Today we had part two of our restriction training. Those in the chemical arts are all too familiar with restrictions, by now.
This was a very detailed lecture, and it would be impossible for me to summarize it in the time I have.
Much of it was reviewing what we covered in the first part. There are some arts in which examiners do very few restrictions, even when there are many claims. So this lecture fleshed out some of the details for those examiners who have done little or no restriction practice as of yet.
We heard about rejoinders. No, rejoinders aren’t witty retorts. When an examiner makes a restriction requirement, applicant or applicant’s representative elects which set of claims he or she wants to have examined now. So now we have “elected” and “nonelected” inventions. But the nonelected claims might depend from the elected claims. So what happens if the elected claims are allowable? Well, the dependent nonelected claims should be compliant with 102 and 103, assuming they are proper dependent claims. So the nonelected claims are brought back in and examined.
We also went through a laundry list of combination/subcombination stuff, linking claims, genus and species, and more. I’ll try to post more on restrictions when I get a chance.
Also, an important note: On Thursday, August 23rd, at 1:00 p.m. EDT there will be a webinar on the new changes to the rules on continuations and claims. You can go to the USPTO website and register for the event from there.
3 thoughts on ““On Restriction…” Part Deux”
I’m curious, is there any way to purchase or gain access to the training materials they provide US patent examiners? I would think that would be a good way to inform people of how their applications will be analyzed.
Not that I know of. Some training materials are provided by the PTO to the public, but I do not know offhand which ones.
Your best resource is the MPEP, or better yet, a registered practitioner. Real-world experience is going to trump training materials any day.
Restrictions were never intended to be employed for cutting down on the number of claims an examiner had to examine. The first hurdle in doing a proper restriction, always, is to first establish that there are multiple inventions, which are, patentably independent or distinct from each other.
Doing an improper restriction may not seem that harmful, and in fact, useful in the beginning of an examiner’s career. However, once the divisionals start coming in and you realize that these are all “obvious” variants or the patent that you issued, all the while being barred from doing an Obviousness type double patenting, you will soon understand that a proper restriction goes a long way.