How does the USPTO enforce the ‘one independent and distinct design’ rule in international applications?

The USPTO enforces the ‘one independent and distinct design’ rule in international design applications through specific procedures outlined in MPEP 2920.05(b): The examiner may issue an Office action requiring restriction to a single design. The USPTO may request that WIPO invite the applicant to limit the application to a single design. The MPEP provides specific…

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What is the “unity of design” requirement in international design applications?

The “unity of design” requirement in international design applications refers to the principle that an application should contain only one independent and distinct design. According to MPEP 2920.05(b): “The examiner should determine whether the application complies with the unity of design requirement. This requirement is considered during both formalities review and substantive examination.” If an…

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How does a restriction requirement affect biological deposit obligations?

A restriction requirement can impact biological deposit obligations in patent applications. The MPEP 2411.01 provides guidance on this situation: “In the event of a restriction requirement, all claims requiring a deposit must be limited to the elected subject matter that relates to the deposit.” This means that if a restriction requirement is made, and the…

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What is the purpose of restricting an application to interfering claims?

The purpose of restricting an application to interfering claims is to separate potentially conflicting inventions and streamline the examination process. According to MPEP 2304.01(d): “Similarly, the examiner should require an applicant to restrict an application to the interfering claims in accordance with pre-AIA 35 U.S.C. 121, in which case the applicant may file a divisional…

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How can I protect designs cancelled from an international design application due to a restriction requirement?

Designs cancelled from a nonprovisional international design application as a result of a restriction requirement can be protected through the filing of divisional applications. These divisional applications can be filed in two ways: As a design application under 35 U.S.C. chapter 16, or As an international design application designating the United States According to MPEP…

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How does the “one independent and distinct design” requirement apply to international design applications?

The requirement for only one independent and distinct design applies to nonprovisional international design applications designating the United States. Key points include: U.S. law requires that only one independent and distinct design may be claimed in a single application. If more than one independent and distinct design is claimed, the examiner will require the applicant…

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What happens if an international design application contains more than one independent and distinct design?

If an international design application contains more than one independent and distinct design, the examiner will issue a notification of refusal or other Office action requiring the applicant to elect one independent and distinct design for prosecution. According to MPEP 2920.05(b): “If more than one independent and distinct design is claimed in the nonprovisional international…

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How can the impact of suspension on patent term adjustment be minimized?

To minimize the impact of suspension on patent term adjustment during an interference proceeding, the MPEP 2307.03 suggests considering certain steps. Specifically, it states: “Steps should be considered to minimize the effect of any patent term adjustment that would result from the suspension.” One strategy outlined in the MPEP is to use restriction requirements: “For…

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What should I consider regarding inventorship when responding to a restriction requirement in an international design application?

When responding to a restriction requirement in an international design application, it’s important to consider the potential need to correct inventorship. This is particularly relevant if you’re cancelling non-elected designs, as it may affect who qualifies as an inventor for the remaining design(s). According to MPEP 2920.05(b): “Applicants should consider the need to correct inventorship…

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