to the elected invention.

If the examiner accepts an applicant's SRR, then the claims to the nonelected invention, if not canceled by the applicant, will be withdrawn from further consideration by the examiner.  If the examiner refuses the applicant's SRR, the applicant will be notified in an Office action, which may contain a notice requiring the applicant to file an examination support document (ESD) or reduce the number of claims to satisfy the 5/25 rule, as well as the examiner's own restriction requirement.  If the examiner makes his or her own restriction requirement, the applicant will be notified of the restriction requirement and given a two-month period - that is not extendable under § 1.136(a) - within which to make an election consistent with the examiner's restriction requirement in order to avoid abandonment of the application.

Because of changes to Rule 142(a), applicants should not discount the possibility that the Patent Office may find that the examination of multiple inventions in a single application no longer presents the Office with undue hardship (especially when the alternatives for the applicant are filing an ESD or canceling claims).  In particular, Rule 142(a) has been amended to read:

If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action may require the applicant in the reply to that action to elect an invention to which the claims will be restricted.

(emphasis added).  The prior version of Rule 142(a) stated that the "examiner in an Office action will require" (emphasis added).  According to the Patent Office, the change to Rule 142(a) finds support in 35 U.S.C. § 121, which "authorizes, but does not compel, the Director to require that an application containing two or more independent and distinct inventions be restricted to one of the inventions," and is "consisten[t] with current Office practice under which a requirement that an application containing claims to two or more independent and distinct inventions be restricted to a single invention is discretionary" (see final rule notice).

Citing M.P.E.P. § 803, the Patent Office also notes in the final rule notice that "[a]n application containing claims to two or more independent and distinct inventions typically is not restricted to a single invention if the search and examination of all of the claims in the application can be made without serious burden."  Thus, while it may have been difficult to convince the Patent Office to examine two or more inventions in a single application under the old rules, cynical patent practitioners can be forgiven for believing that such a task may have just gotten easier under the new rules.  With respect to appealing an examiner's decision not to restrict, the final rule notice states that:

[a] decision not to restrict an application to a single invention is not an action or requirement within the meaning of § 1.181(a).  Thus, any review of an examiner's requirement for restriction that differs from a suggested restriction requirement will only concern the appropriateness of the examiner's restriction requirement and will not address the appropriateness of the applicant's suggested restriction requirement or compare the examiner's restriction requirement and the suggested restriction requirement.

The changes to 37 C.F.R. § 1.142(c) are applicable to any nonprovisional application that is filed (or enters national stage) on or after November 1, 2007, and any pending nonprovisional application in which a first Office action on the merits was not mailed before November 1, 2007.  Unfortunately, patent practitioners may have to wait until well into 2008 to see how the Patent Office actually applies the "slight" change to Rule 142(a) and the added provisions of Rule 142(c).

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.114: RCE Practice," September 5, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.75(b): 5/25 Limit on Claims," September 4, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1): Claims for Benefit of Prior-Filed Applications," September 3, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents," August 27, 2007

For additional information on this and other related topics, please see:

• "Inventor Sues PTO to Prevent New Continuation Rules from Taking Effect," August 30, 2007
• "Patent Office Provides Recorded Web-Based Discussion of New Rules," August 30, 2007
• "New PTO Continuation Rules: Unfair to Biotech?" August 29, 2007
• "Proposed Agenda for September 12, 2007 Biotechnology/ Chemical/Pharmaceutical Art Group Meeting," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part II," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part I," August 23, 2007
• "New Continuation and Claims Rules Published," August 22, 2007
• "More on M.P.E.P. § 710.06," August 20, 2007
• "Patent Office to Hold Webcast on New Claim and Continuation Rules on August 23, 2007," August 20, 2007
• "Patent Office Announces that New Continuation and Claims Rules Will Be Published . . . Tomorrow," August 20, 2007
• "Procuring Patent Protection from the Present USPTO," August 15, 2007
• "New Continuation and Claims Rules to Be Published in Late Summer," July 25, 2007
• "They Just Don't Get It - 'Patent Reform' at the USPTO," April 11, 2007
• "Patent Applicants Beware: The Rules Are Changing (Again)" Part 1 and Part 2, November 6, 2006

Changes to Rule 142:

(a) If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action may require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action.

* * *

(c) If two or more independent and distinct inventions are claimed in a single application, the applicant may file a suggested requirement for restriction under this paragraph. Any suggested requirement for restriction must be filed prior to the earlier of the first Office action on the merits or an Office action that contains a requirement to comply with the requirement of unity of invention under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 in the application. Any suggested requirement for restriction must also be accompanied by an election without traverse of an invention to which there are no more than five independent claims and no more than twenty-five total claims, and must identify the claims to the elected invention. If the suggested requirement for restriction is accepted, the applicant will be notified in an Office action that will contain a requirement for restriction under paragraph (a) of this section. Any claim to the non-elected invention or inventions, if not canceled, is by the election withdrawn from further consideration.

Comments

[John]

In light of all the uncertainty surrounding whether you would obtain a stated SRR (which brings up all kinds of interesting questions as to what you think about the limitations of your claims) or whether an EDS would even be accepted, I dont understand why you wouldnt just file multiple applications (on the same day of course), if you beleive there is any chance you might have to go through all the above.

(newbie)

[Donald Zuhn]

John:

Under the new rules, it would probably not be wise to submit multiple applications having the same specification, or at least very similar specifications, on the same day since the effects of Rule 78(f)(2) would kick in (we covered this rule in our report on August 27th). Briefly, that provision of the new rules creates a rebuttable presumption that two applications contain patentably indistinct claims. The effect of such presumption is that each application is considered to (1) be part of the same application family (and thus, fall under the 2 + 1 rule), and (2) contain a number of claims equal to its own claims plus the claims of the other application (and thus, fall under the 5/25 rule). If the applications were divisionals, however, each application would be entitled to its own two continuations and RCE, and to its own 25 claims. Thus, an applicant should usually try to secure a restriction requirement in order to receive the Patent Office's "blessing" that two claim sets are patentably distinct.

Thank you for reading Patent Docs, and for submitting your comment.

Don Zuhn

[Bart van Wezenbeek]

As a foreign practitioner in the biotech field, I have always thought the current restriction policy of the USPTO Examiners to be unduly harsh to the applicants. As you know, biotech applications very often contain several independent claims (e.g. 1. a DNA molecule, 2. a construct comprising 1, 3. a vector comprising 2, 4. a host cell comprising 3, 5. a protein encoded by the DNA of 1, 6. a method for transforming a host cell, 7. a method for giving a cell a specific characteristic, and so on). Under the current Rules an Examiner would recognise several separate inventions in such a set of claims and protesting against the restriction requirement very often appeared a waste of time.
I now fear that this new Rule change will reverse the position of the Examiners and that they will refuse to issue Restriction requirements (or may be are instructed by PTO management to refuse these). Then the 5/25 rule will apply and the applicant will then loose important claims. Filing two separate applications to start with also does not seem an option, as illustrated in the previous comment.

I wonder if the US patent attorneys also fear this scenario, and if so, whether anyone has a solution how to be able to maintain all the various independent claims?

[mike]

"The effect of such presumption is that each application is considered to (1) be part of the same application family"

Can anyone cite support for the above statement? Although I have heard the above statement from several practitioners, when I read the definition of a patent family, it doesn't refer to Rule 78(f)(2). Neither does rule 78(f)(2) refer to "patent family" The consequence listed under rule 78(f)(2) is that the Office Action may cancel patently indistinct claims. I expect to receive an office actions removing claims that from the application.

While you might think the basic effect is the same, e.g. you lose some claims, there is a difference. If they the two applications are still seperate patent families, which I think they are, you can add back new claims up to the 5/25 limit in each application. Of course, if those new claims are not patentably distinct over the other application, the office may just cancel them again.

[Donald Zuhn]

Mike:

The new rules notice defines an "application family" as "the initial application and its continuation or continuation-in-part applications." Therefore, it is true that multiple applications filed on the same day, which are not continuations (or CIPs) of some earlier filed application, are not members of the same application family as defined under the new rules. However, the Patent Office has designed the new rules such that they prevent this very type of "work around" to the 2+1 rule - at least for applications containing patentably indistinct claims. I should have more properly stated that Rules 78(f)(2) and 75(b)(4) work together to make the strategy proposed by John a waste of filing fees for applications having patentably indistinct claims. For multiple applications containing patentably distinct claims (i.e., applications that would be proper divisionals if filed after a SRR is accepted or an RR is issued), John's strategy might be acceptable, but it is not clear to me whether the Patent Office will treat an argument made in an SRR differently than it would treat the same argument made in a statement under 78(f)(2).

Thank you for reading Patent Docs and for giving me to a chance to clarify my previous response.

Don

[JT]

I suggest removing the USPTO logo from your blog page, since it caused my confusion that this bog was sponsored by USPTO.

[Donald Zuhn]

JT:

We use graphics to help our readers quickly identify the subject matter of a given post, and a number of readers have commented favorably about our use of graphic elements. In addition, we are not the only blog that uses USPTO-related graphic elements (one need only perform a Google images search for "USPTO seal" to see that such is the case). While we intend to continue incorporating graphics into our posts, we thank you for your suggestion.

Don