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(259) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2010-0030]
Request for Comments on Proposed Changes to
Restriction Practice in Patent Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Request for comments.
SUMMARY: In situations in which two or more independent and distinct
inventions are claimed in a single patent application, the United
States Patent and Trademark Office (Office) is authorized by the patent
laws and implementing regulations to require the applicant to restrict
the application to one invention. The practice for requiring an
applicant to restrict an application to one invention in such
situations is known as restriction practice. The Office is considering
changes to restriction practice to improve the quality and consistency
of restriction requirements made by Office personnel.
Comment Deadline Date: Written comments must be received on or
before August 13, 2010. No public hearing will be held.
ADDRESSES: Written comments should be sent by electronic mail message
over the Internet addressed to Restriction_Comments@uspto.gov.
Comments may also be submitted by mail addressed to: Mail Stop
Comments - Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450, marked to the attention of Linda S. Therkorn. Although
comments may be submitted by mail, the Office prefers to receive
comments via the Internet.
The written comments will be available for public inspection at the
Office of the Commissioner for Patents, located in Madison East, Tenth
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available
via the Office's Internet Web site (address: http://www.uspto.gov).
Because comments will be made available for public inspection,
information that is not desired to be made public, such as an address
or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Linda S. Therkorn, Office of the
Associate Commissioner for Patent Examination Policy, directly by
telephone to (571) 272-7837, or by mail addressed to: Mail Stop
Comments - Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450.
SUPPLEMENTARY INFORMATION: The Office is authorized by the patent laws
(35 U.S.C. 121) and regulations (37 CFR 1.141 et seq.) to require an
applicant to restrict an application to one invention if two or more
independent and distinct inventions are claimed in the application.
Chapter 800 of the Manual of Patent Examining Procedure (MPEP) sets
forth the Office's practices for reviewing applications for restriction
purposes. The Office is considering revising restriction practice to
improve the quality and consistency of restriction requirements.
The Office is seeking suggestions from the public regarding
possible changes to restriction practice because this is a significant
area of concern for the Office, applicants, and the public. Thus, the
Office is soliciting comments from the public concerning several
aspects of restriction practice. First, the Office is asking for
comments on what should be included in an Office action that sets forth
a restriction requirement. Second, because unwarranted restriction
requirements can result in delays in prosecution, expenditure of excess
claim fees, and/or the need to file multiple divisional applications,
the Office is inviting suggestions from the public as to how to improve
the process for traversing or requesting reconsideration of a
restriction requirement to achieve more consistent, accurate, timely,
and cost-effective review. Third, the Office is aware that restriction
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requirements between related product inventions or related process
inventions have been problematic, and thus is inviting public comments
on the changes under consideration to clarify what is necessary in
order to restrict between such inventions. Fourth, the Office is also
considering some changes with regard to restrictions involving claims
with Markush groupings, and invites public comment on these changes as
well as any other suggestions regarding the treatment of Markush
claims. Fifth, the Office is considering changes to rejoinder practice
in an effort to simplify what claimed inventions would be eligible for
rejoinder upon the determination that all elected claims are allowable,
and invites public comments on these changes. Finally, the Office
invites comments specifically pointing out other areas in which
restriction practice could be improved.
The Office has previously recognized the need to consider changes
to restriction practice. Pursuant to the Office's 21st Century
Strategic Plan, the Office sought public comment on a number of issues
to help guide the scope and content of a study of changes that would be
needed to implement a Patent Cooperation Treaty (PCT) style "Unity of
Invention" standard in the United States. See Notice of Availability
of and Request for Comments on Green Paper Concerning Restriction
Practice, 70 FR 32761 (June 6, 2005). The public comments suggested
broadening the scope of the study beyond just a PCT-style Unity of
Invention standard in an effort to determine the best practice for
restriction. Based on the public comments, the Office identified four
options for modifying restriction practice. The Office studied the ease
of implementation and workload/pendency impacts of these four options
in an effort to achieve an appropriate balance between the priorities
of the USPTO user community and limited USPTO resources. However, after
reviewing the business case analyses, the Office determined that none
of the options would satisfactorily achieve the desired balance.
Thereafter, as part of its ongoing efforts to enhance patent
quality and reduce pendency in accordance with the 21st Century
Strategic Plan, the Office published a notice proposing to change
certain rules of practice pertaining to claims that use Markush or
other alternative language and requested public comment on the proposed
changes to the rules of practice. See Examination of Patent
Applications That Include Claims Containing Alternative Language, 72 FR
44992 (Aug. 10, 2007), 1322 Off. Gaz. Pat. Office 22 (Sept. 4, 2007).
The Office is not issuing a final rule based upon the changes proposed
in that previous rule making notice. The Office is instead publishing
this notice to seek input from the public concerning restriction
practice.
As discussed previously, the Office is considering changes to
Office practice and policy with regard to restriction requirements. The
Office is requesting public input on restriction practice. The Office
is not presently proposing any changes to the rules pertaining to
restriction practice, and this notice is not a notice of proposed rule
making.
1. What should be included in an Office action that sets forth a
restriction requirement? The MPEP currently explains that two criteria
must be met to require restriction between patentably distinct
inventions, i.e., the inventions must be independent or distinct as
claimed, and there must be a serious burden on the examiner if
restriction is not required. See MPEP § 803. The Office is
considering clarifying the MPEP to indicate that a restriction
requirement (including an election of species requirement) must always
set forth the reasons why the inventions are independent or distinct
and why there would be a serious burden in the absence of a restriction
requirement.
The Office is considering changes to the burden requirement, an
area fundamental to restriction practice. The rationales set forth in
the current MPEP to support the burden prong are based on the prior art
search (i.e., the inventions have acquired a separate status in the art
in view of their different classification; the inventions have acquired
a separate status in the art due to their recognized divergent subject
matter; and the inventions require a different field of search (for
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example, searching different classes/subclasses or electronic
resources, or employing different search queries)). See MPEP § 808.02.
The Office is considering whether to revise the MPEP to indicate that
there would be a serious burden if restriction is not required when the
prior art applicable to one invention would not likely be applicable to
another invention (e.g., because of a different field of art or different
effective filing date).
The Office is also considering whether to revise the MPEP to
specify that "a serious burden on the examiner" encompasses search
burden and/or examination burden. Typically, the burden prong has been
viewed as referring to the burden imposed by searching for patentably
distinct inventions. However, the determination of whether a claimed
invention is allowable requires both a search of the prior art and an
examination of the application to determine whether the claimed
invention meets the statutory requirements for patentability. The
burden imposed by the examination of patentably distinct inventions is,
in many cases, as serious as the burden imposed by searching for such
inventions. Therefore, the Office is considering explaining that in
addition to the rationales currently set forth in the MPEP, a serious
burden in support of a restriction requirement may be based on the
rationale that the inventions are likely to raise different non-prior art
issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. In this
situation, a serious search burden and/or examination burden may exist
where issues relevant to one invention are not relevant to the other
invention.
The MPEP currently provides for election of species practice when
an application includes a generic claim along with separate claims to
different species that fall within the scope of that generic claim and
that may be patentably distinct. See MPEP § 806.04. The Office is
considering revising the MPEP to indicate that in setting forth the
species from which an applicant is required to elect, the examiner
should group together species that are not patentably distinct from
each other, the examiner should require election of either a single
species or a single grouping of patentably indistinct species, and the
applicant should not be required to elect a specific species within a
grouping of patentably indistinct species.
2. What practice changes would result in more effective ways to
seek higher level review of restriction requirements? In various
forums, members of the public have expressed overall dissatisfaction
with the effectiveness of traversing or requesting reconsideration of
requirements for restriction. Unwarranted restriction requirements can
result in delays in prosecution, expenditure of excess claim fees, and/or
the need to file multiple divisional applications to avoid dedication of
unclaimed subject matter to the public. The Office invites suggestions
from the public as to how to improve the traversal or request for
reconsideration process within the framework of the current rules (see 37
CFR 1.143 and 1.144) to achieve more consistent, accurate, timely, and
cost-effective review.
3. How could the Office clarify requirements for restriction
between related product inventions or related process inventions where
the relationship is not specifically provided for in MPEP Chapter 800?
The Office is considering providing for a new section in the MPEP to
address restriction between related product inventions or related
process inventions not otherwise provided for in MPEP §§ 806 through
806.05(j). See, e.g., MPEP § 806.04 et seq. for restricting between
inventions in a genus/species relationship; MPEP § 806.05(c) for an
explanation of the requirements to restrict between inventions in a
combination/subcombination relationship; MPEP § 806.05(d) for restricting
between subcombinations disclosed as usable together; and MPEP § 806.05(j)
for restricting between an intermediate and a final product. Specifically,
the Office is considering explaining that to support a requirement for
restriction between two or more related product inventions, or between two
or more related process inventions, that are not otherwise provided for in
MPEP §§ 806 through 806.05(j), there must be two-way distinctness (see MPEP
§ 802.01) and a serious burden if restriction were not required. The Office
is considering explaining that for such related product inventions or such
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related process inventions, the inventions are distinct if: (1) The
inventions as claimed have mutually exclusive characteristics (see MPEP
§§ 806 through 806.05(f)); (2) the inventions as claimed are not obvious
variants over each other; and (3) each invention as claimed can be made by,
or used in, a materially different process or product. In an effort to
reduce the number of improper requirements for restriction between related
product inventions or related process inventions, the Office is considering
explaining that where claims of an application define the same
essential characteristics of a single invention, e.g., the claims vary
from each other only in breadth or scope (ranging from broad to
detailed), the examiner should not require restriction between such
claims.
4. How could the Office modify Markush practice? The Office is
considering whether to revise Markush practice in three particular
ways. 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, i.e., to determine whether
any nonelected species is unpatentable for any reason (35 U.S.C. 101,
102, 103, or 112, or nonstatutory double patenting). If a nonelected
species is determined to be unpatentable, the Markush-type claim would
be rejected, and the search and examination would not be extended to
cover all nonelected species.
Next, the Office is considering revising the treatment of amended
Markush-type claims to clarify that whether an Office action may be
made final is determined by whether the conditions in MPEP § 706.07
for making a second or subsequent Office action final are met and is
not dependent upon whether the examiner previously required a
provisional election of species.
Lastly, the Office is considering situations where restriction may
be proper between a subcombination and a combination when a
subcombination sets forth a Markush grouping of alternatives. In
particular, the Office is referring to a subcombination that (1)
encompasses two or more subcombination embodiments within its scope,
and (2) lists those embodiments using Markush-type claim language,
i.e., lists the embodiments as a group of alternatives from which a
subcombination embodiment is selected. For example, the Office is
considering whether restriction would be proper between a
subcombination claim to an individual DNA molecule selected from a list
of alternative embodiments and a combination claim to an array
comprising a plurality of DNA molecules wherein one or more of the DNA
molecules are selected from the list of alternative embodiments set
forth in the subcombination claim. In such a situation, the combination
claim does not require all the elements of any particular claimed
subcombination to be present in the claimed array.
Apart from these specific considerations, the Office invites
suggestions from the public regarding changes to the practice of
requiring election/restriction of Markush claims in a manner that
balances the interests of the Office and those of the public in the
context of the current statutory and regulatory framework.
5. How could the Office improve rejoinder practice? The Office is
considering changes to rejoinder practice as part of an effort to
institute more uniform treatment of claims directed to nonelected
subject matter upon the determination that all claims to the elected
invention are allowable. The Office is considering whether to define
"rejoinder" as the 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. Claims that meet the second condition for
rejoinder may include, for example, those that (1) properly depend from
an allowable elected claim; (2) include all of the limitations of an
allowable elected claim; or (3) require no further search and/or
examination. Claims that may not be eligible for rejoinder would
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include, for example, those that require additional consideration of the
prior art or raise utility, enablement, or written description issues not
considered during examination of the allowable elected claims.
Separately, the Office is also considering instructing examiners
that when all claims directed to an elected invention are allowable,
nonelected claims must be considered for rejoinder and withdrawal of
the restriction requirement. In making this decision, examiners must
reevaluate both aspects of the restriction requirement, i.e., whether
the nonelected invention(s) as now claimed are independent or distinct
from the claim(s) to the allowable elected invention and whether there
would be a serious burden if the nonelected inventions were rejoined.
6. What other areas of restriction practice can the Office improve
and how? While the Office has set forth particular restriction practice
issues for which comments are specifically being requested, the Office
is in this request for comments inviting comments on any area in which
restriction practice could be improved.
May 17, 2010 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1357 OG 257]