Restriction Requirements on the Rise?
Posted by Stephen M. Nipper at February 13, 2007 12:53 PM
I try not to rant here too often, but seeing posts on the allowance rate dropping (within a few years) from 70+% to ~50% and questions regarding whether there has been a secret change to official USPTO policy regarding examination and allowance makes me say “hmm…..”
One thing I’ve been noticing is that the number of restriction requirements appears to be on the rise.
I don’t mind restriction requirements that are appropriate…there is a reason for them. But, I have to admit, I’m having a hard time believing some of the reasons I’ve been seeing recently. For instance, the one I received earlier this week…the entire support for the rejection? “The species are distinct because each of them has a distinct feature.” No reasons provided. No examples to support conclusions. Just a blanket statement that (essentially) the embodiments each have a distinct feature and thus they must be patentably distinct species. Argh.
Is it just me??? Anyone else seeing more restriction requirements than they used to? The comments are open.
J. Matthew Buchanan 
Stephen M. Nipper 
Douglas Sorocco 
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Comments
Douglas Sorocco Says:
February 14, 2007 10:27 AM
Steve -
Another interesting read - internal PowerPoint on how Examiners should implement restrictions. I especially like the "substantial burden" rules.
http://www.cabic.com/bcp/120804/ACaputa_PIRP.ppt
Douglas
Ginnie Says:
February 14, 2007 10:30 AM
Well - we have been seeing increased restrictions in biotech for a few years now, so maybe the rest of the art units are following that model.
Restrictions have risen to a ridiculous level (50-way, 100-way, etc.) - especially since their own guidelines & rules are not followed. As in your example - reasons for distinction NOT given, not following genus-species (this is NOT an election of species assertion), traversals not really considered, assertions of undue search burden when classifications are the same, further restriction by the same Examiner AFTER the first OA & response filed (i.e. - search has been done). I know of a couple of instances when the resriction has been petitioned - one is in progress, others are a few years old and I would have to check on the outcome. In general though - argue all you want, the restriction stands.
Ginnie Says:
February 14, 2007 10:43 AM
Note that the RR slides from USPTO say "independent OR distinct" while MPEP reads "independent AND distinct" - another twisting of the guidelines -
from MPEP 802:
"37 CFR 1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions .."
Peter Canelias Says:
February 14, 2007 06:40 PM
Mr. Nipper's posting struck a nerve. I have gotten a flurry of these "species election" and restriction requirements recently. No reasons given except that the claim "groups" (often a single claim) are to independent and distinct inventions (restriction) and that there are distinct species within the restricted groups. On the last one, the examiner told me in a phone call that the reason for designating one single-claim-group a separate species was that the claim was independent, therefore the subject matter must be independent and distinct, ergo a different species! I always understood separate "species" to be mutually exclusive of one another, not to mention corresponding to an identifiable genus, but apparently this is not the standard. Yes, Argh!