1 Restriction Petition Survey; A Few Helpful Hints Julie Burke TC1600 Special Program Examiner

2 TC 1600 Filings and Restrictions  TC1600 mails out about 28,000 first actions on the merits each year and about 12,000 restriction requirements  Of about 12,000 restriction requirements mailed per year, only about 75 are petitioned  21% of TC1600 cases are filed under 35 U. S. C. 371 (i.e., the national stage of a PCT application), yet 371 applications account for about 30% of the petitions  on average, a 91 day turnaround time to mail decision for a restriction petition

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12 Concerned about a Restriction Requirement? File an election with traverse Follow up with the o Examiner, then o SPE, then o SPRE or QAS, then o Group Director File a petition Tips: File the petition as a separate paper Clearly label the first page of the petition

13 Petitions should be decided BEFORE the next action on the merits is mailed.

14 Petitions do not stop the clock! Please file required response within the time period indicated in the last Office action.

15 Prematurely filed petitions may be dismissed Tip: Avoid dismissals by filing petitions AFTER the restriction requirement is  repeated or  made final.

16 Do US restriction requirement or PCT unity of invention rules apply? Examiner must use correct rules when formulating a restriction requirement or a lack of unity If the application is filed under 35 USC 111(a), then US rules apply. See chapter 800. If the application is a “371” national stage filing of a PCT under 35 USC 371, then PCT unity of invention rules apply. See chapter Note: Divisionals, continuations and continuation-in-parts of PCTs or 371s are subject to US rules. Tip for traversal: Point out instances in which the wrong rules are used.

17 Current Form Paragraphs should be used when formulating restriction requirements Tip for Traversal: Point out instances when out-dated or altered form paragraphs are included in restriction requirements. Note-This alone will not necessarily result in the petition being granted.

18 Incomplete Restriction Requirements All claims should be accounted for either in groups or in the linking claim form paragraphs. The groupings should not result in loss of scope of claimed subject matter. Tip for traversal: Point out any inventions missing from the groupings.

19 Groups cannot overlap in scope Where the claims of an application define the same essential characteristics of a single disclosed embodiment of an invention, restriction there between should never be required…. See Tip for Traversal: Point out instances when the same disclosed embodiment can be placed in two separate groups. Example: Group I: Tropical fruit. Group II: Citrus fruit. Yet specification discloses an “orange” which is encompassed by both groups.

20 Species must be mutually exclusive … Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first….See (f) Tip for Traversal: Point out instances when two or more “species” overlap in scope. An example of “species” which overlap in scope: rodent, mouse and transgenic mouse. These “species” are genus, subgenus and species

21 Inventions as claimed are independent if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect Tip for traversal: Identify pairs of “independent inventions” that are disclosed as useable together or connected in one of design, operation or effect. Such pairs of inventions are related and should be considered for distinction under MPEP Independent Inventions are unrelated

22 Burden must be shown for all restriction requirements, including Tip for Traversal: If the examiner has not addressed burden, the restriction requirement is incomplete. Restriction between independent or distinct inventions and Provisional election of species requirements. See 803(I)

23 Status Inquiries and Contact Information Check public PAIR to see if petition has been received Questions? Call TC1600 SPRE Petition Leads Bill Dixon Marianne Seidel If petition is decided outside the TC, contact Office of Initial Patent Examination Office of Petitions Office of Publication- Image Assistance Center