Today was restrictions. Do you have more than one invention in the application? Does examining those multiple inventions constitute an undue burden on the examiner?
So, of course, we have a bunch of decision trees to follow to figure out if something may be restricted or not, which are too numerous for me to go into now. The analysis is sufficiently daunting that I don’t think most of us will even attempt a restriction unless necessity compels us to.
I’ve been told by a few folks that I should break things down into plainer language so that people who are interested in the job, or interested in patents but have no training, can more easily grasp what I’m getting at. So I’ll take a first stab here:
When an examiner receives an application, there can be all sorts of things in the specification that aren’t claimed – that is, that applicant doesn’t want legal protection for. Applicant can write about tables, alarm clocks, and microchips in the specification and only actually ask for a monopoly on the alarm clock in the claims. Sometimes, however, applicant writes claims that have multiple inventions in them. So basically, with a single application, applicant is asking you to search for prior art and make a determination about patentability for two different things. They might not even be in the same art. For example, a new engine that uses a new lubricant. The examiner would really have to treat the lubricant and the engine as separate inventions to get the job done, depending on how they’re claimed.
So if that represents an “undue burden,” that is, the examiner is going to have to do much, much more work than usual as a result of this, he can see if the claims meet the requirements to do a restriction. The restriction asks applicant to turn these claims into separate applications, or to pick one invention and go with it. It can be a useful tool if used properly.
5 thoughts on ““I feel so restricted” or “What a burden!””
It gets even more interesting. Upon choosing to do a restriction you then have to find an art unit, appropriate class, who is willing to take the case should the “other” claims get elected.
The “lubricant” class won’t want to take it because it mentions a “gear assembly”. The “gear assembly” won’t take it because it mentions “lubricant” meanwhile neither one belongs to YOUR class and the clock is ticking on this case which is on your docket.
But this has all been explained in the academy right?
As a current student myself, let me say you will get used to restrictions. Based on where you are a couple classes behind mine.
Good idea with the blog.
I guess I’m missing a step… wouldn’t it be MORE efficient for a single examiner be charged with the new engine & lubricant (just to use your example) in order to streamline the protection of Mr.X’s handy new invention?
If the inventor chooses to apply all in one application, why can’t it just be the exminer’s perogative to view it as an “all or nothing” submission? ie: part of the invention’s protection is the unique complimentary relationship between it’s subcomponents, all of which happen to be new & innovative?
If examiner A approves the engine, and examiner B denies the lubricant, it renders the engine patent useless at worst, or lacking teeth at best.
Then there’s the issue of this “undue burden” you speak of. As an outsider, it seems logical that as seperate patents each would at least partially define their necessity based on their symbiotic relationship w/the other. Reviewing this twice seems like the undue burden! (Thus, I imagine, the statutes against double patenting, which makes logical sense.) Wouldn’t something like this example lend itself being looked at as a big picture to SAVE time rather than go through two sets of hands (apparently in different departments, based on comments above) that have to examine in essence the same ultimate intended result?
And forgive me, but what difference does it make in the long run if you have to examine two elements of one patent versus two seperate patents? If the inventor is willing to accept that by tying both to the same application he runs the risk of denial of both, isn’t that on him?
Just thoughts from the outside looking in.
No, it probably wouldn’t be more efficient, unless the component inventions were part of the same class or very closely related.
The idea is that examiners are supposed to develop some “expertise” in their arts. Not the kind of expertise an inventor has, but the kind of expertise that comes with examining many patents that deal with similar subject matter. The examiner develops a sense of what is out there and what the level of ordinary skill in the art is. He or she is also gaining technical knowledge that enables an examiner to understand an application more quickly.
In this case especially, the lubricant would probably fall under one of the chemical subclasses (I don’t have my classification chart here, so I can’t say which). Someone skilled in engine design would probably not be an expert in lubricant design.
So if this examiner were to try to do both, he would take forever to a) understand both inventions and b) do entirely separate searches for each of them. There’s also the issue that examiners are only given a certain amount of time to process each application, and when you have to research more than one invention at a time, it makes it very difficult to finish that application within the provided time.
Hope that answers your question.
Your description of the examiner’s “expertise” is by far the most accurate I’ve seen so far. It appears that they are teaching you correctly.
Too often I get rejections from examiners and they state: Well, I’m the examiner, and I am one of ordinary skill in the art, and I say it’s obvious. So there.
Examiners are not of ordinary skill in the art. There are plenty of cases that discuss the examiner’s role in the examination process, and none of them conclude that the examiner takes the place of PHOSITA.
Glad to see that you get it. Now if we could just get the “old timers” to get it too.
Keep up the good work.