1. Current and Future USPTO Practice RESTRICTION PRACTICES AT THE USPTO 1 © AIPLA 2015

2. 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 2015 2

3. (1) Current USPTO Restriction Practice (2) Current Harmonization Initiatives (3) Prospects for Change Agenda © AIPLA 2015 3

4. C URRENT USPTO R ESTRICTION P RACTICE © AIPLA 2015 4

5. 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 © AIPLA 2015 5

6. The USPTO Requires restriction if: 1. Inventions are independent or distinct; and 2. 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 6 © AIPLA 2015

7. 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 7 © AIPLA 2015

8. Markush-type claim subject to restriction if:  No common utility; or  No common structure essential to common utility. U.S National Applications 8 © AIPLA 2015

9. 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 9 © AIPLA 2015

10. 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 10 © AIPLA 2015

11. 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 11 © AIPLA 2015

12. 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 appealable o Petition to director Response to Restriction 12 © AIPLA 2015

13.  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 13 © AIPLA 2015

14. 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 14 © AIPLA 2015

15. 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 15 © AIPLA 2015

16. 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 16 © AIPLA 2015

17. 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 17 © AIPLA 2015

18. 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 18 © AIPLA 2015

19. C URRENT H ARMONIZATION I NITIATIVES © AIPLA 2015 19

20. 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 20 © AIPLA 2015

21. 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? 21 © AIPLA 2015

22. 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 Topics o In cluded with 4 main topics Current Harmonization Initiatives 22 © AIPLA 2015

23. 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 23 © AIPLA 2015

24. P ROSPECTS FOR C HANGE © AIPLA 2015 24

25. 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 25 © AIPLA 2015

26. Questions? Alan J. Kasper Andrew G. Melick akasper@sughrue.comamelick@whda.com © AIPLA 2015 26