Restriction and Double Patenting (MPEP 800)

Restriction

Restriction is the practice of requiring an election between distinct inventions. (Only one invention is allowed per patent.)

Election of species – The inventor must elect between two or more patentably distinct forms of a generic invention claimed in same application. (Again, only one invention is allowed per patent.) For the election of species requirement, examiner must show 1) the generic claim embraces patentably distinct species; or 2) those species exceed a reasonable number.

Restriction Practice Features –

• Restriction practice is always discretionary with the examiner.
• Lack of restriction is not a defect in a patent.
• No shifts are allowed from elected to non-elected subject matter; the following are not considered shifts: 1) where a process is rejected as obvious, the only invention being in the product made, presenting claims to the product is not a shift, 2) if a product is elected, there is no shift where the examiner holds the invention to be in the process, or 3) if a genus is allowed, an applicant may prosecute a reasonable number of additional species thereunder and it’s not a shift.
• RCE can’t overcome a restriction requirement.

Criteria for Restriction – The examiner must show the application claims independent or distinct inventions and examining all claimed inventions in a single application would be a serious burden. A restriction may be required in a divisional application, even though inventions were grouped together in a requirement in a parent application.

Restriction Procedure –

• Restriction is usually done before first search.
• The examiner gives reasons for restriction (can be by phone).
• The applicant has one month to respond (extendable for up to 5 months).
• The applicant must elect an invention for examination, with or without traverse.
• If election is without traverse, no right to petition later on.
• The applicant must point out reasons why examiner erred.
• If no traversal, examiner withdraws non-elected claims from consideration – same result if traversal is improper.
• Only claims elected are examined.
• If traversal is proper, examiner will either withdraw the requirement or make it final.

Applicant disagrees but requirement is made final – The applicant may petition and must have:

• traversed the original requirement
• indicated why examiner was wrong
• file petition (no fee) within one month after all elected claims are allowed or no later than filing a notice of appeal form rejected claims (no extension of time)

Applicant agrees with requirement – File a divisional application to the non-elected inventions. The parent case is not prior art against a co-pending divisional, if scope is similar.
Adding claims after election – If original claims relate only to one invention (no election necessary) and new claims to a patentably distinct invention are added after the Office Action, the new claims will be deemed withdrawn (constructive election).
After elected claims are allowed – If applicant traversed, examiner will give one month (no extension of time) to cancel non-elected claims or file a petition to director. If applicant did not traverse, examiner can cancel the non-elected claims without notice and applicant will receive a notice of allowance.

Rejoinder –

MPEP 821.04 – “The propriety of a restriction requirement should be reconsidered when all the claims directed to the elected invention are in condition for allowance, and the nonelected invention(s) should be considered for rejoinder. Rejoinder involves withdrawal of a restriction requirement between an allowable elected invention and a nonelected invention and examination of the formerly nonelected invention on the merits.”

Product and Process claims in same application, product claims elected – if the product claims are elected and one or more are subsequently allowed, withdrawn process claims will be rejoined.

Product claims only – if the original application discloses the product and process for making or using the product, but only claims the product, and a claim is found allowable, the applicant may present claims directed to the process via amendment.

Product and Process claims in separate applications (not as a result of restriction), no rejoinder – the second application may be rejected under obvious type double patenting.

Improper Restrictions –

• a single claim (including Markush and design)
• claims clearly unpatentable over each other
• claims differing only in form or scope
• means plus function apparatus claim and a method claim using same language without “means for”

Types of Related Inventions (for determining if restriction is proper)

For combination/sub-combination claims, restriction is not appropriate when the invention resides in the sub-combination. This requires both two way distinctness and reasons for insisting on restriction. The inventions are distinct only if it can be shown that the claimed combination: 1) does not require the particulars of the sub-combination for patentability; and 2) the sub-combination has utility either by itself or in other and different combinations.

• A product and process of making the product – can be distinct inventions if either: 1) the process as claimed is not an obvious process of making the product and can be used to make other products; or 2) the product as claimed can be made by another, different process.
• A product and process using the product – can be distinct if either: 1) the process of using as claimed can be practiced with a different product; or 2) the product as claimed can be used in a materially different process.
• Intermediate/Final Product Restrictions – intermediate and final products are clearly not dependent, so to make a restriction, distinctness must be shown. Distinctness can be shown if the intermediate product is useful other than to make the final product.

Double Patenting

Double patenting applies to: 1) same inventors, and 2) common owner/assignee, even if different inventors. If there is no common ownership, terminal disclaimer will not apply and 2^nd application will not be allowed to issue.

Double patenting prevents the same inventor or owner form obtaining a second patent on the same invention or an obvious variant thereof. Double patenting only concerns cases of two or more patents or applications with common inventors or owners.

Double patenting issues can arise between two or more applications, an application and a patent, or in reexam or international application if US is involved.

Provisional double patenting rejections – Provisional double patenting rejections is proper if the first filed application has not yet issued as a patent at the time the rejection of claims in the second application occurs.

Types of double patenting –

1) Statutory (Same Invention–Type) Double Patenting – inventor is allowed only a single patent on an invention:

• same inventor or owner
• at least one application must be involved
• identical subject matter
• analysis is claim by claim
• Solutions – 1) cancel offending claims or 2) amend claims

2) Non-Statutory (Obvious-Type) Double Patenting – designed to prevent improper time extensions by patenting something that is not patently distinct from the parent.

• same inventor or owner
• at least one app must be involved
• “does any claim in the application define an invention that is merely an obvious variant of an invention claimed in the patent?”
• “was applicant prevented from presenting the same claims in the issued patent?”

Tests –

One Way Obviousness – if the invention described in the applicant’s claim is an obvious variant of the invention in the claim of the patent: There is enough evidence for an obvious type double patenting rejection if:

• the application (in question) is the later filed application or both applications were filed on same day;
• if the application (in question) is the earlier filed application, a one way obvious type double patenting is still proper UNLESS: 1) administrative delay on part of the PTO caused a delay in prosecution of the earlier filed app; and 2) the applicant could not have filed the conflicting claims in a single application.

Two Way Obviousness – if applicant could not have filed the claims at issue in a single application and there is administrative delay, and the application on which the patent was granted is the later filed application, then a two-way obviousness determination is necessary for rejection. (The claim in the 2^nd application can only be rejected for obvious type double patenting if it is an obvious variant of the claim in the first patent and if the claim in the first patent would be an obvious variant of the claim in the second patent.) Solutions – try to overcome by arguing patentable distinctness; or file a terminal disclaimer in the later application:

• disclaim entire terminal term of all claims in the second patent beyond normal expiration of first
• cannot disclaim terminal term of specific claims
• must include statement that common ownership will be maintained
• fee
• terminal disclaimer will not work for same type double patenting
• no term extension for later patent past date of TD
• not an admission of the correctness of the rejection
• put all claims into one app if possible

Domination Distinguished – a broad claim in one patent or application that completely encompasses a narrower claim in another patent or application does not imply double patenting.

Double Patenting and Restriction – no double patenting rejection may be made in a divisional application over a parent patent (or application) where the examiner imposed a restriction and scope is same. This prohibition is not available if: applicant voluntarily files 2 or more cases without an examiner imposed restriction requirement; claims of 2^nd are drawn to the same invention as 1^st; restriction requirement was only made in a international application before it entered the national stage in the US; or the requirement for restriction is withdrawn before the patent issues.

Double Patenting between utility patents and design/plant patents – allowed where appropriate; usually a two way analysis.

— MPEP 800 (by section) —

Restrictions on (normal) 35 U.S.C. 111(a) apps; Double Patenting! Jumping around: (801-804.03)

Restriction:
In some cases, an examiner will find that a single application actually disclosing two or more distinct (but probably still related) inventions. At this point, the examiner will place a restriction on the app, and the applicant will have to elect one of the inventions to actually pursue in the app.
Basic Rule: Under 37 CFR 1.141(a) there cannot be multiple inventions claimed in one app, unless the inventions are all species of one genus that the app is properly claiming.
After the restriction/election, and before the original app actually issues as a patent, the applicant can still file a divisional app (35 U.S.C. 121) on the remaining inventions. There is a specific rule that when the divisional is properly filed, the original app cannot be used as a reference against the new app for either 102 or 103 rejection purposes.

802.01: When are inventions actually independent & distinct: (See 806.05 in next lesson for more details)

• Independent: means there is no disclosed relationship between 2 inventions (they are unconnected in design, operation, and effect).
  • However, 2 inventions are related (not independent) if they are actually connected by at least: design, operation, or effect. If inventions are related they are also dependent.

802.02: Restriction: Just means the applicant must elect one invention.

803: When restriction is proper:

1. If there are inventions such that: (1) the material could support > 1 app; AND (2) the inventions are either independent or distinct, then the examiner may restrict the app to elect just one invention.
2. Also: There must be a serious burden on the examiner if the restriction is not made (a prima facie showing can be made by explaining that the inventions are in different fields, would require additional searches of prior art)

803.02: Markush Claims: (when claiming a bunch of permutations is allowed in one app):

1. Review: Remember a Markush claim is of the form: “X selected from the group consisting of A, B, and C” (where A, B, C are usually physical or chemical classes, or some class recognized in the art)
2. All of the permutations in the group could create independent inventions sometimes.
3. In these cases where a Markush group contains multiple independent inventions, the examiner may require the applicant to elect one species to pursue. BUT: The rest of the Markush group will still be examined to see if the group as a whole may still be patented. (Basically, you need to elect a species, but the overall group is still examined against prior art).
4. Here’s what happens: If the overall Markush claim is rejected due to prior art (anticipation or obviousness), the originally elected species might (if it is not covered by prior art) still get a narrower patent just for that species.
5. Examples:
   1. Compound X-R where R is in the group: A, B, C, D, and E. The applicant would elect XA, XB, XC, XD, or XE, but the group would still be compared to the prior art. (This is a provisional election for purposes of doing prior art searches, the applicant is still trying to get the whole Markush group in the claim)
      1. If there is prior art, on the elected species, the claim on it gets a normal prior art rejection, and the rest of the unelected species get withdrawn from consideration. (warning)
      2. However: If the actually elected species passes the prior art tests, the search of the group will expand to include the other species that were originally non-elected. If one of the non-elected species has prior art then the Markush claim is rejected, but the search will not be further extended.
      3. Basically: To make searches of groups easier, the applicant needs to put forth a candidate species to run prior art searches on, and if the candidate passes, then the searches will get broader for the rest of the group.

804: Double Patenting (How you English say: One More Time!):
Once the applicant has a patent on an invention, he can’t patent the same thing for another go-around. The reason is of course to extend the time period of patent protection on the same invention, and the law does not allow this.

Threshold Criteria for double patents:

1. There must be 2 or more patents or apps involved; and
2. At least 1 common inventor or they must be commonly assigned/owned/be part of the same JRA.

Two types of Double Patenting Rejections:

1. Statutory: 35 U.S.C. 101 says “may obtain a patent” (in the singular, 1 patent for 1 invention); or
   1. Ask the question: “Is the same invention being patented twice?”
   2. If the exact same invention is not being patented twice, then check for the Non-Statutory grounds.
2. Non-Statutory: These are common law rules that are designed to prevent claims on a new invention from effectively extending the lifespan on an older patent since the new claims are not really distinct from the old claims. (usually more subtle than an exact duplication of an older invention).
   1. One type of non-statutory double patent rejection is the “obviousness type”: “Is the claim from a new patent an obvious variation on the claim from a previous patent?” If so, the new claim should be rejected or at least have a terminal disclaimer to prevent double patenting.

804.01: Double Patenting Rejections for Divisionals (35 U.S.C. 121) are prohibited:
The nature of divisionals is that the inventions were all part of the same app. As long as the applicant files for the divisional before the patent issues on the original app, the divisional will have the same effective date as the original app. Since the purpose of double patent rejections is to prevent undue extension of the patent protection time period, there is no need to issue double patent rejections on divisionals since even if they claim the same matter, they don’t extend the period on which the matter is covered under the patent.

804.02: How to Avoid the double patent rejection:

• Statutory rejections: the second app’s claims should be amended so that they are no longer coextensive in scope.
• Non-statutory rejections: By filing a terminal disclaimer to shorten the lifespan of the new app to match that of the old patent.
  • A terminal disclaimer needs to contain statement by the owner (either all the owners or at least 1) that the owner is disclaiming part of the term of the patent. (See 37 CFR 1.321)

804.03: Commonly owned Patents or JRAs: These are also subject to double patent rejections just as if there was a single inventor.

Distinct inventions, and how Restrictions are implemented (806.04-821.04)

806: Distinct Inventions:

• One invention may have multiple species, as long as there are a reasonable number, or if the species are part of the same genus being claimed by the invention.
  • However, where species are not connected by: design, operation, or effect, then the species are separate inventions even if they are under the same genus.
• Generic claims: In order to make a generic claim, make sure of 2 things:
  • 1. The generic claim should require no additional limitations that are not present in species of the genus given as examples in the claim.
  • 2. Each species in the genus needs to inherit all of the limitations of the overall genus.
    • Think of it polymorphically: the genus must not have extra limitations & each species needs every limitation (species are a proper superset of the genus).
• Mutually Exclusivity: When 2 or more species are mutually exclusive of each other, the restriction requirement to elect one may come in. This occurs when 1 claims has limitations that only apply to 1 species, while another claim has limitations that only apply to a 2nd species. The exclusive nature of the limitations makes the claims distinct.
• Going back and filing a generic claim after a species is patented: Remember, once even 1 species in a genus is patented, then entire genus can no longer be claimed in a patent. This may occur when the common owner (or JRA parties) of an earlier patent that claimed a species try to come back and claim the entire genus of that species. The broader claim is an obviousness-type double patent since the earlier species is already patented. The claim will be rejected, and the applicant may get around this rejection by filing a terminal disclaimer.
• Combinations & Subcombinations:
  • These become distinct if: (a) it is shown that the invention does not actually need a particular combination as claimed in order to still be a valid invention; and (b) the subcombination has utility on its own or as part of a different combination.
  • Basically: if a combination/subcombination is not really necessary to the invention, and it can do something useful on its own, it becomes distinct.
• Differentiating between an apparatus, and the process to use the apparatus:
  • If the process to use an apparatus can also be done by other means using not involving the apparatus then they are distinct; OR
  • If the apparatus can also be used to practice a different type of process, they are distinct.
  • (Apparatus & process must be exclusively tied together to not be distinct).
• Differentiating between the end-product of a process, and the process itself:
  • If the process claimed is not an obvious process to make the end-product, or can make other products they are distinct; or:
  • If the product can be made by other processes then the claims are distinct.
• Apparatus & Product made by the apparatus (similar to above):
  • If the apparatus can make another type of product they are distinct; or
  • If the product can be made by any materially different type of apparatus.
• When a claim is for the process of making the product, the product itself, and the process of using the product:
  • 37 CFR 1.141(b):
    • The applicant may elect either: the process + product (a product-by-process claim); OR: the process of using the product (as a process claim).

808: Remember distinct inventions are those that are not linked by design, operation, or effect.

809: Claims that link Distinct Inventions together:

• These claims are called linking claims since they link 2 inventions that are otherwise distinct.
• If allowable, these claims can actually prevent a restriction on the application:
  • Genus claims that link multiple species together
  • Subcombination claims that link many combinations together. (establishing a common nexus via the claims)

More on the process of restrictions & elections:

• A restriction requirement is not usually an action on the merits, so the time period is an SSP of only 1 month (30 day minimum).
• The restriction requirement is usually made before an action on the merits, but the request can come at any time before final action.
• The examiner normally phones the applicant or atty to request an oral election of claims. If the app/atty refuses to elect claims, the examiner will mail the restriction requirement out.
• The examiner has the burden to explain exactly how the inventions in the app are different from each other. This makes it clear how the app could be broken up under 35 U.S.C. 121 divisional apps.
• The reply can either elect an invention to continue in the app, or it can attempt to traverse the requirement. The traverse just means the applicant makes a statement explaining how the restriction requirement is in error and that the inventions are not distinct.
  • Note: even when the requirement is traversed the applicant still must elect an invention (provisional election)
• The examiner may reject the traversal and still put the restriction requirement on. If the applicant does not attempt to traverse initially, he has no other option (no further petition allowed). However, if the applicant did have a traversal, he may then request reconsideration.