USPTO Requests Comments Regarding Proposed Changes to Restriction Practice

   By Sarah Fendrick --

The U.S. Patent and Trademark Office announced in a notice published in the Federal Register (75 Fed. Reg. 33584) that it is considering changes to restriction practice aimed at improving the quality and consistency of restriction requirements made by Office personnel.  The USPTO has begun to solicit public comment regarding these potential changes.  In particular, the Office is seeking comments on what should be included in an Office action that requires restriction, methods to expedite the process of traversing or requesting reconsideration of a restriction requirement, the treatment of Markush claims, rejoinder of non-elected claims, and other areas that could be improved upon with respect to current restriction practice.

The first issue for which comments are being sought is what should be included in an Office action that sets forth a restriction requirement.  Currently, the M.P.E.P. requires that inventions must be independent or distinct as claimed and that there must be a serious burden on the examiner in order to require a restriction.  To clarify the requirements for a restriction, the Office is considering that a restriction requirement must always articulate reasons why the inventions are independent and distinct and why there would be a serious burden on the examiner.  In addition, the Office is considering a change to the serious burden prong of a restriction requirement.  In particular, the Office is considering whether to specify that a serious burden would be present when the prior art applicable to one invention would not be applicable to another invention.  Further changes include revision of the M.P.E.P to specify that a serious burden on the examiner encompasses search burden and/or examination burden.  The examination burden encompasses non-prior art issues such as a § 112, first paragraph, issue.

The second area where the Office is seeking comments is the effectiveness of traversing or requesting reconsideration of a restriction requirement.  The public has expressed dissatisfaction with the process of requesting reconsideration or traversing a restriction, and now the Office is inviting the public to comment on better methods to improve accurate, timely, and cost effective review.

The third topic for which the Office is seeking comment regards restriction between related product inventions or related process inventions.  Currently, there is no M.P.E.P. section that addresses this topic and the Office is considering adding a section that would address restriction between related product inventions and related process inventions.  The new section would specify that there must be two-way distinctness and a serious burden for a restriction requirement to be issued.

The fourth area of potential change is the revision of Markush practice.  The Office is considering a number of changes with respect to this practice.  First, if the examiner determines that the elected species is allowable, the Office is considering specifying that the examination of the Markush-type claim will be extended to the extent necessary to determine the patentability of the claim.  Also under consideration are situations where restriction may be proper between a subcombination and a combination when a subcombination sets forth a Markush grouping of alternatives.

The fifth area of interest is how the Office could improve rejoinder practice.  The Office is considering changes to the rejoinder practice that would facilitate more uniform treatment of claims directed to non-elected subject matter following allowance of elected claims.  In particular, the Office is considering whether to redefine rejoinder as:

[T]he practice of withdrawing a restriction requirement as between some or all groupings of claims and reinstating certain claims previously withdrawn from consideration that occurs when the following conditions are met:  (1) All claims to the elected invention are allowable; and (2) it is readily apparent that all claims to one or more nonelected inventions are allowable for the same reasons that the elected claims are allowable.

In addition, the Office is considering whether examiners should be instructed to rejoin nonelected claims when the elected claims are found to be allowable and withdraw the restriction requirement.  

Finally, the Office is seeking comment on any areas that are not directly addressed in the notice, but which would improve restriction practice.

Comments must be received by August 13, 2010 and can be submitted to electronically to [email protected] or by regular mail addressed to Mail Stop Comments -- Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450 and marked to the attention of Linda S. Therkorn.

Comments

[Always Restricted]

I am not an expert on this, but I have listened to several of the most recent BCP talks on restriction practice and it seems like there are some major issues that must be addressed first: 1) the PTO's stance that rules must be "technology neutral"; 2) the PTO's unwillingness to provide sufficient specific examples of what is and isn't appropriate (in the MPEP) and 3) making petitions public. The BCP talks (and the MPEP, and everything else put forth as "guidance") ends up being absolutely unhelpful gobbledegook about different terms for categories that should and should not be restricted, but there is almost no specific guidance on whether a particular restriction is appropriate. This needs to be fixed before there can be a meaningful discussion about policy. And the Office hides the ball by continuing to maintain these petitions in secret and then dismissing individual complaints as "anecdotal."

[6]

"The third topic for which the Office is seeking comment regards restriction between related product inventions or related process inventions. Currently, there is no M.P.E.P. section that addresses this topic and the Office is considering adding a section that would address restriction between related product inventions and related process inventions. The new section would specify that there must be two-way distinctness and a serious burden for a restriction requirement to be issued."

I did always wonder why we didn't have one of those because claims can dice up one big process into 4 different parts or so and they are all, for all intents and purposes, independent and distinct inventions as they have been claimed even though they are usable together in one big process.

But, they explained to me how the office's position was on this and I figured ok.

However, if they require "mutual exclusivity" then they need to be clear that using "comprising" in either or both of the claims at issue doesn't negate the mutual exclusivity just as in species restrictions it currently does not. This is a difficult issue to all the way comprehend and wrap your mind around, but it is slightly unfair in terms of how much burden they can heap upon the examiner while simultaneously getting all these ind's allowed to blatantly independent and distinct claims. While I do understand why they never made such a rule before, I can see them implementing it.

[Skeptical]

Would that be a substantive rule?