TC1600 Restriction Practice Action Plan and Unity of Invention Study

1. TC1600 Restriction Practice Action Plan and Unity of Invention Study Bruce Kisliuk Group Director, TC1600 United States Patent and Trademark Office

2. TC1600 Restriction Practice Action Plan and Unity of Invention Study • Review of TC1600 Restriction Practice Action Plan • Summary of Public Comments • Long-Term Restriction Reform Options

3. I. Review of TC1600 Restriction Practice Action Plan The action plan includes 5 initiatives: • Publish Examples Of Claim Sets • Emphasis On Rejoinder Practice • Examiner Training On Restriction Practice • Enhanced Review Of Restriction Requirements • Continuous Assessment

4. I. Review of TC1600 Restriction Practice Action Plan • Publish Examples Of Claim Sets • Provide examples that do not present a serious burden on the Office • Provide both applicant’s and examiners with guidance • Emphasis On Rejoinder Practice • Provide a new Rejoinder paragraph • Remind applicants of their options on Rejoinder • Examiner Training On Restriction Practice • Emphasize proper restriction practices • Claim groupings and support/formulation of restriction requirements • Provide Art Unit/Workgroup specific examples • Publish materials

5. I. Review of TC1600 Restriction Practice Action Plan • Enhanced Review Of Restriction Requirements • Review Art Units with high number of restrictions and indications of inconsistent requirements • Includes reviewing restrictions in 2nd and subsequent actions • Continuous Assessment • Collect data from reviews and samplings • Survey customers on impact of action plan

6. Unity of Invention Study II. Request for Public Comments • 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). • 26 Public comments were received

7. Unity of Invention Study • Public Reaction to Request for Comments: • In the long-term, Office should make the best choice and should not limit itself to PCT Type of Unity of Invention • The Office in addition to the TC1600 Restriction Practice Action Plan will continue to study long-term restriction reform options.

8. III. Long-TermRestriction Reform Study • Public comments show little support for PCT type of Unity of Invention as best option for restriction reform • Public Comments pointed to a number of goals: • Increase cost-effectiveness • Promote quality patents • Enhance predictability of restrictions • Promote harmonization • Factors encouraged by Public Comments: • Avoid attempts to overwhelm Office/examiner • Provide meaningful options to avoid overly narrow restrictions

9. III. Long-TermRestriction Reform Study (Continued) • Any change to the current restriction practice will necessarily be a long term undertaking in order to: • Determine and implement appropriate examiner credit adjustments • Determine and implement appropriate fee and patent term adjustment revisions • Create and implement training to make appropriate restrictions after changing the practice • Determine and address staffing issues • Determine and implement rules of practice changes and make appropriate revisions to MPEP

10. III. Long-TermRestriction Reform Study (Continued) • Options • Current practice with option to request examination of extra invention(s) for a fee(s) • PCT Unity • Three-Tiered Fee Structure • Independent and distinct – revised process

11. Next Steps • Complete details of how the standards of each option would be be applied • Complete sampling of applications as applied to each option to determine invention and/or claim sets • Complete business analysis of each option • Publish “Green Paper” detailing options and business impact analysis • Hold public hearing on options in “Green Paper” • Publish final report or “White paper” on our recommended changes