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Comments on Proposed PTO Rule Change #14-Presumptive Elections

To: Hiram H. Bernstein

Robert W. Bahr

Dear Mr. Bernstein and Mr. Bahr:

This letter is in response to the proposed "Changes to Implement the Patent Business Goals" in Proposed Rules, 63 FR 192 (October 5, 1998). Of particular concern is proposed topic 14, "Providing for presumptive elections".

From interpretation of Topic 14 of the Advance Notice of Proposed Rulemaking (ANPR), the specific changes being considered by the PTO to restriction practice appear to include: (1) constructive election of the first-presented invention in the claims, (2) constructive election of product claims in an application including process claims, whether or not the product claims are presented first, and (3) constructive election of subcombination claims in an application including a combination, whether or not the subcombination claims are presented first. It is unclear in the ANPR whether the telephone restriction practice (MPEP 812.01) is being eliminated. For purposes of these comments, it is presumed that the telephone restriction practice is being eliminated. As discussed in more detail below, two modifications to the proposed rule changes are suggested. First of all, it is suggested that constructive election of the first-presented invention be implemented only in the event that an oral election cannot be obtained in a reasonably expedient manner. Secondly, it is suggested that the proposed constructive election of product claims and subcombination claims in certain applications not be implemented.

The value of ending written restriction requirements and the corresponding processing delays is certainly appreciated. On the other hand, it is submitted that excessive limitations on elections may actually result in an increased PTO workload and increased expense to applicants by necessitating additional divisional application filings. For example, consider a situation in which an application is filed which contains multiple related inventions. In order to secure an early priority date in a competitive marketplace, the application is filed before it is clear to the applicant which invention(s) will be the most important (e.g., most useful in the market). Even if the invention which is believed to be the most useful is presented first in the claims, the relative importance of the inventions may change in the time between filing and the restriction requirement. An inflexible constructive election may force the applicant to file a divisional application to obtain examination of the invention which has become more important than the constructively-elected invention.

It is submitted that a reasonable balance between PTO processing efficiency and applicant flexibility would be achieved by an elimination of written restriction requirements while continuing the telephone restriction practice. In the event that the examiner cannot reach the applicant or applicant's representative after making a reasonable attempt (perhaps allowing 2 to 3 days for a return call), constructive election of the first-presented invention in the claims would then be implemented. Such a procedure would greatly reduce the processing delays currently associated with written restriction requirements, while preserving an opportunity for applicants to elect their most important inventions at the time of examination.

Regarding the proposed constructive election of product claims when presented with process claims, and of subcombination claims when presented with combination claims, it is believed that, as in the case of the constructive election of the first-presented invention, this may result in unnecessary additional filing of divisional applications. Furthermore, these constructive elections do not appear to reduce PTO processing time to any greater extent than the simpler proposed change of constructively electing the first-claimed invention. It is therefore suggested that these particular proposed changes not be implemented, and that all restriction requirements be handled in the manner described above, by first attempting to obtain an oral election and then constructively electing the first-presented claims if no oral election is available.

Gentry E. Crook

Technical Advisor

Conley, Rose & Tayon, P.C.


United States Patent and Trademark Office
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Last Modified: 7/4/2009 4:48:21 PM