By Sarah Fendrick —

The U.S. Patent and Trademark Office announced in a notice published in the
Federal Register (75 Fed. Reg. 33584) that it is considering
changes to restriction practice aimed at improving the quality and consistency
of restriction requirements made by Office personnel.  The USPTO has begun
to solicit public comment regarding these potential changes.  In particular,
the Office is seeking comments on what should be included in an Office action
that requires restriction, methods to expedite the process of traversing or
requesting reconsideration of a restriction requirement, the treatment of Markush claims, rejoinder of non-elected
claims, and other areas that could be improved upon with respect to current
restriction practice.

The first issue for which comments are being sought is what should be included
in an Office action that sets forth a restriction requirement.  Currently,
the M.P.E.P. requires that inventions must be independent or distinct as
claimed and that there must be a serious burden on the examiner in order to
require a restriction.  To clarify the requirements for a restriction, the
Office is considering that a restriction requirement must always articulate
reasons why the inventions are independent and distinct and why there would be
a serious burden on the examiner.  In addition, the Office is considering
a change to the serious burden prong of a restriction requirement.  In
particular, the Office is considering whether to specify that a serious burden
would be present when the prior art applicable to one invention would not be
applicable to another invention.  Further changes include revision of the
M.P.E.P to specify that a serious burden on the examiner encompasses search
burden and/or examination burden.  The examination burden encompasses
non-prior art issues such as a § 112, first paragraph, issue.

The second area where the Office is seeking comments is the effectiveness of
traversing or requesting reconsideration of a restriction requirement. 
The public has expressed dissatisfaction with the process of requesting
reconsideration or traversing a restriction, and now the Office is inviting the
public to comment on better methods to improve accurate, timely, and cost
effective review.

The third topic for which the Office is seeking comment regards restriction
between related product inventions or related process inventions. 
Currently, there is no M.P.E.P. section that addresses this topic and the
Office is considering adding a section that would address restriction between
related product inventions and related process inventions.  The new
section would specify that there must be two-way distinctness and a serious
burden for a restriction requirement to be issued.

The fourth area of potential change is the revision of Markush practice.  The Office is considering a number of
changes with respect to this practice.  First, if the examiner determines
that the elected species is allowable, the Office is considering specifying
that the examination of the Markush-type
claim will be extended to the extent necessary to determine the patentability
of the claim.  Also under consideration are situations where restriction
may be proper between a subcombination and a combination when a subcombination
sets forth a Markush grouping of
alternatives.

The fifth area of interest is how the Office could improve rejoinder
practice.  The Office is considering changes to the rejoinder practice
that would facilitate more uniform treatment of claims directed to non-elected
subject matter following allowance of elected claims.  In particular, the
Office is considering whether to redefine rejoinder as:

[T]he practice of withdrawing a restriction
requirement as between some or all groupings of claims and reinstating certain
claims previously withdrawn from consideration that occurs when the following
conditions are met:  (1) All claims to the elected invention are allowable;
and (2) it is readily apparent that all claims to one or more nonelected
inventions are allowable for the same reasons that the elected claims are
allowable.

In addition, the Office is
considering whether examiners should be instructed to rejoin nonelected claims
when the elected claims are found to be allowable and withdraw the restriction
requirement.  

Finally, the Office is
seeking comment on any areas that are not directly addressed in the notice, but
which would improve restriction practice.

Comments must be received by August 13, 2010 and can be submitted to
electronically to Restriction_Comments@uspto.gov or by regular mail addressed
to Mail Stop Comments — Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313–1450 and marked to the attention
of Linda S. Therkorn.