TC1600 RESTRICTION PRACTICE
ACTION PLAN
This action plan is designed to improve the quality and consistency of restriction
practices in TC1600. The need for this action plan is based on both
the results of internal work product reviews and input from applicants
and attorneys. As opposed to other Technology Centers, restriction practice
in TC1600 is complicated by the complexity of the technology, the types
of claim sets being filed on these complex technologies, and the difficulty
applying current restriction practice guidelines to claims presented
in TC 1600.
This “5-point” action
plan will (1) publish examples of claim sets, (2) emphasize rejoinder
practice, (3) deliver and publish updated examiner training on restriction
practice, (4) enhance the quality review of restriction requirements,
and (5) assess the progress of the action plan.
The action plan will be implemented at the same time that the Agency is conducting a study
of long-term restriction practice reforms. TC 1600 will begin implementation
of this action plan immediately and contemplates that it will be fully
implemented in six to nine months.
1. PUBLISH EXAMPLES OF CLAIM SETS
We will publish examples of sets of claims that will be
examined together regardless of whether they can otherwise be restricted
under 35 USC §121 because the search and examination of the claims have
been determined not to present a serious burden on the Office at the present
time. This will help address some of the issues raised by customers concerning
certain types of inventions that they wish to be examined in the same application.
We will also publish examples of claim sets where current
rules regarding restriction are difficult to apply.
2. EMPHASIS ON REJOINDER PRACTICE
We will, in TC1600, include a form paragraph with all
restrictions reminding applicants of their options under rejoinder practice. Both
applicants and examiners often overlook the issue of rejoinder. This form
paragraph in our Office actions will be a clear reminder to applicants
of their ability to request rejoinder under the appropriate conditions. Use
of this form paragraph will begin immediately.
3. EXAMINER TRAINING ON RESTRICTION PRACTICE
We will deliver restriction practice training to all TC
1600 examiners, including training examples targeted to specific workgroups
within TC 1600, focusing on high-impact art units first. This training
will focus on proper restriction practices including appropriate analyses
and grouping of claims, and proper formulation of and support for a restriction
requirement. The training materials will be published on the USPTO website.
4. ENHANCED REVIEW OF RESTRICTION REQUIREMENTS
We will implement a second pair-of-eyes review on restrictions throughout
Technology Center 1600, beginning with art units where either (1) the number
of restrictions is particularly high, or (2) indications of poor quality
restrictions are noted in the reviews. This includes a review of not only
first action restrictions, but also all restriction requirements in second
and subsequent Office Actions.
This will allow us to screen and correct specific cases, as well as identify
problem areas for training. This will also help address some specific complaints
concerning the number and types of restriction requirements in second and
subsequent Office Actions. This second pair-of-eyes initiative will begin
immediately.
5. CONTINUOUS ASSESSMENT
In order to assess the impact of this restriction practice action plan,
we will:
a. Sample restrictions at periodic intervals to monitor quality and average number
of divided inventions. This includes a special review of all applications
in which a restriction decision has been petitioned,
b. Monitor the number and quality of second and subsequent restrictions, and
c. Survey customers, for example at quarterly Biotech/Chemical/Pharmaceutical
Customer Partnership meetings, for their perception of TC 1600
restriction practices.
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