Rise in Restrictions

A recent article co-written by former PTO Director Jon Dudas along with Stepen Maebius and Sean Tu makes a strong statement regarding the rise in restriction requirements:

Restriction practice has clearly grown in the past few years. In 1993, there were only approximately 1,000 restriction requirements in the biotech practice group (out of approximately 32,000 first office actions). However, in 2008, the number of restrictions ballooned to 21,911 restriction requirements in the biotech practice group (out of approximately 42,000 first office actions). Thus, there has been a growth from only 1.5% of patents receiving restriction requirements to over 50% of patents receiving restriction requirements in the biotech practice group.

Squeezing More Patent Protection from a Smaller Budget Without Compromising Quality (2009).

138 thoughts on “Rise in Restrictions

  1. Goodness, Mooney, do you really think that anyone here is fooled by your many sockpuppets?

    Your stench as a baboon gives you away.

  2. I could never be you moonie. It takes years of obfuscation to be you.And anyway moonie I only have the Dells in my corner. you seem to have all the other corners covered

  3. Momma always told me that classy is as classy does.

    She always has a way of saying things so that I could understand when to watch out for duplicitous baboons.

  4. Black Pearl my special little girl. Let me put you up where you belong. whoa whoa whoa…
    Black girl my special little.. Or is it ho ho ho and a bottle of,,, OH NO I’m having a moonieism. Jump back! Say it loud! Just obfuscate. I love that word.

  5. >>purveyor of the oh-so-professional baboon >>comments.

    You may also want to differentiate commments on blog vs. 6 telling us how he behaves in his profession. I am always profession when I am acting in my capacity as an attorney.

  6. The baboon comments capture a person’s attitudes, MM’s, that there is no need to argue fairly. Someday, Fair Play (aka MM), you may realize that you are no longer a human being by having dehumanized your opponnents in debate.

    You are a short step from being a NAZI.

  7. “Try to be professional.”

    This coming from NWPA, purveyor of the oh-so-professional baboon comments.

  8. Your voice is very refreshing David Boundy. Your experiences with PTO sound about like mine.

    6: Try to be professional. You are an instrument of the law.

  9. “Good luck finding a person in the Patent Office who gives a rat’s ass about the Administrative Procedure Act, procedural law or the text of a rule”

    If I can find one what will you give me?

  10. IANANE, it’s easy – often a procedural issue and a substantive issue are intertwined with each other — identical facts can give rise to two different issues reviewable in two different fora. E.g., Federal Communications Commission v. Nextwave Personal Communications, 537 U.S. 293 (2003) Bilski’s error was appealing only the substantive issue, and omitting the procedural issue.

  11. No, examiner breaches of MPEP procedure are not appealable. The Board has so held on any number of occasions. The Board polevaults over all procedural breaches, refuses to review procedure, and will only review substantive law.

    Under 37 CFR 1.181(a)(1), if an action is not appealable, it is necessarily petitionable.

    Good luck finding a person in the Patent Office who gives a rat’s ass about the Administrative Procedure Act, procedural law or the text of a rule.

  12. Isn’t violation of guidelines indicative of lack of examination quality?

    If the Office says that such violations are not appealable, how are such violations policed? Are they indeed appealable because of the ABA?

  13. Welcome aboard the Black Pearl!

    Piracy is serious business, granted, but I still don’t understand why some people think MPEP 2106 is more important than 35 USC 101.

    The MPEP doesn’t get the final say on whether Bilski’s claim is statutory subject matter. The MPEP even says so in 2106. If (assuming) the examiner gets the law right, who cares what he did with the guidelines?

  14. Dear go d Boundy I don’t know how I missed that my first time through. That’s frakkin hilarious!

    Welcome aboard the Black Pearl!

  15. Malcolm writes:

    > Boundy: For example, the whole Bilski fiasco started when a panel of
    > rogue elephants on the Board illegally ignored the MPEP’s § 101 guidelines
    > (MPEP § 2106) and went off on its own tangent.

    > LOL. Bitter much?

    Yes. Less about Bilski specifically than about the general contempt for the rule of law, especially procedural law, that pervades the Patent Office. I see it in day-to-day interactions with examiners, in my petitions practice, in my interactions with the Offices of General Counsel and Patent Legal Administration. Then to see it so directly expressed in a decision of the Board… See footnote 8 of Bilski…

    link to uspto.gov

    Pirates indeed.

  16. “Under his reign 2000-2008, he enforced moving date cases (i.e., unexamined applications) by setting a date for each quarter in which all apps filed prior to or on that date had to be moved.”

    Quarterly date goals were in place long before Dudas’s reign.

  17. How ironic that Dudas wrote a paper on this since he is one of the culprits producing this result? Under his reign 2000-2008, he enforced moving date cases (i.e., unexamined applications) by setting a date for each quarter in which all apps filed prior to or on that date had to be moved. For most examiners, the number of date cases that needed to be moved was much greater than what they could do or would have needed to meet their production requirement. So in the former case, the examiner can only meet this requirement by sending out a written restriction (to get it off the docket and the list). Phoning in is no good since the application would still have to be examined for it to get off the list.

  18. “and why is this an undue burden?”

    We both know there’s no convincing you there’s no undue burden since the burden isn’t taken up by you. Just like you can’t convince me it’s not bull to cut the quality of your work as an attorney/agent by spending the time necessary because the client refuses to pay whatever it is you want in billable hours to draft something that meets what I would think is minimal standard for a quality spec and set of claims.

    “Ha ha. It seems I was foolish in my days as an examiner for performing in such ways, since it is only now required.”

    Sarcasm noted. However, you’re saying it’s coincidence that office actions have gotten longer and longer? We’re expected to search in more and more databases before allowing to justify some “quality metric”? Also, I’m sure I’m also not the only examiner who more and more are dealing with attorneys who are seemingly expecting me to draft the claims for them?

  19. someguy: Add to that the fact that examiners are expected to do more and more now to meet the requirements of law and provide whatever level of customer service whoever is in charge of feel like that day.

    ——————

    Ha ha. It seems I was foolish in my days as an examiner for performing in such ways, since it is only now required.

  20. and why is this an undue burden?

    thats kinda like saying any work over 7 hours is undue, or any work that prevents an easy count is undue.

    the tail is wagging the dog.

  21. Sorry, I meant to say that it’s absurd to say that there’s no *undue* burden.

    Add to that the fact that examiners are expected to do more and more now to meet the requirements of law and provide whatever level of customer service whoever is in charge of feel like that day.

  22. “All of the “inventions” were in the same class and subclass. Exactly how is searching one class/subclass an undue burden on an Examiner.”

    It’s absurd for anyone to say nowadays that just because the inventions are in the same class/subclass that there is no burden. Some of these subclasses contain over a thousand references and the only way that you can go through them in a reasonable amount of time given that you have to search in other areas and databases also is to further limit the subclasses with one or two key words. If the argument that there is no burden because the inventions are in the same class/subclass is to have any real validity, the PTO needs to update and maintain the classification system so that each subclass has at most a few hundred references.

  23. 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 20yrs. 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 hr 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.

  24. court challenges cost too much and the PTO knows it

    Sort of a fact of life for everybody, not just the PTO.

    Maybe the ACLU should get involved.

  25. MVS, court challenges cost too much and the PTO knows it; it’s why they can get away with all of these examination ‘tricks’ that the Examiners here talk about.

  26. 6,

    Wow. In your post @ 4:54 you actually appear to explain the way the proposed claims should be handled (at least at 1st glance – didn’t go through it in detail; too busy with other stuff). Generally, most of what you post is g@rb@ge, but this is better. Maybe you are learning a bit :)

    Boundy, JD, et al., as to the “and” or “or” interpretation, if the PTO is so clearly wrong in its interpretation of the “and” being interpreted as (and intended to be) an “or”, why has no one successfully challenged it in court? IIRC, Gil Hyatt did make this challenge a few years back (maybe a decade now?) and lost it. Anyone else ever try?

    MVS

  27. No amount of legal sophistry in an informal agency staff manual can turn “and” in statute and 37 CFR to “or.” This isn’t a close case, it’s an easy court challenge (so long as the error was not harmless).

    Maybe the statute is referring to (I)ndependent and (D)istinct, which is totally different. This is a very nuanced argument, mind you, my dear sir, but I commend you for your civilized efforts to maintain the discourse at a level at which we (by which I mean you and I (or is it you and me? — another interesting question (or is it?))) can both serve humanity, just as a farmer serves his charges by getting up before the early worm takes the cake.

    /NAL off

  28. For example, the whole Bilski fiasco started when a panel of rogue elephants on the Board illegally ignored the MPEP’s § 101 guidelines (MPEP § 2106) and went off on its own tangent.

    So what? In the end, do you think the Supreme Court will pronounce on the proper application of MPEP 2106, or of 35 USC 101?

    Insisting that agencies be bound by their own internal guidelines won’t avail you when the guidelines stand in contradiction to the actual law. The law will eventually win, once you appeal high enough that the judges don’t care about the agency’s silly guidelines because interpreting the law is their job.

  29. Boundy: For example, the whole Bilski fiasco started when a panel of rogue elephants on the Board illegally ignored the MPEP’s § 101 guidelines (MPEP § 2106) and went off on its own tangent.

    LOL. Bitter much?

    The “fiasco” is the crxp that the PTO was rubber-stamping before someone finally woke up and tried to do something about it.

  30. No amount of legal sophistry in an informal agency staff manual can turn “and” in statute and 37 CFR to “or.” This isn’t a close case, it’s an easy court challenge (so long as the error was not harmless).

    If by a small entity, the PTO will have to pay the challenger’s legal fees under Equal Access to Justice Act, likely at full market rate without the EAJA cap.

  31. “”The MPEP on restrictions is not only prolix ‘gobbledygook’, it is not even statutory! As as noted above, MPEP 808 says ‘Where the inventions as claimed are shown to be independent OR distinct’ but the statute it must be based on, 35 USC 121, says ‘independent AND distinct!’” ”

    If you bother to read that “independent and distinct” phrase in context then you will have an epiphany.

  32. “Species election, not restriction”

    Let’s be clear, all restrictions are under the statute and they’re all restrictions. This “species election”, re what the office is doing, nonsense is just that, nonsense. The office makes restrictions and applicants make elections. I personally never do a “species election”, I make species restrictions.

    “A species election between FIG. 1 (a robot), FIG. 2 (a first drive mechanism), FIG. 3 (a second alternative drive mechanism), FIG. 4 (a clutch usable in conjunction with either drive mechanism), and FIG. 5 (a flowchart showing a method of controlling the robot) should not be proper, but I don’t see authority to say so.”

    That isn’t a species situation. You can talk to the spe about it or send in a petition. Simply say it isn’t a situation where a species restriction is proper. If they want to restrict in those situations they have to use the proper grouping.

    “claim 1 is to a robot having a drive mechanism, claim 2 limits the drive mechanism to that in FIG. 2,”

    That is a combo/subcombo situation unless all the specifics of the drive mechanism which are in claim 2 are also in claim 1.

    “claim 1 is to a robot having a drive mechanism, claim 2 limits the drive mechanism to that in FIG. 2, claim 3 limits the drive mechanism to that in FIG. 3, and claim 4 adds the further limitation of the clutch. ”

    Ok, looking at that situation as a whole here is the proper restriction. The reason the examiner probably fed it up is because it is complicated.

    Assuming claims 1, 2 and 3 are all independent and claim 4 is dependent from claim 3 you have two options to make a valid restriction:

    First you do a combo/subcombo for claim 1 in reference to the group of claims 2 and 3 (can probably lump 2 and 3 together in a group).

    Then you write that if applicant elects the group with claims 2 and 3 in it then it is a species restriction comprising 2 species.

    Claim 4 rides shotgun with claim 3 and goes wherever it goes, unless it is also a combo/subcombo between claims 3 and 4 in which case you can do another combo/subcombo.

    Second you could do the species restriction first and say that claim 1 is generic. Then state that whether the applicant chooses species 1 or 2 then there will be a combo/subcombo between group 1 which will comprise claim 1 and group 2 which will comprise claim 2 or between group 1 which will comprise claim 1 and group 2 which will comprise claim 3 (and probably 4 since it depends from 3).

    All of that assumes burden through diff classification etc.

    Also, if you’d learn to claim better you wouldn’t have this nonsense going on. Likewise, if you ever have a valid combo/subcombo situation on your hands you know that you should have filed 2x applications from the get go. A robot with a part inside it isn’t even close to the same invention as that part inside it with all a bunch of specifics as to how that part is made up being included in the description of the part where it was left out in the recitation of the robot. If you stop trying to game the system then you’ll stop getting sht thrown back in your face.

  33. “The MPEP on restrictions is not only prolix ‘gobbledygook’, it is not even statutory! As as noted above, MPEP 808 says ‘Where the inventions as claimed are shown to be independent OR distinct’ but the statute it must be based on, 35 USC 121, says ‘independent AND distinct!’”

    Your homework assignment for tonight is to read MPEP 802.01.

  34. Ewww – malcomy fingerprints all over ideas for Oliver Sacks.

    But the request was explicitly for a non-BUI response.

  35. The MPEP on restrictions is not only prolix “gobbledygook”, it is not even statutory! As as noted above, MPEP 808 says “Where the inventions as claimed are shown to be independent OR distinct” but the statute it must be based on, 35 USC 121, says “independent AND distinct!

  36. Posted by: IANAE | Mar 03, 2010 at 01:56 PM

    > It is binding on examiners.

    > It may be binding on them per their terms of employment or internal
    > quality review procedures (is it?), but it’s not binding on
    > the PTO as an administrative body, nor on the
    > courts with the power to review the decisions made by the PTO.

    Effect on the PTO: The MPEP is a “housekeeping” regulation for agency employees under 5 U.S.C. § 301. It is binding on the agency’s employees in two senses. First, the public is entitled to rely on the MPEP vis-a-vis the PTO. In re Kaghan, 387 F.2d 398, 401, 156 USPQ 130, 132 (CCPA 1967). Second, if the PTO acts contrary to the MPEP, then that action is “illegal and of no effect.” Vitarelli v. Seaton, 359 U.S. 535, 546 (1959); Service v. Dulles, 354 U.S. 363, 388 (1957). It’s not binding on the agency in the sense that the agency can change its regulations for its own employees very readily.

    Effect on the Board: “An interpretative rule binds an agency’s employees, including its ALJs.” Yale-New Haven Hospital v. Leavitt, 470 F.3d 71, 80 (2nd Cir. 2006). For example, the whole Bilski fiasco started when a panel of rogue elephants on the Board illegally ignored the MPEP’s § 101 guidelines (MPEP § 2106) and went off on its own tangent. If Board members disagreed with their boss, they should have worked through the process to have the MPEP revised, not gone vigilante.

    Effect on the public: The President’s Final Bulletin on Agency Good Guidance Practices and 5 U.S.C. § 552(a) instruct that an agency staff manual cannot bind the public or “adversely affect any member of the public,” except to the degree it is a valid interpretative rule, validly promulgated with the requirements of the Paperwork Reduction Act, Executive Order 12866 (as amended), and Good Guidance. That is a really narrow set of exceptions, that the PTO hasn’t even attempted to comply with. The Office of General Counsel and Office of Patent Legal Administration apparently are populated with a very high percentage of scofflaws.

    Effect on courts: On substantive issues, the PTO has no substantive rule making authority, so MPEP has no effect on courts (except the handful of narrow issues where statute grants narrow rule making authority). On procedural issues against the PTO (e.g., the sets of findings that have to be set forth in writing in Office Actions, in Chapter 2100), the MPEP is binding against agency employees in the two senses I discussed above. On procedural issues against applicants (e.g., restrictions), the MPEP has only the advisory effect of an “interpretative” rule — that is, if you comply, the PTO has to grant your request, and if you advance an alternative interpretation of a rule or requirement, the PTO cannot disallow you from advancing that alternative.

    I’ll let 6′s remark to me stand or fall on its own.

  37. “Amen. I’ve now found common ground with Mooney”

    Znutar,

    I too am afraid (and holding my nose) that I must agree whole heartedly with MM that Chapter 800 of the MPEP is “gobbledygook” or as I call it, “written in a language other than English.” You can find in Chapter 800 something to support any examiner position on restrictions/elections, including mutually inconsistent positions.

  38. “The PTO’s interpretation of the terms ‘independent’ and ‘distinct’ created a contradiction in the statute that required them to interpret the term “and” in the statute?”

    Your homework assignment for tonight is to read MPEP 802.01.

  39. “…you’re presumably attempting to counter the point that burden is not necessary.”

    You’re the only one who made that point. And you were wrong.

    “It sounds like he did, actually.”

    I’m sure he had as much of a clue as you have.

    LOL

    “What if the Markush group includes a computer, a tennis ball, and cyclohexane? Restriction still not proper?”

    Not proper. Read Mr. Wegner’s comments on the proposed Markush rules. You might learn something. Something you could pass on to your students instead of the misinformation you’re spewing here.

  40. There was an explanation of the PTO’s interpretation in the MPEP.

    The PTO’s interpretation of the terms “independent” and “distinct” created a contradiction in the statute that required them to interpret the term “and” in the statute?

    Anyone here still want to insist that the MPEP is legally binding in any meaningful way?

    Do you think he even had a clue as to what “restriction” and/or “Markush” meant?

    It sounds like he did, actually. A Markush claim is nothing but a fancy way of shoehorning several independent claims into a single independent claim when you can’t think of a general term for the members of the Markush group. What if the Markush group includes a computer, a tennis ball, and cyclohexane? Restriction still not proper?

  41. Dudas is a sympton of a much larger problem we have. MM is another one.

    Who is “we”, Martin? You and your nurse?

  42. Federal Circuit, 1978, eh? Excellent vintage.

    Even so, the part you quoted from that case says nothing about requiring burden. I agree that burden is not sufficient, but you’re presumably attempting to counter the point that burden is not necessary.

    If the “statutory rights are paramount”, then the PTO’s right to restrict based on the mere presence of two claimed inventions must be paramount.

  43. “After all, isn’t he the one who oversaw the change to MPEP §803.02, to the effect that Examiners can restrict between alternatives in a Markush group?”

    Do you think he even had a clue as to what “restriction” and/or “Markush” meant? The lifers over there made that change, and as he didn’t know his elbow from a hole in the ground, he was none the wiser.

  44. “How do you get around the independent AND distinct to which the USPTO only interprets it to mean independent or distinct?”

    Because independent means the inventions are unrelated. Distinct means they are related (e.g. method and apparatus, subcombination/combination) but patentable over one another.

    So no two inventions can be independent (unrelated) AND distinct (related), so the PTO interprets “and” in section 121 as “or.” Otherwise, restriction would be impossible.

    There was an explanation of the PTO’s interpretation in the MPEP. Not sure if it’s still in the current edition.

  45. I have had some success in having restrictions withdrawn either by directly presenting arguments in a response or through petition. Call your tech center’s quality assurance specialist for advise when a restriction appears to have been improperly made.

    Examiners must show both distinctness and burden to justify a restriction requirement. Burden alone is not sufficient.

    […] Even though the statute allows the applicant to claim his invention as he sees fit, it is recognized that the PTO must have some means for controlling such administrative matters as examiner caseloads and the amount of searching done per filing fee. But, in drawing priorities between the Commissioner as administrator and the applicant as beneficiary of his statutory rights, we conclude that the statutory rights are paramount.
    In re Weber, 580 F.2d 455 (Fed. Cir. 1978)

  46. Bizarre world isn’t it JustAQuickThought. I wonder if all Dudas cared about was money or getting ahead and was willing to burn down and follow whatever orders he was given. Now he is just continuing to try to exploit he position as a former PTO head.

    Dudas is a sympton of a much larger problem we have. MM is another one.

  47. After all, isn’t he the one who oversaw the change to MPEP §803.02, to the effect that Examiners can restrict between alternatives in a Markush group?

    Other than claim fees, what’s the difference between a Markush group and:

    “Claim 6 which is A+B
    Claim 7 which is A+C
    Claim 8 which is A+D
    Claim 9 which is A+E”?

  48. Why is the rise in restrictions, particularly in TC 1600, a surprise to anyone, muchless Dudas?

    After all, isn’t he the one who oversaw the change to MPEP §803.02, to the effect that Examiners can restrict between alternatives in a Markush group?

  49. How do you get around the independent AND distinct to which the USPTO only interprets it to mean independent or distinct?

    I don’t understand the question to which you are asking it of me to mean.

  50. “By the way, I answered your stoopit question about IANAE’s comment.”

    Thanks.

    “Did you have a reason for asking it?”

    Do you mean other than to demonstrate that IANAE is an i6noramus? Not particularly.

  51. IANAE

    How do you get around the independent AND distinct to which the USPTO only interprets it to mean independent or distinct?

    Former Examiner

    You are right on the money. It amazes me when an Examiner issues a restriction requirement that doesn’t classify the different claims as you indicate above.

    It amazes me even more when the Examiner classifies all claims with the same classification and then still issues a restriction requirement failing to articulate any burden

  52. “Species election, not restriction, but I’ll assume that was a slip.”

    MPEP 802.02: Restriction is the practice of requiring an applicant to elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, a species within a genus) for examination when two or more independent inventions and/or two or more distinct inventions are claimed in an application.

  53. BM Mr. Boundy might have a different answer.

    That’s nice.

    By the way, I answered your stoopit question about IANAE’s comment. Did you have a reason for asking it?

  54. 6 says “yes, usually you’d need to be able to ID a reasonable genus to which they all belong to make a restriction.”

    Species election, not restriction, but I’ll assume that was a slip.

    So where’s your support? Why do you need to be able to ID a reasonable genus to force a species election? Logic says you should, but logic is usually of no avail. I’m looking for case law, or MPEP section, that requires species elections to be limited to those species of a particular genus. A species election between FIG. 1 (a robot), FIG. 2 (a first drive mechanism), FIG. 3 (a second alternative drive mechanism), FIG. 4 (a clutch usable in conjunction with either drive mechanism), and FIG. 5 (a flowchart showing a method of controlling the robot) should not be proper, but I don’t see authority to say so.

    In the hypothetical, claim 1 is to a robot having a drive mechanism, claim 2 limits the drive mechanism to that in FIG. 2, claim 3 limits the drive mechanism to that in FIG. 3, and claim 4 adds the further limitation of the clutch. If I elect the species of FIG. 1 I next have to identify the claims that read on FIG. 1. I say they all do, but I’ve had examiners say none do. If I elect the species of FIG. 2 I obviously get claim 2 and not claim 3. What about claims 1 and 4?

  55. “…but it’s not binding on the PTO as an administrative body”

    Mr. Boundy might have a different answer.

  56. It is binding on examiners.

    It may be binding on them per their terms of employment or internal quality review procedures (is it?), but it’s not binding on the PTO as an administrative body, nor on the courts with the power to review the decisions made by the PTO.

  57. “The sharp temper that let’s you know you are dealing with the real baboon.”

    The real baboon comes out whenever you demonstrate that one of his sockpuppets is a prosecution i6gnoramus.

    “…assuming you consider the MPEP to be a controlling authority (and I haven’t researched the case law).”

    The MPEP is not binding on applicants and practitioners. It is binding on examiners. And baboons.

  58. “Now let me pose a question that I’ve floated previously, but have never seen an answer to. Seems to me that if there is a species election requirement, it ought to be between species of some identifiable genus. I have never found good support for the argument that one cannot require a species election between things that don’t comprise an identifiable genus. Am I reading too much into the word “species?” Does the PTO attach a special meaning to it? ”

    Znutar, there is always a genus. Everything in the universe belongs to the genus “something in the universe”. However, to be more reasonable, yes, usually you’d need to be able to ID a reasonable genus to which they all belong to make a restriction.

    Boundy, you’re a tard, as usual.

  59. NAL …in other words – the actual statistics for the increase in restrictions are quite possibly very understated.

    Note the phrase “any given time period” in McKenzie’s comment.

    I used to get more telephonic restrictions than I do now.

  60. A fascinating rebuttal from Noise.

    Malcolm began the post with an implicit denial of illegality concerned with the rise of restrictions and closes with a management must do something because of lack of capacity and increase demand, failing to see that that “something” was the suggested illegality that he denied. Implicit in his denial was that something else was the cause – that something else is merely a wishlist and thus, the prima facie case you suggest cannot be established – unless Malcolm establishes a prima facie case through denial and contradiction. As I said – back up is needed for the wishlist.

    Actually, that’s not at all what you said. What you said was: “And that, of course, explains the rise in restriction requirements.” Please back up this conclusionary statement (in a non-bui manner). The statement you wanted Mr. Mooney to back up was completely separate from whatever it is that you’re discussing above. I believe this what you call a “red heron”? Or, perhaps, “obfuscation”?

    WAKE UP.

    Also interesting. For some reason, you feel it necessary to suggest that I am not fully alert. That may or not be true, but I don’t believe it supports any disagreement you have with Mr. Mooney. I believe this would be categorized as an ad hominem argument.

    At 03:41 the great and wonderful Oz, er, um, Malcolm punches the buttons on his smoke machine and conclusorily replies to the statement of “the PTO counts mere restriction requrements as “first actions” for purposes of avoiding patent term extensions for PTO delays.” :
    Nothing “mere” about many of these restriction requirements.

    Hmmm… Here you are “arguing” about a completely separate posting that is unrelated to the statement of Malcolm’s that you were challenging, and unrelated to my comment. Another red heron?

    Of course, in the best BUI, “many” may equal 3 out of the 21,911. Never mind the fact that the restriction rate was 3.1% (1000/32,000) in 1993, and moved to 52.2% (21,911/42,000) in 2008 (true capacity cannot be factored…

    Sorry. There might be a valid argument buried in there, but I’m too tired to try to extract it. It might have helped if you had not worn me out with the red herons and ad hominem distractions.

    And while Malcolm does provide some actual possibilities in his 04:59 PM post, (another victory for proper assailing), the laundry list has no real support in any factual study…

    Very interesting! This appears to be a concession that Malcolm did actually back up his statement, with the caveat that you are actually responsible for this. Congratulations! But, if this is the case, wasn’t your complaint at 8:41 groundless? Perhaps it’s just as well that I didn’t try to decipher the substantive part of your post – the rest of the post is not suggesting a high degree of credibility…

  61. IANAE Ever get a restriction in a design application?

    No, but that’s because I don’t do design apps.

  62. Establishing “burden” is a meaningless requirement. Using separate classification is one of the great games played in restriction practice.

    MPEP 808.02 Establishing Burden provides:

    Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) – § 806.06, the examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required. Thus the examiner must show by appropriate explanation one of the following:

    A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.

    Simple hypothetical (don’t take the details below too literally):

    Say you claim a car and a truck. The Examiner restricts and establishes burden by separate classification. The Examiner tells you that cars are in class XYZ and trucks are in class PDQ. Thus, it is shown that they have attained a separate status in the art and searching would be a burden.

    So you look up the classes. Class XYZ is “four wheeled vehicles.” Class PDQ is “modes of transportation.” Basically there is much overlap in the classes and they are open to interpretation/fudging. So how did your truck end up in class XYZ and your car in class PDQ? Because that is where the Examiner put them when they were drafting their requirement for restriction. A classification specialist is not doing this. Had the Examiner put them both XYZ it would not have supported their statement of burden. The classification is arbitrary on the part of the Examiner and the reasoning is circular.

  63. >>Go eff yourself, JD.

    The sharp temper that let’s you know you are dealing with the real baboon.

  64. …in other words – the actual statistics for the increase in restrictions are quite possibly very understated.

  65. I think it is hard to get complete information as to the number of restrictions imposed by the PTO during any given time period. If a restriction is done by telephone and is included in a First Action on the Merits, then it does not show up as a resriction in the PTO statistics.

  66. For the record, I’ve never received a RR without at least a prima facie showing of the burden.

    Ever get a restriction in a design application?

  67. “35 USC 132(a): Whenever, on examination,”

    Whoa wait – what was that?

    “on examination”

    35 USC 132(a) constinues: “…and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined.”

    Whoa wait – what was that?

    “…shall be reexamined.”

    So this means the first examination, even for requirements should be actual “examinations”, and should be complete, how else would the second be a reexamination (as opposed to a continued examination).

    Still waiting for that dazzling plain language rendition wherein examination means partial or arbitrarily selective examination…

  68. In other words, the PTO does not have to issue a FAOM within 14 months.

    Gosh, that’s a real revelation, JD. What else is the PTO not required to do?

    patentably distinct inventions may be restricted without the examiner showing burden.”

    Do you agree with this state, Malcolm?

    35 USC 121: “If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions.”

    I don’t see anything about a burden in there.

    But MPEP 803.I. says that a “a serious burden” if unrestricted is a criteria for restriction. In addition, “a serious burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02.” Seems like a pretty low hurdle.

    So the answer to the question appears to be “no”, assuming you consider the MPEP to be a controlling authority (and I haven’t researched the case law). Of course, many commenters here consider the MPEP to be pile of crxp so I’m absolutely certain they’ll vehemently disagree with my interpretation.

    For the record, I’ve never received a RR without at least a prima facie showing of the burden.

  69. “Once again, patentably distinct inventions may be restricted without the examiner showing burden.”

    Do you agree with this state, Malcolm?

  70. 37 CFR § 1.703 Period of adjustment of patent term due to examination delay.

    (a) The period of adjustment under § 1.702(a) is the sum of the following periods:

    (1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first.

    35 USC 132(a): Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made

    A restriction requirement is a requirement. There is nothing in Rule 703(a) or section 132 that prevents the PTO from considering a restriction requirement as being a requirement that meets the 14 month deadline for PTA. In other words, the PTO does not have to issue a FAOM within 14 months.

  71. The operative word in section 121 is “may” require restriction, not must require restriction.

    Nobody argued otherwise, JD.

    I hope it’s just correspondence school you’re teaching.

    Go eff yourself, JD.

  72. The operative word in section 121 is “may” require restriction, not must require restriction. The MPEP contains instructions to examiners and outlines the current procedures which the examiners are required to follow in appropriate cases in the normal examination of a patent application. And the MPEP instructs the examiners if there is no SERIOUS burden to search and examine all of the claims, they cannot issue a restriction requirement.

    I hope it’s just correspondence school you’re teaching.

    Sheesh.

  73. NAL Malcolm began the post with an implicit denial of illegality

    That’s because restriction is legal.

    Another statement of Malcolm’s that needs backup is his reply “A rational person would not be surprised that the Office counts Restriction Requirements as a First Action for the purpose of determining whether the Office or the patentee is delaying prosecution because that is the rational way to count them.”

    This is merely circular argument,

    No, it’s not. It’s a statement of fact. If you think it’s “irrational” to consider the timing of restriction requirements and responses thereto in determining whether the applicant or PTO is delaying prosecution, then explain why it’s irrational. Try to do it without using arbitrarily capitalized words or acronyms that you pull out of your bxtt.

    For the record, I’ll note that we agree that it is not surprising that the PTO considers restrictions to be a first action. You seem to believe that the PTO does this because … it is evil? Because it hates patent applicants? I’ve provided a rational explanation to explain the PTO’s position. What’s yours?

    And while Malcolm does provide some actual possibilities in his 04:59 PM post, (another victory for proper assailing), the laundry list has no real support in any factual study

    Which fact do you consider to be in doubt? I think Dennis has posted studies confirming each of the facts I’ve cited. If you really doubt one of the facts, then tell me which one you really doubt is true and I’ll see if I can find a cite. I’ll note that you’re the only one here who seems skeptical.

  74. I’ll see your MPEP and raise you a USC.

    35 USC 121: If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions.

    Period.

  75. “That’s not a restriction for undue burden, it’s a restriction for claiming two different inventions. They don’t have to search two inventions in the same application no matter what.”

    I hope you’re not teaching patent prosecution. In the unfortunate event you are, I hope you’re giving every student you ever taught a tuition refund.

  76. “Once again, patentably distinct inventions may be restricted without the examiner showing burden.”

    False.

    MPEP 803: There are TWO criteria for a proper requirement for restriction between patentably distinct inventions: A) The inventions must be independent (see MPEP § 802.01, § 806.06, § 808.01) or distinct as claimed (see MPEP § 806.05 – § 806.05(j)); AND (B) There would be a serious burden on the examiner if restriction is not required (see MPEP § 803.02, § 808, and § 808.02).

    MPEP 808: Every requirement to restrict has two aspects: (A) the reasons (as distinguished from the mere statement of conclusion) why each invention as claimed is either independent or distinct from the other(s); AND (B) the reasons why there would be a serious burden on the examiner if restriction is not required, i.e., the reasons for insisting upon restriction therebetween as set forth in the following sections.

    The examiner MUST demonstrate that searching and examining all of the claims would be a SERIOUS burden.

    MPEP 803: If the search and examination of all the claims in an application can be made without serious burden, the examiner must examine them on the merits, EVEN THOUGH they include claims to independent or distinct inventions.

  77. However, if the Examiner must search for all of the limitations A-E why is there any additional burden to examine
    Claim 6 which is A+B
    Claim 7 which is A+C
    Claim 8 which is A+D
    Claim 9 which is A+E.

    At least in the mechanical arts, there really isn’t.

    Once again, patentably distinct inventions may be restricted without the examiner showing burden. If you have two patentably distinct inventions (e.g. A+B and A+C), you should be paying two sets of fees and the examiner should get two sets of counts.

    In your case, you might weasel out of it because you have a claim to A alone, but you should expect a justified restriction if you only file claims 6-9 with 3-5 depending from 6.

  78. Here is another problem with restriction practice.

    I have one claim set that has

    Claim 1 includes A
    Claim 2 depends from 1 and adds B
    Claim 3 depends from 2 and adds C
    Claim 4 depends from 3 and adds D
    Claim 5 depends from 4 and adds E.

    Typically these will never get restricted. However, if the Examiner must search for all of the limitations A-E why is there any additional burden to examine
    Claim 6 which is A+B
    Claim 7 which is A+C
    Claim 8 which is A+D
    Claim 9 which is A+E.

    At least in the mechanical arts, there really isn’t.
    So if I elect claims 1-5 or at least claim 5 for prosecution the Examiner must search for ALL of A-E.

  79. I am so glad Dudas is gone. What a disaster the patent office has been the last few years, with the restriction explosion the least of the problems.

  80. Of course, it is also much easier to simply refer to MM as a baboon. It is quite accurate as well.

  81. Oliver Sacks = rare/usual/whatever – (I – He – We) – seriously, dude, get some meds for that condition.

    Malcolm began the post with an implicit denial of illegality concerned with the rise of restrictions and closes with a management must do something because of lack of capacity and increase demand, failing to see that that “something” was the suggested illegality that he denied. Implicit in his denial was that something else was the cause – that something else is merely a wishlist and thus, the prima facie case you suggest cannot be established – unless Malcolm establishes a prima facie case through denial and contradiction. As I said – back up is needed for the wishlist.

    WAKE UP.

    At 03:41 the great and wonderful Oz, er, um, Malcolm punches the buttons on his smoke machine and conclusorily replies to the statement of “the PTO counts mere restriction requrements as “first actions” for purposes of avoiding patent term extensions for PTO delays.” :

    Nothing “mere” about many of these restriction requirements.

    Of course, in the best BUI, “many” may equal 3 out of the 21,911. Never mind the fact that the restriction rate was 3.1% (1000/32,000) in 1993, and moved to 52.2% (21,911/42,000) in 2008 (true capacity cannot be factored as the number of examiners making that 31.3% increase in first office actions ((42,000 – 32,000)/32,000) is not revealed – but let’s hand waive that).

    To be credible, let’s compare the 31.3 percent increase in Office Actions to what was in those Office Actions: The increase in actual restrictions was 2,091.1% ((21,911 – 1,000)/1,000).

    You are trying to tell me that you found the more than two orders of magnitude difference to be somehow linkable to applications sitting on the shelf, not even being examined (sorry – the 31.3% FAOM increase IS linked to the 2,091.1% restriction increase because that’s where those restrictions came from.)?

    The misleading is being done by Malcolm who wants to conflate unexamined applications into the mix and ignore that the FAOM number is a solid fact.

    And while Malcolm does provide some actual possibilities in his 04:59 PM post, (another victory for proper assailing), the laundry list has no real support in any factual study (drawing conclusions from mere wishes and without backup is what got that wonderful Office attorney in trouble with Michel – as I noted).

    Another statement of Malcolm’s that needs backup is his reply “A rational person would not be surprised that the Office counts Restriction Requirements as a First Action for the purpose of determining whether the Office or the patentee is delaying prosecution because that is the rational way to count them.”

    This is merely circular argument, applying BUI to omit “on the merits” from “First Action”, and using “them” to include what I implicated should not be included. The point was that restriction practice for office-political ends was in line with the deceitful Office operations over that time period. To count “them” as a count for examination on the merits is duplicitous – just as wearing a sockpuppet and agreeing with I-HE-WE, and just as taking issue with my stand and then contradicting yourself with a well-the-office-had-to-do-something.

    “Making it LOOK like things were happening” when things were not happening was exactly in line with my statement that Malcolm disparaged.

    So…
    “And that, of course, explains the rise in restriction requirements.”
    STILL needs back up (in a non-bui manner).

    …any statement, any time…

    For factual support see my post re Hal Wegner (whom Malcolm also slights) and obtain the manifesto.

    For additional factual support, I will heed the postings of the respected David Boundy.

  82. My observation over the last several years:
    1. increased restriction requirements have also been driven by the increased need to provide alternative exemplary embodiments in the disclosure, which often are flags that draw species restrictions, even though the examiner never searches or analyzes the independent claim that is generic to all disclosed embodiments;
    2. restriction requirements have been issued wherein the examiner identified each and every dependent claim under an independent claim as a separate group, providing the statement that each requires a different search and that any such search for any dependent claimed feature would be a burden, this is without having ever searched or analyzed the independent claim from which they depend; and
    3. clients have been extremely frustrated with restriction requirements over the last 2 to 3 years and have increasingly voluntarily abandoned applications when encountering an examiner that makes every claim a different group and every figure a different species.

    The PCT and EPO unity of invention requirements make more sense than the current US restriction practice. I don’t mind getting a well reasoned restriction requirement based on the substance of the claim recitations such as where the independent claims recite different combination of elements or steps or for that matter a method that can be practiced by devices other than the device independent claim. It seems that before a restriction requirement should be issued, the examiner should be required to perform an initial search and analysis on the independent claims with regard to 102 and 103, and then determine the groups and species based on such, and therefore the restriction requirement would be based on facts, and not mere speculation that the search and analysis of the claims would be overly burdensome.

  83. We all know that in 95% of these restriction requirements, the Examiner would NEVER hold that invention 1 is PATENTABLE over invention 2.

    We all know just as well that in 95% of these restriction requirements, the applicant would never argue on the record that invention 1 is obvious over invention 2.

    Bearing in mind that the examiner hasn’t searched either “invention” at the time he requires restriction, and he doesn’t really have to commit to whether the inventions are mutually obvious, it’s a bit of a catch-22 for the applicant.

    Undue burden is much easier to argue around. Just put all of invention 2 into claims depending from invention 1.

  84. You guys are forgetting patentably distinct. The variants must be PATENTABLY DISTINCT in light of one another. That’s where the restriction practice falls apart. We all know that in 95% of these restriction requirements, the Examiner would NEVER hold that invention 1 is PATENTABLE over invention 2.

    Restriction shouldn’t be allowed unless it’s in a separate class that the Examiner won’t search for invention 1.

  85. Last fall I got a 1000+ way restriction requirement on a 3/20 claim compliant electrical case.

    Okay?

    All of the “inventions” were in the same class and subclass. Exactly how is searching one class/subclass an undue burden on an Examiner.

    We need restriction practice appeals, and if the restriction is overturned, there was no first action; the delay clock is still running.

  86. “Restriction practice is a waste”,

    The type of example you give (e.g., ind. recites AB with a dependent of C being restricted from an ind reciting AC with a dependent of B) can often be a proper restriction, though it may later be subject to rejoinder (which is something that many examiners, as well as attorneys, miss).

    If claim 1 (AB) does not need limitation C for patentability and claim 10 (AC) does not B for patentability, these claims are properly restrictable. At least initially.

    Your filing of claim 1 without the inclusion of C indicates that you (the applicant) believes that C is not needed for the claim to be allowable. Right? Why would you file it without C if you thought C was necessary for allowance, anyway? :) Similar reasoning for claim 10 (AC) not including B. One could even argue, if one wanted to, that it is not necessary to search for C in examining claim 1 if claim 1 is allowable.
    If C is found necessary to be allowable, then it would be necessary for rejoinder.

    As to your comment of “Examiner responded with ‘the traversal was not found persuasive but the restriction requirement has been withdrawn to expedite prosecution.’”, this sounds an awful lot like attorneys comment that the art rejections were not agreed with but “in order to expedite prosecution” the claims are totally rewritten with new limitations added. Sound familiar??

    MVS

  87. Bartmans: “It appears that the increase in restriction requirements is more a politically driven change in examining, thereby indeed increasing the overall income for the USPTO.”

    That’s hardly believable. Examiners issue restrictions to lessen their burden, which has increased over time.

    There’s nothing wrong with a reasonable and well written restriction requirement. If the separate inventions are obvious variants of each other, then rejoinder should be in order (for certain types of restrictions). Otherwise, a good test is whether ODP will be applicable between an application and its divisional – if an ODP is likely, then a restriction may be improper.

  88. Contact me. I don’t need you to connect your real name to your nom de guerre, but I want to talk to a few people. Google “David Boundy Cantor” and call the 212 area code number.

  89. David Boundy: do you have a serial number where we can look at one of your petitions?

  90. By leaving in the dependent claims, the Examiner is still required to find those limitations in any rejection of those claims.

    That’s not a restriction for undue burden, it’s a restriction for claiming two different inventions. They don’t have to search two inventions in the same application no matter what.

    the Examiner responded with “the traversal was not found persuasive but the restriction requirement has been withdrawn to expedite prosecution.” If that isn’t a laughable statement.

    That is an unusual statement indeed. I wonder where he picked it up.

  91. Restriction practice is a waste -

    If you got the 5-element list, then can and should petition to have the restriction vacated and a clock-reset, not for mere rejoinder.

  92. Also, Examiner’s clearly do not pay attention to what they are restricting. They just look at the independents and instantly restrict between them.

    I will typically get restrictions between three separate independent claims that have different limitations A, B and C. Claim set that includes A as the independent will then have a dependent that includes B and a further dependent that includes C.

    However, when they restrict, they only restrict between the independent claims indicating they have patentably distinct inventions because of limitations A, B and C and that there would be a burden to search for all three different limitations.

    Now, I hope everyone sees where I am going…

    By leaving in the dependent claims, the Examiner is still required to find those limitations in any rejection of those claims.

  93. alphastring – is correct, in the mechanical arts, there is never a burden established. The only thing the examiner’s due is put in the “template” that lists the potential 5 areas of burden (they are listed a-e and one examiner actually told me that it is true boiler plate in their shell document). Never do they actually analyze the claims and see what they are restricting.

    Further, I had another examiner give me a species restriction based on the listing of the drawings identifying different drawings as “another embodiment” without even looking at the drawings. When in fact, they were not different embodiments, but one of the drawings was an exploded illustration of the other in assembled form.

    Restriction practice is a joke and Examiner’s use it merely to delay having to do any actual work.

    Also, I have been successful on at least 10 petitions.

    The other thing I find interesting is that I have recently recieved 4 office actions where I traversed the restriction requirement and the Examiner responded with “the traversal was not found persuasive but the restriction requirement has been withdrawn to expedite prosecution.” If that isn’t a laughable statement.

  94. Another significant factor in the rise of restrictions is that the Deputy Commissioner for Examination Policy out and out broke the law by issuing a memo to the examining corps in April 2007 that gave examiners essentially carte blanche to restrict without stating reasons. The memo was totally inaccessable to the public until the spring of 2009 after I complained. The memo’s content violated the Patent Act and Administrative Procedure Act. The process by which the PTO issued the memo only internally and kept it hidden from the public, and failed to follow rule making procedure law, violated the Administrative Procedure Act, the Paperwork Reduction Act, and Executive Order 12866 and constitutional due process.

    The PTO withdrew the memo a couple months ago. Thus, many of the restrictions you may have received between April 2007 and November 2009 can be traversed on the basis that the PTO acted outside its legal authority, and the PTO must rejoin the claims.

    Contact me if you want more info. I’m easily googleable.

    David Boundy

  95. What I like about the post from Ideas is that the pseudonym at its foot is irrelevant. The force of the posting is undiminished. It makes no difference, even if it does emanate from the entity going by the pseudonym of Malcolm Mooney. A response of calling Ideas rude names won’t impress me much.

    I’m bracing myself for the answer that, Ideas, a baboon at a keyboard will come up with one good posting every generation. But all the others are still bad. At which point I will sadly shake my head in bewilderment.

  96. “And that, of course, explains the rise in restriction requirements.”

    Please back up this conclusionary statement (in a non-bui manner).

    Actually, I think he backed up this conclusion reasonably well in his original post. Note that you have to read the stuff he put before the conclusion. (This is why we call it a conclusion, incidentally.) If I understood Mr. Mooney correctly, he posits that a lack of capacity in that particular art unit, coupled with an increase in demand, required management to do something to make it look like things were happening. The result was a tacit change in policy towrads an excessive use of restriction requirements. Do I have this right, Mr. Mooney?

    Noise, I’d have to say that Mr. Mooney has provided a plausible prima facie case to support his conclusion. If you really cared about reasoned debate, the proper response on your part would be to either demonstrate that one or more of his factual premises is incorrect, or provide an alternative explanation with better factual support.

    Or, you could call him a baboon.

  97. I believe the rise in restriction requirments is the direct result of the rise in the number of claims that attornesy file. The rise in the number of claims that attorneys file is a direct result of Festo.

  98. “And that, of course, explains the rise in restriction requirements.”

    Please back up this conclusionary statement (in a non-bui manner).

    …any statement, any time…

  99. The basis of a restriction is that multiple inventions are claimed, and the examiner is requiring the applicant to select one of the inventions for examination. If group I if allowed would be classified in subclass A and group II if allowed would be classified in subclass B, this is evidence that the two groups are distinct inventions.

  100. given what alphstring mentions, what is the actual legal basis of a restriction based on searching different classes?

    does the holding in KSR remove this, as a phosita is no olonger constrained to only look in a single class?

    in other words, is it not common sense now to search for a solution to a problem, rather than search within a class? if it is reasonable for a phosita, how is it not reasonable for the examiner?

  101. One poster mentioned having success challenging a restriction requirement on petition, any others?

    I have only seen one or two biotech cases that would have created a search burden, the others have been laughable – supported by the argument that the inventions would require searches in different classifications, only to get a 103 combination of references, where the references are from the different classifications.

    And my personal favorite is receiving *serial* piecemeal restriction requirements, particularly in simple mechanical cases.

  102. One thing that has not yet been said in this discussion is that – apparently – the US stands alone in the world in this restriction practice. I file my (biotech) applications all over the world and in many cases the only country that forces me to file divisional applications is the US. In many cases the PCT application (searched by the EPO) did not mention lack of unity of invention, but upon entering in the US national phase suddenly the US Examiner finds that the invention falls apart into several groups of invention.
    Basis for most of the restriction requirements that I am facing is the Examiner’s opinion that the inventions fall into different US classification classes, which automatically warrants a restriction. Was this not equally true in the old days? It appears that the increase in restriction requirements is more a politically driven change in examining, thereby indeed increasing the overall income for the USPTO.

  103. “The MPEP section on Restriction practice is gobbledygook.”

    Amen. I’ve now found common ground with Mooney on two things.

    Now let me pose a question that I’ve floated previously, but have never seen an answer to. Seems to me that if there is a species election requirement, it ought to be between species of some identifiable genus. I have never found good support for the argument that one cannot require a species election between things that don’t comprise an identifiable genus. Am I reading too much into the word “species?” Does the PTO attach a special meaning to it?

  104. I think there is one point that hasn’t been addressed yet. As catagories of art age the probability that novelty will be found in the genus as opposed to the species starts falling because of the larger prior art available. Things start to become more improvements over each other then brand new concepts.

    Since most times restrictions are sent before any search wouldn’t this logically lead to more restrictions as examiners start to assume the genus will found? If you then lay out claims with a generic independent with distinct branches for each species the inclination, especially in older arts, would be that one is going to have to search multiple inventions to identify allowable subject matter.

    An interesting study might be the percentage of restrictions sent for different arts over time. I would suspect they all might increase as the art ages.

  105. I wonder how dudas got a dataset for this. It was on his watch that PTO became more opaque (by making it harder to use PAIR). Kappos wants more transparency but it will be a while before it’s there.

  106. Paul, let’s not look a gift horse in the mouth. There are real advantages in deferred prosecution which is what you get with a liberal restriction practice. Moreover, you get the statutory presumptions of Section 121, which essentially allows you to double-patent without a terminal disclaimer, multiply the licensable/enforceable patents and be able to sell the “independent” patents with the businesses to which they pertain without having them rendered unenforceable.

    Argggh! You would say. But the unscrupulous have nothing but praise for liberal restriction practice.

  107. “Such as simply paying examiners more when there is really more work due to more and different claims?”

    That’s what we do currently, you just have to file a div…

    “Imagine a business selling sectional sofas, in which any employee is allowed by union rules to decide that any sofa is too much work, or not really a single item, and can order that it be cut up into 10 separate pieces, to be separately handled and put onto ten separate trucks, to be separately eventually delivered to the same customer.”

    Now imagine that same situation where there are rules governing when the employees can take such action and you have the same situation as in the PTO.


    The only reason the patent system can operate this way is that too many clients are too uninformed to realize that a patent application cut up into ten patent applications and patents to get the same claims has no more enforcement value than if those claims were in a single patent.”

    Also because of a tiny little thing called “the law”.

    “Plus, the examiners and attorneys involved may not even want to complain, because they are financially benefited yet doing much less work with plural patent applications having identical specifications. ”

    Or maybe they do want to complain and nobody cares?

    I’m in your patent office restrictin’ on your applications.

  108. Surely there can be a more rational approach to restriction/divisional practice. Such as simply paying examiners more when there is really more work due to more and different claims?
    Imagine a business selling sectional sofas, in which any employee is allowed by union rules to decide that any sofa is too much work, or not really a single item, and can order that it be cut up into 10 separate pieces, to be separately handled and put onto ten separate trucks, to be separately eventually delivered to the same customer. The customer still gets only one sectional sofa, even though it is now in ten pieces, delivered at widely different times, with lots of additional delays, and costs the customer nearly ten times as much.
    The only reason the patent system can operate this way is that too many clients are too uninformed to realize that a patent application cut up into ten patent applications and patents to get the same claims has no more enforcement value than if those claims were in a single patent. Plus, the examiners and attorneys involved may not even want to complain, because they are financially benefited yet doing much less work with plural patent applications having identical specifications.

  109. JV My recollection was that the proposed continutations/claim cont rules allowed filing an unlimited number of divisional applications.

    I seem to recall there being a provision about *all* the divisionals having to be filed within some time period relating to the issuance of the parent or the issuance of the restriction requirement in the parent. Or something like that. Maybe I’m confusing with the rules about the cons? Oy, it makes my stomach hurt to think about it.

  110. EG: “Very interesting. So patent issuances fell at Foley after Dudas joined?”

    Appears so. Of course, it’s laughable to believe Dudas actually cause Foley’s # to drop. Most patents issued this past year were filed and prosecuted well before his arrival at Foley. Obviously, I’m just having some fun at the good Director’s expense.

  111. “But as I recall, when a similar proposal was floated in the US, many heads exploded until litigation put an end to concept.”

    Which proposal was similar to the EPO time limit for filing divisionals? My recollection was that the proposed continutations/claim cont rules allowed filing an unlimited number of divisional applications.

  112. Steve: This is an area where USPTO could do a great service to everyone (applicants, practitioners and Examiners) by revamping materials and focusing on better training.

    No doubt about that. The MPEP section on Restriction practice is gobbledygook.

    Anon: So you have no objection to being denied a search and examination, after having paid fees for the same, including additional fees for exceeding 20/3 claims, with no recourse?

    There’s always a recourse, as Steve points out, unless you’ve waived it (as you are required to do to in certain instances, e.g., accelerated exam). But it’s more important to advise clients as to the type and scope of claims they can expect to have examined without restriction. Then they can make an informed decision about how much to pay and what to pursue.

    Again, nothing in the US as as onerous as what is being imposed by the EPO, and the US policy has been slowly evolving in one direction for many years.

    NAL Is there any rational person who would be surprised or shocked that the Office would act that way?

    A rational person would not be surprised that the Office counts Restriction Requirements as a First Action for the purpose of determining whether the Office or the patentee is delaying prosecution because that is the rational way to count them.

    I suspect that the number of restriction requirements is closely related to the the number of applications being filed, the number of claims, and the number of Markush groups in the claims, all of which I believe increased substantially from 1993 to 2008 (along with the size of applications and the number of large Tables being cited in Applications which refer to hundreds, thousands, or tens of thousands of distinct biomolecules).

    The numbers presented above are misleading and may give the impression that the number of applications filed in 1600 has increased only from 32,000 to 42,000. Correct me if I’m wrong, but the small increase in the number of “first office actions” is really the most interesting number in that study. It shows how little the capacity of the PTO has changed in the past 15 years at the same time that the demand for prosecution has risen dramatically. And that, of course, explains the rise in restriction requirements.

    I’m sure the great genius Hal Wegner would agree.

  113. I find the statement about the huge rise in restrictions in 2008 ironic as this was on Dudas’ watch. Could the negative impact of the former Dudas regime have been the reason for this huge rise (tongue in cheek)?

  114. A good number of restriction requirements, though certainly not all, coming out of 1600 are inappropriate. I have had Examiners stoop to requiring restriction on virtually every R group variable in a chemical case, essentially vitiating any rational claim structure. One memorable restriction was an approximately 1000-way restriction requirement. Generally I’m able to negotiate my way to a reasonable and not irrational restriction, though on a couple of occasions I was reduced to proceeding by petition (and prevailed). I find the restriction requirement training materials on the USPTO website to be poor (one-sided examples, lack of discussion of real world problems, etc.), and I presume that as a result I find Examiner understanding of restriction practice to be uneven and often poor. I’ve also had Examiners confused about the difference between a restriction and a species election. This is an area where USPTO could do a great service to everyone (applicants, practitioners and Examiners) by revamping materials and focusing on better training.

  115. MM: So Examiners should be required to search and examine every invention in every claim set that’s filed?

    So you have no objection to being denied a search and examination, after having paid fees for the same, including additional fees for exceeding 20/3 claims, with no recourse?

    You’re a better man than I, Gunga Din.

  116. Is there any rational person who would be surprised or shocked that the Office would act that way?

    Any rational person beside IANAE, I mean.

    Wow. First you agree with me on something, now you think I’m rational.

    I’m not surprised the PTO would act this way, though. I’m a little surprised that they’d be motivated at all by term extensions, but I’m not the least bit surprised that examiners want multiple counts instead of just one for examining 150 claims. They’re adjusting their own time-widgets. You should be proud of them.

  117. Paul F. Morgan,

    Is there any rational person who would be surprised or shocked that the Office would act that way?

    Any rational person beside IANAE, I mean.

    The Manifesto I posted on earlier does not have a direct link, but Hal Wegner can be reached at
    hwegner@foley.com – Perhaps a polite request for the attachment to the Friday, February 26, 2010 8:11 AM email of “Coming to D.C. on Monday, Ph.D. PTO Chief Economist Stuart Graham faces his first Challenge from an Economist” will result in a copy of Ph.D. economist Dr. Richard B. Belzer’s detailed expose.

  118. Paul: hundreds of thousands of unnecessary forced separate additional [divisional] patent applications

    Unnecessary? Hmm. So Examiners should be required to search and examine every invention in every claim set that’s filed?

    the PTO counts mere restriction requrements as “first actions” for purposes of avoiding patent term extensions for PTO delays.

    Nothing “mere” about many of these restriction requirements.

    huge true backlog increase,

    The EPO appears to have come up with an interesting solution: you have to file all over divisionals by a set date. Actually, it remains to be seen whether this is a solution to the backlog problem or not … But as I recall, when a similar proposal was floated in the US, many heads exploded until litigation put an end to concept. Temporarily, at least.

  119. One point is that restriction requirements increase the cost of patenting the claimed invention(s), assuming the applicant wants to keep all of the claims. The increased costs are on both the front-end (prosecution costs) and the back-end (maintenance fees).

  120. Besides the huge true backlog increase, paperwork and cost burdens [on both the public and the PTO] from hundreds of thousands of unnecessary forced separate additional [divisional] patent applications, the PTO counts mere restriction requrements as “first actions” for purposes of avoiding patent term extensions for PTO delays.

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