1 restriction petition survey; a few helpful hints julie burke tc1600 special program examiner...
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Restriction Petition Survey; A Few Helpful Hints
Julie Burke
TC1600 Special Program Examiner
571-272-0512
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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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Restriction and Lack Of Unity Petitions Filed in FY04, 05, 06
75
70
49
0
10
20
30
40
50
60
70
80
2004 2005 2006 (1st plus 2nd Qtr.)
Fiscal Year
Nu
mb
er O
f Pet
itio
ns
File
d
PetitionsFiled
4
Petitions For Restriction Requirement In 111(a) Application Versus Lack of Unity Determinations In 371 Application In FY04, 05, 06
74
58
71
26
42
29
0
10
20
30
40
50
60
70
80
FY04 FY05 FY06
Fiscal Year
Perc
enta
ge O
f Pet
ition
s Fi
led
111(a) in percent
371 in Percent
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Petition Outcome By Fiscal Year
44
38
31
12
2628
38
32
39
64
2
0
5
10
15
20
25
30
35
40
45
50
FY04 FY05 FY06
Fiscal Year
Per
cen
tag
e O
f Pet
itio
ns
File
d Grant
Grant In Part
Deny
Dismissed
6
Restriction Petitions By Work Group Filed in FY04, 05 and 06
10
16
20
18
8
5
26
14 14
10
2
20
14
10
3
0
5
10
15
20
25
30
1610 1620 1630 1640 1650
Work group
Nu
mb
er
of
pe
tito
ns
file
d FY04
FY05
FY06
7
Petition Outcome By Work Group For FY05
5
17
2 2
00
2
5 56
0
76
7
4
0
23
2 2
0
2
4
6
8
10
12
14
16
18
1610 1620 1630 1640 1650
Work group
Num
ber o
f pet
ition
s fil
ed Grant
Grant In Part
Deny
Dismissed
8
Petition Outcome By Work Group For FY06
2
11
1 1 1
0
3
6
4
00
6 6
5
2
0 0
1
0 00
2
4
6
8
10
12
1610 1620 1630 1640 1650
Work Group
Nu
mb
er
of
pe
titi
on
s f
iled
Grant
Grant In Part
Deny
Dismissed
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Types Of Concerns FY04
16
12
17
4
0
4
17
0
2
4
6
8
10
12
14
16
18
Markush 10Seq/case
Burden LinkingClaim
Rejoinder Distinction GroupingWrong
Tota
l
10
Types Of Concerns FY05
27
2
10
64
7 7
0
5
10
15
20
25
30
Markush 10Seq/case
Burden LinkingClaim
Rejoinder Distinction GroupingWrong
To
tal
11
Types Of Concerns FY06
14
87 7
23
4
0
2
4
6
8
10
12
14
16
Markush 10Seq/case
Burden LinkingClaim
Rejoinder Distinction GroupingWrong
To
tal
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Concerned about a Restriction Requirement?
• File an election with traverse• Follow up with the
o Examiner, theno SPE, theno SPRE or QAS, theno Group Director
• File a petitionTips:
• File the petition as a separate paper• Clearly label the first page of the petition
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Petitions should be decided BEFORE the next action on the merits is mailed.
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Petitions do not stop the clock!
Please file required response within the time period indicated in the last Office action.
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Prematurely filed petitions may be dismissed
Tip: Avoid dismissals by filing petitions AFTER the restriction requirement is
repeated or
made final.
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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.
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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.
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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.
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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.
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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
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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.
Independent Inventions are unrelated
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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)
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Status Inquiries and Contact Information
Check public PAIR to see if petition has been received
Questions? Call TC1600 SPRE Petition LeadsBill Dixon 571-272-0519
Marianne Seidel 571-272-0584
If petition is decided outside the TC, contactOffice of Initial Patent Examination 571-272-4000
Office of Petitions 571-272-3282
Office of Publication- Image Assistance Center571-272-4200