On November 1, 2017 the U.S. Patent and Trademark Office (USPTO) implemented an expansion of the Collaborative Search Pilot Program (CSP), which began in 2015 and ended earlier in 2017, to expedite prosecution of related applications at the USPTO and the Japanese Patent Office (JPO) or Korean Intellectual Property Office (KIPO). The original CSP is discussed in the Global IP Matters article Expediting Patent Prosecution with the New Collaborative Search Pilot Program. The new expanded CSP eases some requirements for participation in the program and increases the number of grantable CSP petitions per year, which should make the free CSP more attractive to applicants having patent applications co-pending at the USPTO and the JPO or KIPO.
Welcome to the blog’s first post in a series about restriction requirements! This series will explore nuances in restriction requirement law and provide strategies for most effectively handling restriction requirements, both before and after they arise during prosecution of a U.S. patent. This first post focuses on strategies for developing an initial claim filing strategy that advantageously takes possible future restriction requirements into account.
Let’s begin with a brief overview of U.S. restriction requirements. Per 35 U.S.C. § 121, a restriction requirement generally requires an applicant to elect for prosecution only one of two or more independent and distinct inventions presented in a single application. Patent rules 37 CFR §§ 1.141-1.146 are issued under 35 U.S.C. § 121 and also govern U.S. restriction practice. Per these legal requirements, a restriction requirement identifies two or more Groups/Genus, two or more Species, and/or two or more Sub-species that an applicant must choose between for substantive examination. Examiners typically require restriction between inventions before the issuance of a first Office Action on the merits, but Examiners can require restriction at any time during prosecution as a standalone action or, after the first Office Action, as part of an Office Action.
Given the Examiner’s wide discretion in both the timing and content of restriction requirements, it is important for applicants to always be aware of the possibility of receiving a restriction requirement because restrictions can suddenly limit the type or scope of claims that can be pursued in an application, absent the new filing of a divisional or continuation application.
Awareness of restriction requirements best begins before an application is even filed – during preparation of the application’s initial claims. Continue Reading “Restriction Requirements” Series, Part 1: Considering Restrictions When Developing a Claim Filing Strategy