IPO Comments on Proposed Changes to Restriction Practice

By Donald Zuhn --

In June, the U.S. Patent and Trademark Office published a notice in the Federal Register (75 Fed. Reg. 33584) seeking comments regarding a number of changes to current restriction practice that the Office is considering implementing (see "USPTO Requests Comments Regarding Proposed Changes to Restriction Practice").  Last week, the Intellectual Property Owners Association (IPO) responded to the Office's call for comments with a letter from IPO President Douglas Norman outlining the organization's position on the issue.

Rather than specifically responding to the half dozen questions posed in the USPTO notice, the IPO notes that it "has consistently supported the introduction of the Unity of Invention Standard into USPTO practices" (citing a letter the IPO sent to then Director James Rogan more than seven years ago), and then recommends that the Office "consider a broad change to Unity of Invention practice similar to that utilized in the Patent Cooperation Treaty (PCT)."

The Unity of Invention standard is set out in PCT Rule 13.  In particular, Rule 13.1 requires that an international application "relate to one invention only or to a group of inventions so linked as to form a single general inventive concept ('requirement of unity of invention')," and Rule 13.2 states that:

[T]he requirement of unity of invention referred to in Rule 13.1 shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features.  The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.

The IPO letter provides five reasons for changing to a Unity of Invention standard:  improved efficiency through the use of a single standard, reduced application filings, benefits to applicants and third parties, enhanced opportunities for work sharing, and further harmonization of U.S. patent practice.  Noting that U.S. examiners already use the Unity of Invention standard when examining national stage applications, the IPO observes that "U.S. examiners should already be familiar with Unity of Invention practice."  The letter asserts that "[s]hifting continuously from Restriction Practice on certain cases to the Unity of Invention Standard on others is an unnecessary complication for examiners," and that such shifting "can lead to a blurring of the distinction between the two standards and application of the incorrect standard."

The IPO also contends that by applying a Unity of Invention standard, the Office could decrease the application backlog by reducing divisional filings, which the IPO suggests are essentially "rework" applications on par with Requests for Continued Examination.  The letter states that "[b]y rolling together related applications falling within a single inventive concept, the total number of examiner hours spent per inventive concept would be reduced."  The letter also states that under current restriction practice, "rejections based upon 'improper Markush Groups' lead to splintering the invention into many separate applications" which is burdensome to both applicants and the Office.  The IPO contends that the Unity of Invention standard would solve this problem by "simplifying prosecution for applicants seeking claims with Markush groups and/or nucleic acid or amino acid sequences."

According to the letter, application of a Unity of Invention standard would also benefit applicants and third parties.  In particular, the IPO believes that applicants would benefit because they could more readily keep claims relating to the same commercial embodiment in one application, and third parties would benefit because it would be "easier to address method and device claims relating to a single product in a single patent."

In addition to permitting U.S. examiners to apply only one standard, moving to a Unity of Invention standard would avoid duplication of work and reduce application backlogs worldwide.  The letter notes that in the USPTO's Patent Prosecution Highway (PPH) programs, for example, "studies show that most of the rejections issued by U.S. examiners after receiving allowed claims from foreign patent offices relate to the U.S. application of the Restriction Practice."

Finally, the IPO declares that "[f]or the USPTO to adopt a common Unity of Invention standard similar to that utilized by virtually all of the other patent offices worldwide would be a bold step in jumpstarting harmonization."

In addition to the above rationales, the letter provides a few considerations regarding a possible move to a Unity of Invention standard.  With regard to statutory implications, the letter contends that "the USPTO could change to a Unity of Invention standard along the lines of the PCT without any statutory modification needed," because 35 U.S.C. § 121 provides no guidance as to what constitutes "independent and distinct inventions," which may be restricted under the statute.  In addition, the IPO notes that "[t]he issuance of U.S. patents from National Phase applications to which Unity of Invention is already applied illustrates that the Unity of Invention standard can fit within the current statutory framework."  The letter acknowledges that some accommodation may be needed from the Treaty, as "divisional applications are not permitted under the PCT and, accordingly, when a separate invention is identified under the PCT Unity of Invention standard, the applicant is given a choice to maintain those claims in a single application and pay for a separate search or limit the application to only search one of these inventions."  The letter notes, however, that the EPO, JPO, and KIPO all apply the Unity of Invention standard and permit divisional filings

Comments

[6]

In other words the IPO submitted a response stating it no uncertain terms that they are [redacted by moderator].

You could have just summed all that up in one sentence for me Don.

[Mike]

I may be biased, but I'd rather go with the unity of invention standard. Simply paying an additional fee would allow all my claims to be examined at once. The single examination would drop prosecution costs tremendously.