The Department of Commerce's United States Patent and Trademark Office (USPTO) has instituted an action plan to improve quality and respond to customer needs by establishing best practices related to restrictions on the number of inventions and/or claim sets in biotechnology, pharmaceutical and organic chemistry patent applications examined in Technology Center 1600 (TC 1600).
The patent statute allows the USPTO to limit (or restrict) the number of inventions examined in a single application. Restrictions are imposed most frequently in biotechnology applications because of the nature and complexity of the technology and the number of claimed inventions.
This five-point action plan addresses the unique needs of the applications examined in TC 1600 by improving how applications that claim more than one invention are handled. The plan, which addresses when and how patent examiners in TC 1600 will apply restriction requirements on applications, includes:
- Publishing examples of claim sets that currently don't place a serious burden on USPTO examiners so that customers can prepare applications to avoid restriction requirements.
- Focusing applicants and examiners on rejoinder practice, an alternative to filing a new application for certain claim sets that have been restricted.
- Training examiners to analyze and recognize claims sets that should be examined together, and to apply restriction practice in accordance with applicable law.
- Providing a "second pair of eyes" to review restriction decisions made by examiners to promote consistency.
- Continuing reassessment of the action plan to ensure that it meets the needs of customers and USPTO.
The TC 1600 restriction action plan is consistent with the goals of the agency's 21st Century Strategic Plan. The plan also reflects the values of President Bush's Management Agenda by focusing on quality and responding to the needs of the USPTO user community.
The action plan can be found at: http://www.uspto.gov/web/patents/restriction1600.htm.
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