Petitions and Restrictions

The Patent Office issues millions of restriction requirements. Some published data indicates restriction rates as high as 90% in some art units. Anyone managing a patent portfolio who is not focused like a laser on strategically addressing restrictions is leaving a lot on the table.

A recent post discussed the situation where examiners are so bold as to issue a restriction requirement in response to an appeal brief - an appeal brief for crying out loud! Clearly Examiners feel that they can thumb their nose to authority and do basically whatever they want in issuing restrictions. And it is easy to understand why. The rules governing restriction practice in the US are some of the most convoluted, complicated, and impenetrable rules in all of patent law. The procedures for fighting against restriction are stacked against the applicant and create motivation to simply give in and go along (we could spend pages explaining why). Even when an applicant does stand up against restrictions, the ultimate decisions are often random as the ultimate decision maker is simply another USPTO official, as opposed to an independent judge.

One of the procedural ways in which the deck is stacked against the applicant is that when the Office issues a restriction, the Applicant must make an election and cannot immediately petition. In other words, no matter how ridiculous, the Applicant must make an election and traverse immediately to preserve the ability to petition in the future. While the Applicant can petition once the restriction is made final, often this extra effort and cost is deemed too much because at that point the applicant is now dealing with responding to substantive rejections.

However, the requirement for the Applicant to wait until a restriction is final before petitioning only applies when the Applicant is petitioning the substance of the rejection. If the Office has violated some other rule in issuing a restriction, then the Applicant can immediately petition the restriction on that ground. Consider the recent post noted above where an examiner issues a restriction requirement in response to an appeal brief. This action is a clear violation of the Office rules regarding how an Examiner must respond to the appeal brief (as noted in the previous post). Therefore, the Applicant can immediately petition the restriction as improper (and even government officials in the Office of Petitions have to acquiesce and agree that such action is improper). It is important to note that when filing a petition in such situations, the petition should be careful to note that the petition is under 1.182 (question not provided for) and that the petition is NOT regarding the substance of the restriction (as you can always file that petition later once the restriction is made final). For example, in the example above where a restriction is issued responsive to an appeal brief, the petition can state that the petition is from improper agency action in issuing restrictions at a time that the Office has no authority to issue, and that the Applicant should not be required to go through the wasted time and expense in answering an action that is improper on its face and for which the Office has no authority.

So, when the issuance of a restriction is itself a violation of the Office's rules and procedures, you do not have to waste your time and go through the motions and wait; rather, you can immediately petition.