USPTO Issues Green Paper on Restriction Practice Reform

On June 3, 2005, the USPTO published its “Green Paper� describing and evaluating four options to reform restriction practice for patent applications including multiple independent inventions. Prior to considering the desirability of drafting proposed legislation in a “White Paper� on reforming restriction practice, the USPTO is seeking public comment on the Green Paper. To be ensured of consideration, written comments must be received on or before August 5, 2005.

The Green Paper concludes that only the first two of the following four options under consideartion are viable for implementation:

1. Current national restriction practice with an option to pay for the examination of additional invention(s) within the original application.
2. Modified PCT unity of invention standard with: 1) an additional requirement that the special technical/common feature comply with 35 U.S.C. § 112, 1st paragraph and 2) an option to pay for additional invention(s).
3. Three-tiered fee structure dependent upon the search burden associated with, and the presence of different patentability issues between, various inventions.
4. Independent and distinct standard (as opposed to independent or distinct).

Under "Option 1," the current 35 U.S.C. §121 "independent or distinct" standard for restriction would be retained and applicants would be given the option to request and pay for examination of up to 2 additional independent or distinct inventions beyond that which would be examined in the current practice. Applicants would also have the option to request and pay for examination of up to 10 species separately claimed, or claimed within a genus or Markush group, at an additional per species cost.

Under "Option 2," the current PCT "unity of invention" standard, modified to require that any purported special technical/common feature comply with 35 U.S.C. §112, 1st paragraph (in addition to being novel and non-obvious), would be applied to all US applications. Applicants would be given the option of concurrent examination of up to two additional inventions that lack unity of invention for an additional fee.

More specifially, the Green Paper concludes that

The first option of permitting applicant to request and pay for examination of additional inventions, while retaining the current restriction standard, would be significantly less difficult to implement than the remainder of the options. Its impacts are principally directed to staffing and fee revisions designed to maintain constant revenue. While this option, like all of the others, has a short-term negative impact on office-wide pendency, it is expected to introduce the least amount of uncertainty and negative impact on the overall patent system.

The second option of adopting the unity of invention standard, modified to require that the common feature satisfy the enablement and description requirements in addition to novelty and non-obviousness, is considered the second best alternative. However, adoption of this standard would include all of the impacts of the first option and a number of others. The second option would require additional initial training and subsequent monitoring of the examiners, as well as serious evaluation of each of the examination changes suggested in the original request for comment, to which the public was strongly opposed. This option is considered to have a somewhat higher degree of uncertainty and negative impact on the overall patent system relative to the first option; nevertheless it has significantly less impact relative to the third and fourth options.

The third (three-tier fee structure) and fourth ("independent and distinct" standard) options introduce even greater changes to the existing system that would produce a number of new, significant challenges, some of which may not be predictable. It is not at all clear that the transition to either of these two options would result in an improved system, and such a transition may even cause significant quality and pendency degradation. Transition to either the third or fourth option is not recommended without an effective pilot evaluation of their long-term impact. Given the initial results, the limited resources of the Office, and the anticipated implementation issues, continued consideration of either of these two options beyond that described in this paper is not recommended.

The development of the standards reflected in Options 3 and 4 highlights the difficulty in the formulation of any new standard. A new standard
should be both easy to understand and to implement; unfortunately, the standards
embodied in Options 3 and 4 proved to be neither. While Options 1 and 2 were
somewhat more promising, the results of the business case analysis indicate that
even these options do not satisfactorily achieve the desired balance.

Appropriate legislation would need to be enacted in the event a decision to
implement Options 1 or 2 is made. Implementation of Option 1 would not be viable
without a revision to the fees for search/examination, issue and maintenance.
Implementation of Option 2 would require revision to 35 U.S.C. 121 in addition
to the same fee revisions required to implement Option 1. Options 3 and 4
are not considered viable for implementation.