Title: Restriction Petition Survey; A Few Helpful Hints
1Restriction Petition Survey A Few Helpful Hints
- Julie Burke
- TC1600 Special Program Examiner
- 571-272-0512
2TC 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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11 12Concerned about a Restriction Requirement?
- File an election with traverse
- Follow up with the
- Examiner, then
- SPE, then
- SPRE or QAS, then
- Group Director
- File a petition
- Tips
- File the petition as a separate paper
- Clearly label the first page of the petition
13Petitions should be decided BEFORE the next
action on the merits is mailed.
14Petitions do not stop the clock!
- Please file required response within the time
period indicated in the last Office action.
15Prematurely filed petitions may be dismissed
-
- Tip Avoid dismissals by filing petitions
AFTER the restriction requirement is - repeated or
- made final.
16Do 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 1800. - 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.
18Incomplete 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.
19Groups 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
806.03 - 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.
20Species 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 806.04(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
21Independent Inventions are unrelated
- Inventions as claimed are independent if there is
no disclosed relationship between the inventions,
that is, they are unconnected in design,
operation, and effect... 806.06 - 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 806.05.
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)
23Status Inquiries and Contact Information
- Check public PAIR to see if petition has been
received - Questions? Call TC1600 SPRE Petition Leads
- Bill Dixon 571-272-0519
- Marianne Seidel 571-272-0584
- If petition is decided outside the TC, contact
- Office of Initial Patent Examination 571-272-400
0 - Office of Petitions 571-272-3282
- Office of Publication- Image Assistance
Center 571-272-4200