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Restriction Petition Survey; A Few Helpful Hints

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TC1600 mails out about 28,000 first actions on the merits each year and ... An example of 'species' which overlap in scope: rodent, mouse and transgenic mouse. ... – PowerPoint PPT presentation

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Title: Restriction Petition Survey; A Few Helpful Hints


1
Restriction Petition Survey A Few Helpful Hints
  • Julie Burke
  • TC1600 Special Program Examiner
  • 571-272-0512

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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Concerned 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

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 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.

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
    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.

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 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

21
Independent 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)

23
Status 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
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