35 USC

1
TC1600 Restriction Practice Action Plan and
Unity of Invention Study
Bruce Kisliuk Group Director, TC1600 United
States Patent and Trademark Office
2
TC1600 Restriction Practice Action Plan and Unity
of Invention Study

• Review of TC1600 Restriction Practice Action Plan
  
• Summary of Public Comments
• Long-Term Restriction Reform Options

3
I. Review of TC1600 Restriction Practice Action
Plan

• The action plan includes 5 initiatives
• Publish Examples Of Claim Sets
• Emphasis On Rejoinder Practice
• Examiner Training On Restriction Practice
• Enhanced Review Of Restriction Requirements
• Continuous Assessment

4
I. Review of TC1600 Restriction Practice Action
Plan

• Publish Examples Of Claim Sets
• Provide examples that do not present a serious
  burden on the Office
• Provide both applicants and examiners with
  guidance
• Emphasis On Rejoinder Practice
• Provide a new Rejoinder paragraph
• Remind applicants of their options on Rejoinder
• Examiner Training On Restriction Practice
• Emphasize proper restriction practices
• Claim groupings and support/formulation of
  restriction requirements
• Provide Art Unit/Workgroup specific examples
• Publish materials

5
I. Review of TC1600 Restriction Practice Action
Plan

• Enhanced Review Of Restriction Requirements
• Review Art Units with high number of restrictions
  and indications of inconsistent requirements
• Includes reviewing restrictions in 2nd and
  subsequent actions
• Continuous Assessment
• Collect data from reviews and samplings
• Survey customers on impact of action plan

6
Unity of Invention Study
II. Request for Public Comments

• Request for Comments on the Study of the Changes
  Needed To Implement a Unity of Invention Standard
  in the United States, 68 Fed. Reg. 27536 (May 30,
  2003), 1271 Off. Gaz. Pat. Office 98 (June 17,
  2003).
• 26 Public comments were received

7
Unity of Invention Study

• Public Reaction to Request for Comments
• In the long-term, Office should make the best
  choice and should not limit itself to PCT Type of
  Unity of Invention
• The Office in addition to the TC1600 Restriction
  Practice Action Plan will continue to study
  long-term restriction reform options.

8
III. Long-Term Restriction Reform Study

• Public comments show little support for PCT type
  of Unity of Invention as best option for
  restriction reform
• Public Comments pointed to a number of goals
• Increase cost-effectiveness
• Promote quality patents
• Enhance predictability of restrictions
• Promote harmonization
• Factors encouraged by Public Comments
• Avoid attempts to overwhelm Office/examiner
• Provide meaningful options to avoid overly narrow
  restrictions

9
III. Long-Term Restriction Reform Study
(Continued)

• Any change to the current restriction practice
  will necessarily be a long term undertaking in
  order to
• Determine and implement appropriate examiner
  credit adjustments
• Determine and implement appropriate fee and
  patent term adjustment revisions
• Create and implement training to make appropriate
  restrictions after changing the practice
• Determine and address staffing issues
• Determine and implement rules of practice changes
  and make appropriate revisions to MPEP

10
III. Long-Term Restriction Reform Study
(Continued)

• Options
• Current practice with option to request
  examination of extra invention(s) for a fee(s)
• PCT Unity
• Three-Tiered Fee Structure
• Independent and distinct revised process

11
Next Steps

• Complete details of how the standards of each
  option would be be applied
• Complete sampling of applications as applied to
  each option to determine invention and/or claim
  sets
• Complete business analysis of each option
• Publish Green Paper detailing options and
  business impact analysis
• Hold public hearing on options in Green Paper
• Publish final report or White paper on our
  recommended changes