Patent Office Uses Restriction Requirement to Limit Scope of Claims
Periodically, the PTO decides they need a more aggressive (more European) approach to restrictions. This practice not only fails to follow the law but it is an attempt to use restriction practice to limit the applicant’s right to define their invention. In other words, it is a backhanded way of limiting invention under 35 USC 101 or 35 USC 103.
According the 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).
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 section 120 of this title 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. If a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
Why does the MPEP change “independent and distinct” to “independent or distinct?” It appears the Patent Office’s is not following the law and attempting to make it easier to require a restriction.
The question the statute leaves unanswered is what is an independent and distinct invention. According to the MPEP 802.1:
The term “independent” (i.e., **>unrelated<) means that there is no disclosed relationship between the two or more inventions claimed, that is, they are unconnected in design, operation, and effect.
According the MPEP 802.2 the term distinct means
Related inventions are distinct if the inventions as claimed are not connected in at least one of design, operation, or effect.
From the above it is clear that “distinct” casts the widest net. I will note the MPEP suggests that the case law on point does not always use the above definition. The important thing to remember is that we are talking about the inventions as claimed. Thus, if any set of claims incorporates both inventions, they are clearly connected by design, operation or effect.
The Patent Office when issue a restriction requirement often asserts the combination/sub-combination rule to argue that two inventions in an application are distinct. However, this rule is still based on how the combination/subcombination are claimed and requires the PTO show that it would be a serious burden if the restriction were not upheld.
Unfortunately, the PTO often ignores the “claimed” requirement for distinct inventions. If the PTO is allowed to do this it arbitrarily limits what the applicant can claim as their invention. Every invention is a combination of known elements (conservation of matter and energy) and when the PTO incorrectly limits which subcombinations the inventor can claim, they limit the right of the inventor to define what their invention is. This has the same effect as limiting what the inventor can claim under 35 USC 101 or 35 USC 103. From a practical point of view this arises when a subsequent Office Action rejects the claims based on certain prior art and the applicant then wants to modify their claims to incorporate the features of one of the subcombinations. The PTO disallows this amendment by suggesting the applicant has not selected that subcombination. This practice is wrong, illegal, denies the applicant of due process, and denies the applicant’s right to define their invention.
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