An Analysis of the New Rules: 37 C.F.R. § 1.145: "Provoking" a Restriction Requirement

    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 113-page presentation), and the Office's 63-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. § 1.145:

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, applicants will likely be looking for ways to file divisional applications, each of which forms the basis of a new application family.  However, as the new rules make clear, a divisional application is "a continuing application . . . that discloses and claims only an invention or inventions that were disclosed and claimed in a prior-filed application, but were subject to . . . a requirement for restriction under 35 U.S.C. 121 in the prior-filed application."  Section 121, in turn, states that "[i]f two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions."  Therefore, under the new rules, a proper divisional application can only be filed after a restriction requirement has been issued.

A divisional application filed in the absence of a restriction requirement - which the Patent Office refers to as a "voluntary" divisional application - is not really a divisional application at all, but rather, is a continuation application.  That is, unless an applicant has already used his or her allotment of continuations, in which case the continuation is merely a stand-alone application, lacking the benefit of its prior-filed predecessor.

In addition, as we have discussed previously (see "37 C.F.R. § 1.142: Suggested Restriction Requirements"), an applicant cannot file a suggested restriction requirement after a first Office action on the merits or an Office action that contains a restriction requirement has been mailed.  So what does an applicant do when he or she has disclosed, but not claimed, a distinct and independent invention, and has already received an Office action on the merits or an Office action containing a restriction requirement?

A number of commentators have suggested that an applicant faced with such a dilemma could provoke a restriction requirement by filing an amendment adding claims directed to the independent and distinct invention.  It has also been suggested that the Examiner's response to such an amendment will be to issue a restriction requirement.  However, an analysis of the new rules (and the latest version of the M.P.E.P.) does not indicate that such a strategy would necessarily produce the desired results.  Instead, it's possible that an Examiner would request that the applicant cancel the added claims as being drawn to a non-elected invention (particularly if an Office action containing a restriction requirement had been previously issued).

The relevant new rule, Rule 145, states that when an applicant presents claims to a distinct and independent invention in an application that has already received an Office action on the merits, the applicant may be required to restrict the claims to the invention previously claimed (in the new version of Rule 145, the phrase "the applicant may be required" replaces the phrase "the applicant will be required").  Unfortunately, one cannot definitely conclude that the phrase "restrict the claims to the invention previously claimed" means that the Examiner will issue a restriction requirement.

The prior version of Rule 145 is discussed in M.P.E.P. § 821.03.  While this section simply begins by noting that "[c]laims added by amendment . . . to an invention other than previously claimed, should be treated as indicated by 37 CFR 1.145," it provides the following form paragraph:

¶ 8.04 Election by Original Presentation
Newly submitted claim [1] directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: [2]
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits.  Accordingly, claim [3] withdrawn from consideration as being directed to a non-elected invention.  See 37 CFR 1.142(b) and MPEP § 821.03.

Does the first part of form paragraph 8.04 constitute a restriction requirement?  Can an applicant who receives an Office action containing such a statement file a proper divisional application directed to the distinct and independent claims?  Unfortunately, applicants may have to wait until well into 2008 for answers to these questions.  In the meantime, applicants might be wise to submit claims (at least representative claims) to every distinct and independent invention disclosed in an application, file suggested restriction requirements where possible, and perhaps utilize continuations to introduce claims to distinct and independent inventions (along with claims to patentably indistinct subject matter), thereby avoiding Rule 145.

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1)(i) & (vi): PCT Practice," September 23, 2007
• "An Analysis of the New Rules: USPTO Releases ESD Guidelines," September 17, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.265: Examination Support Document," September 13, 2007
• "An Analysis of the New Rules: Revisions to First Action and Second Action Final Practice," September 11, 2007
• "An Analysis of the New Rules: 37 C.F.R. §§ 1.78(d)(1) and 1.114: Streamlined Examination," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.117: Refund Due to Cancellation of Claims," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.142: Suggested Restriction Requirements," September 6, 2007
• "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:

• "Breaking A Very Long Silence," October 1, 2007
• "It Ain't Necessarily So," September 28, 2007
• "Commissioner Doll Addresses ACI Biotech Patents Conference," September 26, 2007
• "Rules Challenger Amends Complaint and Withdraws PI Motion," September 11, 2007
• "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 145:

If, after an Office action on the merits on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant may be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144.

Comments

[NIPRA anonymous]

Well, I certainly wouldn't mean to imply that the new Rules promote "certainty" in any sense (and the form paragraphs will likely change), but old 1.142(b) which has not been amended and new 1.142(c) are perhaps helpful here:

"Claims to the invention or inventions not elected... are nevertheless withdrawn from further consideration by the examiner by the election."

"Any claim to the non-elected invention ... is by the election withdrawn from further consideration."

The emphasis being "by the election" which apparently occurred at original presentation, not by any examiner's action.

[rce]

Its not true that you are restricted to one RCE per "family". Thats what the office may have intended, but thats not what the rules say. If you read 1.114 its clear that if you have two continuations in parallel (but not in series) off a first application you can file an RCE from each of those two chains even though its in the same "family". Thats probably why the modified slides recently posted don't include this example, but the original slides did.

[NIPRA anonymous]

Thank you, rce. Regarding the USPTO's changed interpretation of and possible regulatory error in, NIPRA has posted a preliminary (non-linked) web page:

http://www.nipra.org/rce114.html

Any comments/corrections would be very much appreciated.

[added claim]

"Instead, it's possible that an Examiner would request that the applicant cancel the added claims as being drawn to a non-elected invention (particularly if an Office action containing a restriction requirement had been previously issued)."

Applicant may cancel the added claims in the parent application, and then re-present the same added claims together with any or all of the other non-elected claims in one of the divisional applications filed subsequently, forcing the Examiner of the divisional application to issue a new restriction requirement therein, thereby securing the proper divisional status of the added claims. Alternatively, applicant may not need to present the desired new claims in the parent application, but simply present them in the divisional to achieve the same result.

Any comments for and against such a strategy are highly appreciated.