Rise in Restrictions: A Response

A Patent Examiner offered the following perspective on the seeming rise in the number of restriction requirements:

The numbers cited in this article to indicate an enormous rise in restriction requirements within the biotech group since the early 90′s are misleading. While restrictions have risen since that time what has really changed is the percentage of biotech restriction requirements which are written compared to those which are done telephonically and thus included within the FAOM. I have been a biotech examiner for almost twenty years. In the early 90′s I would estimate that approximately 75% of all cases within my art unit required a restriction requirement but virtually all of these were done telephonically. Thus the only first actions which were only restriction requirements were those in which the attorney would not elect over the phone. Today I would estimate that somewhere close to 90% of all cases in my art unit receive an initial restriction requirement but almost all of these are now done as written requirements prior to the FAOM. There two main reasons for the change from telephonic to written restrictions. They are a large increase in complexity of the requirements (in the early 90′s most requirements included only 2-4 groups and restrictions with more than 10 groups were very rare while today the average requirement probably has more than 10 groups and cases with even more than 100 groups are not uncommon) and the PTO’s policy of granting 1 hour of other time for written restrictions but not for restrictions included within an FAOM. This policy essentially penalizes an examiner for doing a telephonic restriction even though this would reduce overall pendency of many cases.

41 thoughts on “Rise in Restrictions: A Response

  1. “If you were to think of the post in the context of the article (biotech discussing RR with 100 groups), you would understand why I said “even where there are only 3 ind claims”.”

    Nothing in the context explains to me why a 3/20 application should be any less subject to restriction than a giant biotech frankenspec with hundreds of claims. Fewer groups, sure, but once you have two independent claims you might get them restricted.

    “You sort of wonder what they searched the first time.”

    The claims you filed the first time?

  2. um… hello! the nucleotide and protein search may come up together in a GenBank search, but the searches done in PTO are not conducted at Genbank. Due to the way PTO search system is set up, a single sequence (EITHER nucleotide or amino acid) must be queried as a single instance. And this SINGLE sequence must be queried in ALL commercial, issued-patent, and pre-grant publication, and interference (filed but not published) databases. And since Applicants rarely claim a straight up sequence, but homologs, a fragment of certain length (e.g. probes or primers), which must be queried according to a different search parameter, each of this parameter AGAIN being searched as a separate instance in ALL of the above mentioned databases. Search time and search results is enormous. Multiply this by ten for ten sequences (which by the way was rescinded in OG notice down to a single sequence). In addition, a single nucleotide sequence and its encoded protein’s patentability is not necessarily the same. There exists mutations that do not affect its encoded protein in sequence, but the mutation nevertheless serves as markers. and remember that patentability accounts for discovery. If a protein sequence was known but its encoding DNA sequence was not yet discovered, it has not yet been “discovered” and thus should be separately patentable (although Kubin decision sort of did away with that rationale, which is under appeal as I understand it). Lastly, novelty for protein and nucleic acid is not NECESSARILY the same for all the cases. Remember a restriction between inventions need not be two-way distinction all the time. One way distinction suffices for patentable distinctness in many product and method of its use claims.

  3. Most restrictions are not ‘required’ but Examiner’s do it to limit the number of claims they have to examine. A search of the nucleotide and amino acid sequence will yield nearly identical art, yet the examiner is not given enough time to do both. Why should they be restricted when most of the novelty, i.e. stopping protein expression, inhibiting the protein, etc. is all based on the same protein, the same invention, thus the nucleotide and amino acid should be examined together. Restricting out mutations of the same protein is pushing the envelope and examiners are restricting more each and every day. I had one restrict out a markush group, then tell me it wasn’t an election of species because they said so! By the way, examining expression of A SINGLE PROTEIN in different bacterial species does not constitute separate inventions, just multiple uses of the same invention.

  4. “Sometimes Geoff also demolishes an examiner’s rejection by canceling all of his claims and abandoning the application.”

    DE DE DE DEMOOOOOOLISHED!!!!!!!!!

  5. Sometimes Geoff also demolishes an examiner’s rejection by canceling all of his claims and abandoning the application.

  6. “Kind of reminds how when you demolish a rejection, ”

    Amending is “demolishing a rejection”?

    LOLOLOLOLOLOLOLOLOLOL

    Try again son.

  7. Just another way to milk more fees from applicants.

    Kind of reminds how when you demolish a rejection, the Examiner insists your amendment requires a new search and you must pay for an RCE.

    You sort of wonder what they searched the first time.

  8. IANAE – that is a ridiculous conclusion. If you were to think of the post in the context of the article (biotech discussing RR with 100 groups), you would understand why I said “even where there are only 3 ind claims”. I get the impression that you might be an examiner that clears dockets off your desk with bogus RR (hmmm, like RR that do not consider the context of specification)? I think I see a pattern here….

  9. “Examiner 6 appeared to be familiar with the types of restrictions I find objectionable based on his 2:19 post. ”

    You appear to be familiar with the types of cases I find restrictable and lolable based on your 4:20 post.
    :)

  10. Bad Joke says,

    “That’s where I would fully expect restrictions”

    I should not have indicated that every case of the type Jr Examiner describes are bad restrictions. I did go a bit overboard.

    Examiner 6 appeared to be familiar with the types of restrictions I find objectionable based on his 2:19 post.

  11. “(even where there are only 3 ind claims)”

    Why do I get the impression that some people think applications with only 3 independent claims should enjoy some sort of immunity from restriction?

  12. In the mechanical and electrical arts, most examiners are either too lazy or just plain do not know how to do proper RR’s. We get several a month where the examiner restricts each independent claim set because the language is not identical (even where there are only 3 ind claims). We routinely file Petitions for Supervisory Review after the examiner makes the RR final. They work about 80% of the time in at least getting one set of claims back in. I think it easier to rejoin than go through the work of a good, valid RR.

  13. “some examiner”,

    The SPEs are not rated on the # of restrictions. IT is the other time that they don’t want & is the reason most would rather see the restriction done with the 1st action. It tends to be a nose/knife/face situation.

    MVS

  14. (1) Sorry if I missed it in this or the other restriction topic, but has anyone brought up the Patent Training Academy? I joined PTO pre-PTA and while we did get the standard restriction training, it seems that the Academy was really “trained” to restrict anything and everything, i.e. that was how they got the cases in the pipeline. I’ve been asked to help a PTA examiner with applications that have FUBAR restriction requirements and to accept divisionals off of a parent with a similar restriction. Just an observation. Maybe the data correlates with the PTA, maybe not, but I suspect its something this simple versus any nefarious plot. CJs remarks however ring true, although I am not a biotech/pharma examiner.

    (2) Telephone practice isn’t mandatory, especially if the restriction is complex, etc. MPEP 812.01. I think the SPEs somehow get penalized in their bonus structure if too many written restrictions are issued, so they want you to call.

  15. Just visiting, this rarely happens, but IANAE is entirely correct, and succinct even. When I have a method of using a device based on a feature of that device that enables the particular usage scenario, and the device itself, it’s clearly going to be searched together regardless. When I have a device having a special feature other than its composition and a method of making it based on a specialized plastics process, one search is clearly going to plastics classes, and the other to whatever the device is. That’s where I would fully expect restrictions.

    Where I have a claim listing different variables that could be used as a basis for making a single decision within a long process and I get restricted as to each variable, that’s a systemic abuse that is caused not by the intent and proper application of the rule, nor by the mischeviousness of the Examiner, but by some problem in the Office training program.

  16. “Sounds reasonable except we know that you have to search both the method device classes regardless of whether the claim recites a method or a device. What do you think the practitioner thinks when he sees that your search strategy covers both classes.”

    What do you think he thinks when it doesn’t? I get that response sometimes, that I’ll have to search the device for a method or vice versa. I simply assure them that I will not be. They then have my word not to search for their device while searching for the method. Then, when the method (or device) claim is allowed, and they file a DIV, which then turns up art that invalidates the method I LOL @ them. Fact of the matter is, in that situation they probably didn’t invent a new method at all, then invented a product and then finangled a method claim out of it. I have 0 sympathy in that situation for your prosecution shinanigans.

  17. “A thorough search of a claimed automobile wouldn’t give you a whole lot of information about the claimed automobile assembly line, and vice versa”

    I agree, but I suspect that your example is not representative of the methods and products that get described in the same application.

  18. “The awful analysis I seem to get in a ESR lately does, however, get me angry. The search quality is still good, but it seems that once the examiners have found the best art, they’re writing the ESR in about 3 minutes, while drinking a beer, without reading more than the abstracts of the prior art. ”

    I have noticed this more and more in the most recent ESR’s I’ve read.

  19. JV: “Sounds reasonable except we know that you have to search both the method device classes regardless of whether the claim recites a method or a device.”

    There’s a difference between (1) device/method-of-using and (2) device/method-of-making. I would expect the examiner to search (1) together, but I wouldn’t be surprised to get (2) restricted in some cases. A thorough search of a claimed automobile wouldn’t give you a whole lot of information about the claimed automobile assembly line, and vice versa.

  20. Jr examiner asks…

    “The method is not only in a different class”

    Sounds reasonable except we know that you have to search both the method device classes regardless of whether the claim recites a method or a device. What do you think the practitioner thinks when he sees that your search strategy covers both classes.

  21. To clarify, Alice wrote:

    I never see this kind of thing in EP cases, by the way.

    My response: I see it in EP cases all the time.

  22. Alice: One thing I didn’t see–what about the current policy of only considering one amino acid or nucleotide sequence per application? This was not the case when I started practicing in the early 00′s, and it leads to some ridiculous results.

    At one point, there was an MPEP guideline that 10 sequences would be searched. That is no longer the case and hasn’t been the case since the early oughts.

    I see it in EP cases all the time.

  23. How do the attorneys here feel about device/method restrictions? I rarely do restrictions, but when I do, it’s for device vs. method of making the device (unless the method is just “forming” the layers already recited for the device without more specifics as to the method of forming). The method is not only in a different class, but requires a quite different search process. Also, there is a different amount of examination time allotted for device vs. method.

    Just curious how practioners feel about this type of restriction.

  24. “Has anyone seen this kind of intra-claim restriction in electrical or mechanical cases?”

    I used to see it 2-3 years ago, but haven’t seen it since.

  25. “one marker” “selected from the group ….” Since one marker for a particular phenotype does not render obvious another marker for that same phenotype, they are patentably distinct and unobvious over each other.”

    Has anyone seen this kind of intra-claim restriction in electrical or mechanical cases? There was an attempt at promulgating some rules about this a while back which led me to believe that it was not allowed under the current rules.

  26. “increase in complexity”

    Restriction practice has always been surprisingly complex for something that seems so simple on its face. Possibly in anticipation of the notorious and ill-fated “New Rules,” the Office probably stepped up its game in this area which may explain the recent increase in written restrictions.

    Historically, it seems as if Examiners practiced their own form of restriction by focusing examination on the primary elements that, for example, were common among the independent claims.

    Genuine restrictions were historically reserved for those foreign applicants who were clearly combining specifications and trying to get more examination for their application fee than they were entitled.

  27. While I assume that everything the Examiner says is true about biotech, what’s with the 10+ way restriction requirements in the electrical arts on claim sets under the 3/20 rule? We didn’t get those five years ago; there’s more going on here than simply increasing complexity and reduced phone elections.

  28. also realize that under JD’ reign, the PTO really enforced moving backlog cases (i.e., unexamined apps). Examiners were “strongly” encouraged to move all these unexamined apps off of their new case dockets by a certain date. So naturally, examiners would have been inclined to send out a restriction to get them (typically a LOT of apps) off the docket (and the list) rather than phoning in the restriction which would then only be off their date case list when an action on the merits had been done.
    Also, some part of the problem is in the way applicants’ (or attorneys) are claiming the actual invention. It is understood that attys want to fight for more breadth, but that practice ends up causing application to be diced up. For example, if one invents a diagnosis method with a combination of gene markers, the invention is a method that utilizes that “combination of markers” Rather than claiming the entire combination, claims typically come in with languages such as, “at least one marker” or “one marker” “selected from the group ….” Since one marker for a particular phenotype does not render obvious another marker for that same phenotype, they are patentably distinct and unobvious over each other. And since applicants are claiming a single marker or at least ONE marker, in which each are patentably distinct over each other, restriction is made. Typically, when an atty is called to pick a marker, he/she requests that a written one be sent since there is no way for them to know which of the potentially hundreds of markers their clients want to pursue… a little off topic here….

  29. @Waldorf. With so many restriction requirements being written how come none of the examiners in the mechanical arts know how to write a restriction requirement? 8 out of 10 RR or ESR have absolutely no indication as to what serious burden there would be.

    In fact, in one telephonic interview with an examiner, the Examiner indicated that merely providing additional dependent claims provided a serious burden and that she tends to restrict everything that depends from the independent claim.

  30. Patent Examiner–thanks for your article. One thing I didn’t see–what about the current policy of only considering one amino acid or nucleotide sequence per application? This was not the case when I started practicing in the early 00′s, and it leads to some ridiculous results. I never see this kind of thing in EP cases, by the way.

  31. 7: what you write is music to my ears. You will think me perverse but let me explain.

    I have been haranguing the EPO, these past 15 years. I say to them that what I want is a first class search report and then with my client I will decide (not the Examiner) what is the novel and unobvious subject matter that I want to defend against validity attacks after issue. What i expect the fee income to be spent on is refinement of the search performance because, in the last resort, I am the one who crafts the IPR for maximum effectiveness, in a court system where validity hangs on the preponderance of the evidence. EPO Examiners have zero experience of infringement proceedings. They don’t know what claim text I want, or why I want it.

    So if they spend all their time searching, and minimal time putting their objections into words, that’s fine with me. If you, 7, have got half decent EPO representation, and are willing to listen to your representative, it should be optimal for you too, no?

    Thanks ever so much for the feed, to allow me yet another rant. And for the lack of complaint about EPO restriction practice.

  32. Max,

    EPO examiners seem to use restriction requirements when it would actually make sense. USPTO examiners often use them to reduce their workload in writing a rejection, even if an additional search would not actually be required. So, EPO restriction practice really doesn’t get me angry.

    The awful analysis I seem to get in a ESR lately does, however, get me angry. The search quality is still good, but it seems that once the examiners have found the best art, they’re writing the ESR in about 3 minutes, while drinking a beer, without reading more than the abstracts of the prior art.

    A couple years ago, this was not the case.

    Quality of Communications has remained about the same, but quality of ESR’s has gone down at such a rate that Dudas himself must be in charge over there.

  33. I don’t want to be a nuisance, but restriction practice at the EPO has always been shall we say a “warm” topic and is about to get much hotter. I realise that biotech has its special tensions here but I’m not in biotech. Tell me, in general engineering, does EPO restriction practice get US people angry? If so, why? If not, does it have anything to offer the USPTO?

  34. What I don’t understand is why, if restrictions are so prevalent (I do them on less than 25% of my cases), there are still attorneys out there who don’t know how to properly respond to them. I get a lot of incomplete responses to election of species requirements.

    When I send out an election requirement, I have to indicate what constitutes the different species, usually by figures or portions of relevant disclosure, and I have to indicate which claims I think are generic, generic meaning claims drawn to ALL species. The attorney has to:
    1. pick a species
    2. tell me which claims, other than the generic claims I identified, are directed to the elected species
    3. indicate that he/she wants to traverse if they want to traverse, and if they are traversing, particularly point out why there is no search burden in searching for all species. (They could also successfully traverse by admitting that the species are obvious variants, but they are of course not going to do that.)

    If they respond without traverse and don’t list any claims, then aren’t they giving the examiner carte blanche to pick whatever claims he wants to examine? I could withdraw all of the claims except the generics I identified. If they respond only that “at least each of the independent claims is generic to all species” and don’t identify any other claims then I can withdraw all dependent claims. I’m not saying I’m going to do that, but they’re leaving their pants down.

    So, in review:
    - pick a species
    - probably a good idea to relist the generic claims
    - identify non-generic claims that are directed to the elected species

  35. “I can seldom remember having received that phone message.”

    I was unaware that there was a requirement to leave a message. Although I usually do.

    Also, this article is funny.

  36. I am not in the biotech arts, but can speak to the fact that I receive many written restriction requirements indicating that the examiner attempted to contact me but could not (when I examined, it was a requirement that the examiner attempt to solicit a telephone restriction, and make that of record, before writing it up. I suspect that is still the case). Funny thing, on such occasions, I can seldom remember having received that phone message.

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