Current and Future USPTO Practice RESTRICTION PRACTICES AT THE USPTO 1 © AIPLA 2015.
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Transcript of Current and Future USPTO Practice RESTRICTION PRACTICES AT THE USPTO 1 © AIPLA 2015.
Serving the Creative and Legal Communities
Current and Future USPTO Practice
RESTRICTION PRACTICES AT THE USPTO
1© AIPLA 2015
Disclaimer: The purpose of this presentation is to provide educational and informational content and is not intended to provide legal services or advice. The opinions, views and other statements expressed by the presenter are solely those of the presenter and do not necessarily represent those of AIPLA or of AIPPI-US.
© AIPLA 20152
(1) Current USPTO Restriction Practice
(2) Current Harmonization Initiatives
(3) Prospects for Change
Agenda
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CURRENT USPTO RESTRICTION PRACTICE
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U.S. National Applications – 35 U.S.C.§121
Restriction may be required if two or more independent or distinct inventions are claimed in one application.
PCT National Stage Applications
“Unity of Invention” standard under PCT Rule 13
Current USPTO Restriction Practice
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The USPTO Requires restriction if:1. Inventions are independent or distinct;
and2. No serious burden on the Examiner.
Independent: no disclosed relationship; unrelated
Distinct: 1. Not connected in at least one of
design, operation or effect (e.g., can be made by, or used in, a materially different process) and
2. One invention is patentable over the other (novel and nonobvious)
U.S National Applications
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Examples where restriction is proper:
Process and Apparatus for its practice: process can be practiced by a materially different apparatus; or the apparatus can be used to practice another materially different process.
Process and Product made: the process is not an obvious process of making the product and the process can be used to make another materially different product; or the product can be made by another materially different process.
U.S National Applications
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Markush-type claim subject to restriction if:
No common utility; or
No common structure essential to common utility.
U.S National Applications
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Unity of Invention – PCT Rule 13
Special technical feature common among the inventions: those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
Restriction is proper if the “common special technical feature” is found in the prior art.
PCT National Stage Applications
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Unity of Invention is satisfied for the following combinations of inventions:
o A product and a process specially adapted for the manufacture of said product; or
o A product and process of use of said product; or
o A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
o A process and an apparatus or means specifically designed for carrying out the said process; or
o A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
PCT National Stage Applications
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Generic Claim and species claims Not independent, but may be distinct. No restriction of reasonable number of
species and no serious burden.
Requirement to elect a species to which the claims “will be restricted” if no generic claim remains. Examination tool (usually no need to
traverse). Becomes a restriction if no generic
claim remains.
Election of Species
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Must make an election even if traversing.
Traversing Restriction Requirement o Not distinct (this is usually disfavored because
it is an admission that claims are obvious over each other).
o Examiner is not applying the correct standard (National vs. PCT).
o No serious burden.
o PCT: Common feature distinguishes over the art; or amend claims such that common feature distinguishes over the art.
Not appealableo Petition to director
Response to Restriction
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Must traverse the requirement to preserve right to petition.
After a restriction is made final, a petition can be filed.
Petition can be deferred until a final action or allowance of the claims; but petition must be filed before an appeal is filed.
Petition does not stop clock for responding to rejections in an Office Action.
Petition to Director
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Rejoinder – MPEP § 821.04 - Applies to both National and PCT applications
Between Product Inventions; Between Process Inventions:
When all claims to the elected invention are allowed, any restriction requirement between the elected invention and the non-elected invention that depends from or otherwise requires all the limitations of an allowable claim should be withdrawn.
Rejoinder
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Rejoinder should be “considered” by the Examiner for the following restrictions:
o Process and a product/apparatus for practicing process;
o Product/apparatus and a process of making the product/apparatus;
o Product/apparatus and a process of using the product/apparatus.
o However, product by process claims are not rejoined to product claims because process description is not considered a claim limitation.
o Also, "use of" claims are not considered proper in any event in U.S. Practice.
Rejoinder
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PCT Applications:
Withdrawn claims can be rejoined if they have maintained a “common special technical feature.”
May need to amend withdrawn claims to maintain a common special technical feature of allowed claims.
Rejoinder
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Examiners like restrictions.
Fewer claims, narrower search, related divisional applications
Applicants do not like restrictions.
Divisional applications required for complete protection which increases cost and time.
Traverse/Petition restriction.
Request rejoinder where appropriate.o Amend claims for better chance of rejoinder.
o Add linking claims.
Considerations
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But some Applicants might like restrictions.
o Separate patents for each related invention, each of which may have different patent term due to patent term adjustment.
o No double patenting rejection in applications filed “as a result” of a restriction requirement made by the USPTO. But claims must maintain “consonance” with the restriction requirement.
o Election without traverse.
o Cancel withdrawn claims (before rejoinder by Examiner) to pursue in a divisional application.
o However, if the claims are rejoined by Examiner before the claims are cancelled, the Examiner can reject for double patenting.
Considerations
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CURRENT HARMONIZATION INITIATIVES
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Unity of Invention has been part of a Harmonization discussion for 30 years Introduced in the WIPO "Basic Proposal"
of 1991 Subsequently reintroduced in
harmonization texts in the SCP
Proposed Unity of Invention standard for Harmonization is basically the PCT Standard
The US is the only hold-out Numerous studies performed Support for change by almost all
stakeholders
History of Harmonization of Unity Standard
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The US Reluctance is based on economic and political factors: Loss of revenue from divisional applications
Opposition by Unions to increased work load
Higher expenses for the USPTO Need to reorganize "art units" according to the new CPC classification system
Why Doesn't the U.S. Change?
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Unity of Invention is now in International Harmonization Discussions: A formal topic in the IP5 PHEP (Patent Harmonization Experts Panel)o JIPA Survey of Unity in 5 IP Offices
In USPTO Examiner's sometimes wrong Applicant's often do not traverse or
amend
A topic in the Industry Trilateral discussions of Tegernsee Topicso Included with 4 main topics
Current Harmonization Initiatives
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Tegernsee Topics include four harmonization issues - grace period, conflicting applications, 18-month publication, and prior user rights
Industry IP5 generally supports going to a PCT Unity standard
Current Harmonization Initiatives
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PROSPECTS FOR CHANGE
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Industry Views on Tegernsee Topics and Unity Introduced to the IP5 in May 2015
USPTO stated its commitment to change to Unity but noted its need for more time to restructure and introduce implementing legislation
Other Offices and industry acknowledged the commitment and encouraged speedy action
Future Harmonization Initiatives
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