Q: What are the reasons for insisting upon restriction in a patent application?

According to MPEP 817 , examiners must provide reasons for insisting upon restriction in a patent application. The main reasons include: Separate status in the art Different classification Same classification but recognition of divergent subject matter Divergent fields of search Search required for one group not required for the other These reasons are used to demonstrate that there would be a serious search and/or examination burden if restriction were not required. As stated in Form Paragraph 8.21: "Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: [1]." Examiners must insert the applicable reason(s) in the bracket to justify the restriction requirement. To learn more: restriction requirement patent examination search burden examination burden MPEP 817

Question 1

What are the reasons for insisting on restriction in combination-subcombination cases?

Accepted Answer

What are the reasons for insisting on restriction in combination-subcombination cases?

According to MPEP 806.05(c), examiners must provide reasons for insisting on restriction in combination-subcombination cases. These reasons typically include:

Separate classification: The combination and subcombination belong to different subclasses or different search areas.
Separate status in the art: The inventions have attained recognition as separate subjects for inventive effort.
Divergent fields of search: The search required for one invention is not required for the other.

The MPEP states: "The examiner must show by appropriate explanation one of the following: (A) Separate classification thereof... (B) A separate status in the art... (C) A different field of search." These reasons help justify the additional burden placed on the examiner if restriction is not required.

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Question 2

What should applicants consider when choosing an International Searching Authority?

Accepted Answer

When choosing an International Searching Authority (ISA), applicants should carefully consider the subject matter of their invention and the search policies of different ISAs. The MPEP 1843.02 advises:

"The applicant considering the filing of an international application may be well advised not to file one if the subject matter of the application falls into one of the above mentioned areas. If the applicant still does file, the International Searching Authority may declare that it will not establish an international search report. Accordingly, applicant should take into consideration which International Searching Authority (e.g., European Patent Office) is selected to conduct the international search."

This guidance suggests that applicants should:

Assess whether their invention falls into categories that some ISAs may not search
Research the specific policies of potential ISAs regarding subject matter restrictions
Consider the USPTO as an ISA if comprehensive searching is desired, as it searches all subject matter
Weigh the potential impact on the application's processing if an ISA declares it won't establish a search report

Choosing the right ISA can significantly affect the scope and quality of the international search, potentially impacting the success of the international application.

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Question 3

What are the reasons for insisting upon restriction in a patent application?

Accepted Answer

According to MPEP 817, examiners must provide reasons for insisting upon restriction in a patent application. The main reasons include:

Separate status in the art
Different classification
Same classification but recognition of divergent subject matter
Divergent fields of search
Search required for one group not required for the other

These reasons are used to demonstrate that there would be a serious search and/or examination burden if restriction were not required. As stated in Form Paragraph 8.21:

"Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: [1]."

Examiners must insert the applicable reason(s) in the bracket to justify the restriction requirement.

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Question 4

How should patent examiners approach classification searching?

Accepted Answer

Patent examiners should approach classification searching by considering both the claimed and disclosed inventions. The MPEP 904.02(a) states:

"A proper field of search normally includes the classification location(s) in which the claimed subject matter of an application would be properly classified at the time of the application's classification or grant of a patent."

Additionally, examiners should:

Search all appropriate classifications, including those for disclosed features not claimed
Consider both domestic and foreign patent documents
Use various classification systems, including CPC, IPC, and USPC

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Question 5

How does patent family information assist in prior art searches?

Accepted Answer

Patent family information plays a crucial role in assisting examiners with prior art searches. While MPEP 901.07 doesn't explicitly detail this process, it's understood that patent family information helps in several ways:

Expanded Search Scope: By identifying related documents in different jurisdictions, examiners can broaden their search for relevant prior art.
Language Barriers: Patent family information often includes documents in various languages, allowing examiners to discover prior art that might otherwise be missed due to language limitations.
Priority Dates: Family documents can reveal earlier priority dates, which are crucial for determining the relevance of prior art.
Technological Development: By examining related documents over time, examiners can trace the evolution of an invention and identify potential prior art at different stages of development.

This comprehensive approach enabled by patent family information enhances the quality and thoroughness of prior art searches, contributing to more robust patent examinations.

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Question 6

How does the CPC system affect prior art searches in patent examination?

Accepted Answer

The CPC system significantly impacts prior art searches in patent examination. While not explicitly stated in MPEP 909.01(a), the CPC system's influence on prior art searches can be inferred from its purpose and structure. The CPC system:

Provides a more granular and specific classification of patent documents
Enables more targeted and efficient prior art searches
Allows examiners to quickly identify relevant technology areas
Facilitates the use of classification-based search strategies

By using CPC symbols, examiners can narrow down their search to highly relevant patent documents, potentially improving the quality and efficiency of prior art searches. This can lead to more comprehensive and accurate examinations, benefiting both patent applicants and the patent system as a whole.

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Question 7

What triggers an order for inter partes reexamination?

Accepted Answer

An order for inter partes reexamination is triggered when the Director finds that a substantial new question of patentability (SNQ) affecting a claim of a patent is raised, or that there is a reasonable likelihood that the requester would prevail (RLP) with respect to at least one of the claims challenged in the request.

As stated in MPEP 2646:

For a request filed prior to September 16, 2011: "If, in a determination made under section 312(a), the Director finds that a substantial new question of patentability affecting a claim of a patent is raised, the determination shall include an order for inter partes reexamination of the patent for resolution of the question."

For a request filed between September 16, 2011 and September 15, 2012: "If, in a determination made under section 312(a), the Director finds that it has been shown that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request, the determination shall include an order for inter partes reexamination of the patent for resolution of the question."

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Question 8

Where can I find information about limitations or restrictions when using the JPO as an ISA?

Accepted Answer

To find information about limitations or restrictions when using the Japan Patent Office (JPO) as an International Searching Authority (ISA), you should refer to the following sources:

The PCT Information section of the Official Gazette on the USPTO's website
Annex D of the PCT Applicant's Guide on WIPO's website

As stated in the MPEP: For any limitations or restrictions with the JPO as an ISA, please refer to the PCT Information section of the Official Gazette found on the USPTO's website ( www.uspto.gov/learning-and-resources/official-gazette ). For additional information, e.g., subject matter limitations, additional search fees, cited documents, etc., please refer to Annex D of the PCT Applicant's Guide found on WIPO's website ( www.wipo.int/pct/en/guide/index.html ).

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Question 9

Where can I find additional information about KIPO as an International Searching Authority?

Accepted Answer

For additional information about the Korean Intellectual Property Office (KIPO) as an International Searching Authority (ISA), you can refer to two main sources:

USPTO Official Gazette: This contains information on limitations or restrictions with KIPO as an ISA.
PCT Applicant's Guide (Annex D): This provides details on subject matter limitations, additional search fees, cited documents, and more.

According to MPEP 1840.02: For any limitations or restrictions with the KIPO as an ISA, please refer to the PCT Information section of the Official Gazette found on the USPTO's website (www.uspto.gov/learning-and-resources/official-gazette). For additional information, e.g., subject matter limitations, additional search fees, cited documents, etc., please refer to Annex D of the PCT Applicant's Guide found on WIPO's website (www.wipo.int/pct/en/guide/index.html).

To learn more:

KIPO
International Searching Authority
PCT Information
Official Gazette
PCT Applicant's Guide

Question 10

How can I access the Electronic Official Gazette for Patents (eOG:P)?

Accepted Answer

The Electronic Official Gazette for Patents (eOG:P) is accessible through the USPTO website. According to MPEP 1703, you can find it at: www.uspto.gov/learning-and-resources/official-gazette/official-gazette-patents

The eOG:P offers several browsing options:

Browse by CPC or USPC classification
Access patents by class/subclass or patentee name
View patents by type (utility, design, plant)
Access specific patents using various indexing methods

This electronic format allows for easy navigation and searching of newly issued patents.

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