Restriction. AIPLA Practical Patent Prosecution Alexandria, VA August Brian R. Stanton, Ph.D. US DOC/HHS (Ret.)

Transcription

1 Restriction AIPLA Practical Patent Prosecution Alexandria, VA August 2013 Ann M. Mueting, Ph.D., J.D. Mueting, Raasch & Gebhardt, P.A. mrgiplaw.com Brian R. Stanton, Ph.D. US DOC/HHS (Ret.)

2 a Patent 35 U.S.C. 101 Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 2

3 The Dialogue 3

4 35 U.S.C. 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. If the other invention is made the subject of a divisional application which complies with the requirements of section120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application.. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention. 4

5 37 C.F.R. 141(a) Different inventions in one national application. Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form ( 1.75) or otherwise include all the limitations of the generic claim. 5

6 37 C.F.R. 142(b) Claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled. 6

7 PCT Rule 13/37 C.F.R (a) Unity of invention. An international and a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept ("requirement of unity of invention"). Where a group of inventions is claimed in an application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. 7

8 Example 1. A chemical compound having the formula A-B-C. 2. A composition comprising the compound of claim A pharmaceutical composition comprising a compound having formula A-B-C. 4. A tire comprising a rubber tread comprising a chemical compound having the formula A-B-C. 5. A fire-truck comprising the tire of claim A method of reducing skidding comprising coating a tire with a compound having the formula A-B-C 8

9 Sample Initial Restriction I. Claim 1, drawn to a chemical compound having the structure A-B- C, classified in class 560, subclass 126 [CPC ]. II. Claims 2 and 3, drawn to chemical compositions, classified in class 514, subclass 16.2 [CPC }. III. Claim 4, drawn to a tire, classified in class 152, subclass 167 {CPC ]. IV. Claim 5, drawn to a fire-truck, classified in class 280, subclass 830 [CPC ]. V. Claim 6, drawn to an anti-skidding method, classified in class 152, subclass 167 [CPC ]. 9

10 Sample Response Applicant respectfully requests reconsideration and withdrawal or modification of the restriction requirement. It is respectfully submitted that the inventions as claimed can be readily evaluated in one search without placing undue burden on the Examiner. That is, all the claims are so interrelated that a search of one group of claims will reveal art to the others. 10

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12 In re Ochiai Rejoinder (Fed. Cir. 1995) MPEP Proper restriction between product and process claims Applies only where product claims are elected Requires allowable product claim Applies only to process claims that depend from or include all the limitations of the allowable product claim 12

13 An interesting real world example (the names have been changed to protect the innocent) Claims 1-27 are generic to the following disclosed patentably distinct species: Species I : Claims 1-14 & 25 drawn to a a Higgs Particle Field device, classified in class 018, subclass 12 [CPC ] Species II: Claims 15-24, 26 & 27 drawn to a method of making a a Higgs Particle Field device, classified in class 181, subclass 2 [CPC ] The above species are independent or distinct because the Higgs field device media disposed over an array of polar icebergs is not related to and cannot be found in the step of depositing an alien implant in an artificial black hole. 13

14 Double Patenting I. Statutory Double Patenting II. Obviousness-Type Double Patenting III. Non-obviousness-Type Double Patenting 14

15 Thanks 15

16 Questions? 16