United States Patent and Trademark Office OG Notices: 16 December 2003
Summary of Public Comments and the
Restriction Reform Options to be
Studied by the United States Patent and
Trademark Office
The United States Patent and Trademark Office (USPTO)
established a 21st Century Strategic Plan to transform the
USPTO into a more quality-focused, highly productive, responsive
organization supporting a market-driven intellectual property system.
As part of this plan, the USPTO stated it would conduct a study of the
changes needed to implement a Patent Cooperation Treaty (PCT) style
Unity of Invention standard in the United States. The plan was to
complete the study and introduce any appropriate legislation before the
end of the 108th Congress.
Prior to starting a detailed study, the USPTO sought public
comment on a number of issues to help guide the scope and content of a
study on the adoption of a Unity of Invention standard in the United
States. On May 30, 2003, the USPTO published a 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). In
response to this request, the USPTO received twenty-six (26) public
comments. Those public comments were posted on the USPTO's Internet Web
site.
This notice summarizes the general nature of the comments
received and the next steps of the study. As a result of the comments
received, the USPTO will do a detailed business-case analysis on four
restriction reform options and has prepared a revised timeline to
complete the study. The USPTO is replacing the public comments and
schedule to implement a PCT-style Unity of Invention standard with this
notice.
Brief Synopsis of the Comments Received on Each Issue
Issue 1: Unity of Invention as practiced in the EPO is
interlinked to EPC-style claim drafting and EPO central claim treatment
practice, including certain limitations on claiming that are not
present in current U.S. practice. For example, the EPO (under EPC rule
29(2)) usually allows only one independent claim per category of
invention (category of invention is that of product, process or
apparatus of use), and emphasizes the search and examination of
independent claims. In contrast, the USPTO searches and examines every
claim, independent and dependent, and every limitation of every claim.
In addition, EPC-style claim drafting is generally termed "central
claiming". In central claiming, the inventive concept is essentially
claimed in the independent claim. If the independent claim is found
allowable, the EPO examination will not be unduly concerned with
respect to the dependent claims, according to EPO Guidelines, C-III,
3.6.
Should the USPTO study ways to adopt EPO claim treatment
practice, including normally allowing only one independent claim per
category of invention, when considering ways to adopt a Unity of
Invention standard, and why?
Should this include the USPTO considering emphasizing the
examination of independent claims and modifying the examination of
dependent claims in the same fashion as the EPO?
If so, would there be any reason to consider changes to the
presumption of validity under 35 U.S.C. 282 of those dependent
claims?
Synopsis of Comments to Issue 1: There was no consensus in the comments
to move to EPO's strict unity of invention standard. The comments
generally expressed a strong objection to move to the EPO style of claim
drafting, searching and treatment.
Issue 2: In U.S. restriction practice, the applicant can file a
subsequent application that is directed to an invention that was
divided out of the parent application. These are called divisional
applications. Divisional applications are typically subsequently filed
and are not normally examined concurrently with the parent application.
Divisional applications retain the benefit of the filing date of the
original application if the conditions set forth in 35 U.S.C. 120
are met. This allows an applicant to continue to pursue protection for
the inventions subject to restriction that were in the original
application without being affected by double patenting. All member
states of the Paris Convention for the Protection of Industrial
Property (1967) (including Japan and all EPC member states), as well as
the EPO, also provide for the filing of divisional applications.
However, the PCT does not yet provide for the filing of divisional
international applications. Consequently, the PCT rules provide for
applicant to pay for the search and examination of additional
inventions that "lack unity" in a single international application.
Adoption of a Unity of Invention standard could, in some instances,
require examining more inventions during the examination of a single
application than occurs presently, thereby possibly causing delay in
the examination of other applications if examination resources are
limited. This could increase the USPTO's average patent pendency time.
If the USPTO adopts a Unity of Invention standard, should the
USPTO provide applicants the option of a PCT-style Unity of Invention
practice to pay for additional inventions that lack Unity of Invention
in the same application?
If so, should the USPTO consider any changes to patent term
adjustment under 35 U.S.C. 154(b) for applications which have more
inventions examined in a single application under a Unity of Invention
standard than are permitted under current practice?
In view of the fact that examining multiple inventions in a
single application could cause examination delay in other applications,
what other revisions to patent term adjustment provisions under 35
U.S.C. 154(b) should be considered by the USPTO, or should the USPTO
also consider revisions to the order that cases are taken up for
examination?
Synopsis of Comments to Issue 2: The comments generally expressed some
qualified support to permit payment for additional examination of
additional inventions including a proposal for a sliding scale of fees
based on USPTO efforts. The comments generally expressed strong opposition
to any patent term adjustment reduction based on requesting examination of
additional inventions.
Issue 3: Under the PCT, examination proceeds on the basis of
the first claimed invention if applicant does not pay for additional
inventions that lack unity.
Should the USPTO adopt, for national applications, the practice
used currently under the PCT of examining the first claimed invention
where there is a holding of lack of Unity of Invention?
Optionally, where Unity of Invention is lacking: (1) should the
USPTO examine the first claimed product, or the first claimed invention
if there are no product claims, or (2) should applicant be given the
opportunity to elect an invention to be examined?
Synopsis of Comments to Issue 3: The comments generally strongly encouraged
the USPTO to retain its practice of oral elections and expressed some
limited support for examining the first invention if applicant fails to
orally elect. Most comments expressed a preference to continue the current
practice of written requirement if oral election is not possible.
Issue 4: A determination of lack of Unity of Invention is
predicated on assessing whether a common feature (referred to as a
"special technical feature" in the context of PCT Rule 13) defines
a contribution over the prior art. Certain PCT member states assess
this requirement only with respect to patentable advances over prior
art. However, issues of lack of support, enablement, clarity, or
conciseness, generally resulting from excessive breadth of claims or
excessive numbers of claims, may occur that render examination unduly
burdensome. In such circumstances, some International Authorities will
make a "partial search" declaration to limit the extent of search
and examination. The USPTO does not follow this practice. On the other
hand, it may be viewed that if the common feature or "special
technical feature" is not adequately supported by the disclosure or
lacks utility ("industrial applicability" in the PCT context), the
special technical feature does not make a contribution over the prior
art.
When adopting the Unity of Invention standard, should the USPTO
follow the practice of performing only a "partial search" if the
examination of the entire scope of the claims is unduly burdensome due
to non-prior art issues?
Alternatively, should the USPTO assess adequacy of the
disclosure and industrial applicability in addition to the prior art
when determining whether the claims' common feature makes a
contribution over the prior art?
Synopsis of Comments to Issue 4: The comments generally expressed mixed
support for a partial search and even less support to look to 35 U.S.C.
112, first paragraph, issues in making a lack of unity holding. Some of
the larger organizations were supportive of looking to non-prior art
issues in making a determination concerning lack of unity or restriction.
Issue 5: The USPTO's 21st Century Strategic Plan is
predicated on a certain level of revenue to provide the resources
needed to meet quality and timeliness goals. The Plan currently does
not account for any additional resource requirements, and any
corresponding revenue shortfalls, that may result from adopting a Unity
of Invention standard. Statutory fees under 35 U.S.C. 41 (a) and
(b), in the aggregate, are set to cover USPTO operating costs. If the
average cost of processing patent applications goes up, the USPTO will
need to increase fees. Assuming that there will be extra costs of
examination under Unity of Invention, possible increases would be: (1)
all filing fees; (2) all filing fees and an additional fee for
examination of claims that lack Unity of Invention with an elected
invention; (3) increased issue and/or maintenance fees of all
applications; (4) increased issue and/or maintenance fees for
applications paying the additional invention fee, or (5) a combination
of two or more of (1) through (4) above.
Which of the above approaches should the USPTO propose in
regard to any fee increases?
Synopsis of Comments to Issue 5: The comments expressed a slight
preference for a limited increase in filing fees, excess claims fees, and
maintenance fees. The comments expressed some support for a fee to examine
additional inventions. There were comments suggesting that no change should
be made if the examination cost would increase.
Issue 6: Adopting a Unity of Invention standard would impact
the number of inventions that would be examined in a single
application, and require examining multiple inventions that cross
multiple disciplines in a single application. Due to the current level
of technical specialization in the Patent Examination Corps, the USPTO
will have to consider the impact any change would have on the ability
of the USPTO to maintain high quality examination.
How should work be assigned to ensure that examination quality
would not suffer if examiners have to examine multiple inventions from
different disciplines in a single application?
Should the USPTO consider: (1) team examination, similar to the
EPO where applications are examined using three person teams called
examination divisions; (2) extending the use of patentability report
procedures provided for in section 705 of the Manual of Patent
Examining Procedure (8th ed. 2001) (Rev. 1, Feb.
2003); (3) maintaining the current process of a single examiner on an
applications; or (4) some other option of how work is performed by
examiners?
Synopsis of Comments to Issue 6: The comments generally expressed a
preference to continue the single examiner model and recommend use of
team examination on a case-by-case basis.
Issue 7: One way of adopting aspects of Unity of Invention
without making any statutory changes, the USPTO could use its authority
under continued examination (35 U.S.C. 132(b), request for continued
examination or RCE) to permit applicants after prosecution has been
closed on a first invention to pay an RCE fee and submit or rejoin
claims to additional inventions so long as they either depend from or
otherwise include the features of the allowed claims which make a
contribution over the prior art. In this option, most applications will
continue to be examined only under the USPTO's current restriction
practice. Under the new rules to implement this option, when a claim is
determined to be allowable, applicant would be entitled to request
continued examination under the Unity of Invention standard. The
required submission would be an amendment to the claims directed to the
related invention to adopt the limitations that placed the earlier
examined claims in condition for allowance (if any amendment is needed).
Should the USPTO consider this option?
Should this option be available only to applicants whose applications
are published?
If so, how should the new RCE fee be set relative to the current fee
structure?
Synopsis of Comments to Issue 7: The comments generally expressed a strong
opposition to this procedure. It was not apparent that the comments
recognized that this option would permit newly submitted claims after close
of prosecution to be considered (which is not the case today). Further, the
comments appeared to assume that this option would be an alternative to
existing rejoinder practice and not a replacement for the current rejoinder
process.
Issue 8: As a second example of adopting aspects of Unity of
Invention without making any statutory changes, the USPTO could use its
authority under continued examination to permit requests that the USPTO
continue examination of claims which were withdrawn for consideration.
This option would require applicants to make a decision to request
continued examination rather than file a divisional application, to pay
a fee for the treatment of one additional invention, and to present
claims drawn to only the one additional invention paid for. Note: This
option would be in addition to the continuing option of filing a
divisional application.
Should the USPTO consider this option?
If so, how should the loss in issue and maintenance fee collections
relative to the current structure be offset?
Synopsis of Comments to Issue 8: The comments generally expressed mixed
support for this proposed procedure.
Issue 9: In view of the previous questions and the range of
issues and options, should the USPTO consider: (1) seeking a change to
35 U.S.C. 121 to adopt a Unity of Invention standard (and if so,
what would such statutory change be, including whether such statute
provide for applicants to pay for additional inventions that lack Unity
of Invention to be examined in the same application); (2) maintaining
the current restriction practice in the USPTO; (3) a modification to
the USPTO rules and procedures to adopt aspects of Unity of Invention
practice without making any statutory changes (if so, in what manner
should rule changes be made)?
Synopsis of Comments to Issue 9: The comments generally provided strong
input that the USPTO should first address consistency in current procedures
and then determine if further changes are needed. The comments generally
expressed that the USPTO should balance cost and impact on quality before
going forward with any change in statute or procedure (other than following
its published procedure). Some comments suggested the USPTO seek authority
to permit applicants to either file additional divisional applications or
seek examination of related inventions in a single case with fee setting
authority to recover costs.
Issue 10: If you have other solutions to offer which are not
addressed herein, what would they be?
Synopsis of Comments to Issue 10: Some commentators suggested an overhaul
of aspects of current production system that are perceived to encourage
undue restriction requirements. One commentator suggested EPO and PCT adopt
the US system. Some commentators suggested revisions of rejoinder practice
to permit greater use.
Overall Summary of Public Comments
The public comments were generally supportive of the USPTO's
efforts to study restriction practice reforms. In general, the comments
expressed a desire to immediately address inconsistent practices under
the current restriction standards. The comments supported the USPTO
making the best choice in regard to any long-term restriction reforms
and not being limited to considering only a strict PCT Unity of
Invention standard. The public comments generally pointed to a number
of goals for any changes of the restriction standards:
. Increase cost-effectiveness,
. Promote quality patents,
. Enhance predictability of restrictions,
. Encourage one examiner to examine all claims to the same invention
or inventive concept,
. Do not encourage the filing of divisional applications so as to
reduce the number of patent file histories directed to related claims,
and
. Promote harmonization.
Restriction Reform Options to be Studied
Based on the public comments, four restriction reform options
are being considered for further study:
1. Current national restriction practice with option to request
examination of extra invention(s) for a fee(s)
2. PCT Unity modified in view of the public comments
3. Three-Tiered Fee Structure to adjust the costs imposed with the
aggregate efforts needed for certain groups of applications
4. Independent and distinct - revised process
Details of each of these four options follow:
1. Keep current 35 U.S.C. 121 standard, and allow some form
of concurrent examination but limiting number of groups in a single case.
2. Straight PCT Unity of Invention, consistent with harmonization
. Adoption of PCT standards and examples for US national
practice.
. Adjustment of Fees
. Need to reach consensus on what fee(s) should be increased.
. Permit examination of additional inventions that lack unity
of invention for a fee.
3. Three-Tiered Fee Structure Option
. Base fees on additional issues of patentability and
additional searches thus creating a three-tiered fee structure
based on the degree of relatedness and search burden.
. Applicants would pay a base fee if only claims directed to
substantially similar inventions are elected.
. An intermediate fee or surcharge above the base fee would be
charged for election of a number of related inventions that
require limited additional searching but include similar
patentability issues.
. A higher surcharge above the base fee would be charged for
election of multiple unrelated inventions that require additional
searching and also present dissimilar patentability issues.
4. Independent and Distinct - Revised Process
. Re-interpreting the current 35 U.S.C. 121 "independent
and distinct" standard. This would involve moving away from our
current interpretation of "independent or distinct".
This revision would result in more inventions that are "related"
but not truly independent being examined together relative to
today's standard.
. In order to impose a restriction between two inventions, the
examiner must set forth:
. That the inventions are distinct (patentable over each other)
and
. That the inventions are independent. (Independent may be
shown by: (1) there being no common feature; or (2) an
inference by the examiner that the common feature fails to
define over the prior art.)
. The restriction requirement would be withdrawn if the common
feature were determined to be patentable after examination of
claims drawn to the elected invention or species.
. Benefits:
. If a claim is allowable, determine whether a common
patentable feature is present in both the allowed claim(s) and
the withdrawn claims(s)
. If other inventions include a patentable common feature, the
other inventions would be rejoined
. No need to draft overly broad linking claims
. Where elected invention is not patentable, USPTO burden is
minimized
. Applicant would "provisionally elect" one of the related
inventions for examination and define the feature(s) they
consider to be in common between the related inventions.
. Examiner would search and examine the elected invention.
. If the elected invention is not patentable the restriction
would be made final and the claims directed to the non-elected
invention(s) would be withdrawn.
. If the elected invention is patentable, the examiner would
continue to search the common feature (typically by searching
the other related inventions).
. If the common feature is determined to be not patentable the
restriction is made final (although any related invention
searched and determined to be patentable prior to uncovering
the rejectable related invention should be rejoined with the
elected invention).
. If the common feature is determined to be patentable the
restriction between the related inventions including the
special technical feature would be withdrawn.
Restriction Reform Study Project Plan and Timeline
The study of these four options will require an in-depth
analysis how each option would be implemented and the business impacts
to the USPTO associated with each option. The revised project timeline:
. December 15, 2003 - Complete the details of how each
option will be implemented. This will include determining the changes
to the standard (options 3 & 4), how examiners will apply the standard,
and the rules/procedures for processing applications based on the
assumptions of each of the options.
. February 1, 2004 - Complete a sampling of
applications, applying the standards of all four options to each
application. Based on that sampling and the applications of the
different options determine how many inventions or claim sets will be
examined in each option.
. April 1, 2004 - Complete the business analysis of
each option. This will involve:
. Determining the additional number of inventions or claims
sets that would be examined in each option as compared to the
current business practice.
. Make assumptions on any changes to application prosecution
and filing trends.
. Determining the workload impacts involved in terms of
additional inventions or claim sets, as well as impacts on
original, continuations, and divisional application filing rates
under all four options.
. Address workload issues when transitioning to any new
standard and any impacts on pendency and patent term adjustment.
. Determine the impact on income under the current fee schedule
for all four options.
. If income is impacted in any option, determine how to make
corresponding adjustments to fees.
. Analyze the impact of implementing each of the four options
on the quality of examination, examiner resources, organizational
structure, classification, rules and legislative changes, and
labor-management relations issues.
. May 1, 2004 - Finalize and publish a "Green Paper", detailing the
options and the business impact analysis.
. June 15, 2004 - Hold public hearing on restriction
reform options outlined in the Green Paper.
. August 15, 2004 - Publish final report, or "White
Paper", on the recommendation of any restriction reform changes.
For Further Information Contact:
Charles Pearson directly by phone (703) 306-4145, or by facsimile to
(703) 305-1013, marked to the attention of Charles Pearson, or by
electronic mail addressed to: cpearson@uspto.gov or Robert Clarke directly
by phone (703) 305-9177 or by electronic mail addressed to
robert.clarke@uspto.gov.
STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy