Issue 156 | February 6, 2004
More to Come on Restriction Practice Reform
 On November 26, 2003, the U.S. Patent and Trademark Office published a summary of the public comments on its proposed adoption of a PCT-style unity of invention standard and announced that it will now conduct further business impact analysis on four alternative options for reforming restriction practice. The options that are now under consideration include
  1. Continuing the current restriction practice with an option to pay additional fees for simultaneous examination of restricted inventions

  2. Adopting the PCT unity of invention system with increased fees for additional inventions

  3. Implementing a three-tiered fee structure that depends upon the relatedness of the inventions and the searching burden on the Examiner, and

  4. Reinterpreting to the "independent and distinct" standard.
Under the three-tiered fee structure option, applicants would pay a base fee covering claims directed to substantially similar inventions. A surcharge over the base fee would be required for related inventions that need limited additional searching and include similar patentability issues. A higher surcharge would be required for the election of multiple unrelated inventions that need additional searching and also present "dissimilar patentability."

The fourth option is a bit more complicated and involves moving away from the current statutory interpretation of independent "or" distinct so that inventions which are "related," but not truly independent, would still be examined together. Under this approach, an examiner would be required to show that restricted inventions are not only patentable over each other (i.e., distinct), but also independent due to lack of a common feature that defines over the prior art.

More specifically, applicants would be required to "provisionally elect" one of their related inventions for examination and to define the feature(s) they consider to be common between the related inventions. The Examiner would then search and examine only the elected invention. If the elected invention is not patentable, then the restriction would be made final and the claims directed to the non-elected invention(s) would be withdrawn. According to the USPTO, this procedure would eliminate the need for overly broad linking claims and minimize the Examiner's burden when the elected invention is unpatentable.

If the elected invention is patentable, however, then the examiner would continue to search for the common features and any restriction requirement would be withdrawn if the common feature were determined to be patentable after allowance of an elected claim. If the common feature is determined not to be patentable, then the restriction will be made final. However, any related invention that is searched and determined to be patentable prior to uncovering the rejectable related invention will be rejoined with the elected invention.

The USPTO is planning to publish a preliminary, "Green Paper" report detailing these options and their business impact on May 1, 2004. A public hearing will then be held on June 15 in preparation for release of a final "White Paper" report on August 15. Until then, the "Summary of Public Comments and the Restriction Reform Options to be Studied by the United States Patent and Trademark Office" is available at http://www.uspto.gov/web/offices/pac/dapp/opla/
and the author of this issue of "APLF Patent Law Updates," Bill Heinze (bill.heinze@tkhr.com), is available at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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