The USPTO violates Federal Rules every time it issues an "election by original presentation" restriction in a final rejection. While unfair to every applicant, these violations disproportionately impact those least able to defend against the violation - small, independent, inventors.
On April 26, 2018, a first letter was sent to the USPTO, explaining how the USPTO violates the CFR every time it issues a restriction, for the first time, in a final rejection under the guise of "election by original presentation" logic. The text of the original letter is included below.
The USPTO provided a response on June 5, 2018 (linked here). The USPTO's primary justification was that a different rule allowed restrictions at any time because that rule (defining a specific type of restriction, known as "election by original presentation") did not have a timing limitation. Of course this type of reasoning is nonsense.
Today, a response (linked here) has been sent to the USPTO pointing out the errors in their analysis and imploring them to reconsider their position.
Please support this effort and use your own resources to pressure the USPTO to follow its own regulations and rules.
Note that this issue was raised in a previous post, and is now gaining steam, including assistance from Sam Thacker, expecting his J.D. in 2019 from Lewis and Clark Law School.
Dear Director Iancu.
I understand you are extremely busy and have very limited time, but I write to you today to request your help in directing the USPTO examiners and the Office of Petitions to properly apply the Code of Federal Regulations when issuing restrictions, and particularly to address the practice of issuing new “election by original presentation” restrictions in a Final Rejection. This practice clearly violates 37 CFR 1.142(a), second sentence and should be stopped immediately. The issue is straightforward and would have a significant impact in reducing wasted effort and cost for applicants, while actually increasing efficiency at the USPTO. This action would also show your commitment to ensuring a fair and balanced examination process.
Restrictions are a major driver of increased costs and additional work on the part of Applicants and the USPTO. In most art units, restrictions occur in a majority of applications. The additional efforts in preparing restriction requirements, answering and responding to restriction requirements, petitioning restriction requirements, re-working office action when restrictions are overturned, etc., are not an insignificant endeavor. Thus, the USPTO should endeavor to only issue proper restrictions.
One aspect of restriction practice includes the Office’s approach to issuing new restrictions responsive to an applicant’s amendments. The USPTO refers to this as “election by original presentation” where newly amended claims are refused to be examined under the theory that the amendment has shifted the invention from the invention originally examined in the first or previous action. MPEP 821.03 explains the Office’s position that claims added or amended after an action on the merits can be restricted out (and thus not examined) even if no restriction was ever made originally if the new claims are directed to an invention that is independent or distinct from the invention originally claimed. The Office routinely issues such restrictions in final rejections and explains the actions as follows:
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims not directed to the elected invention are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Unfortunately, this practice flies in the face of 37 CFR 1.142(a), second sentence, which indicates that a restriction requirement “will normally be made before any action upon the merits; however, it may be made at any time before final action.” (emphasis added). Rule 142(b) states that "claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled." This section of the rule says nothing about claims elected by original presentation, and certainly does not provide an exception for providing restrictions at a time other than before a final action.
Whether or not the Office is able to lawfully issue a restriction if the Applicant presents new claim amendments that shift the invention after the first action, this does not mean that the Office can do so for the first time in a final rejection. Rather, the rules are clear it must do so, if at all, before the final rejection. This makes sense since often the Applicant has amended the claims to add additional features to distinguish art cited in the first action. If the Office now considers the invention to have shifted so as to require restriction, it can do so by setting forth this new restriction in a non-final action. This then gives the applicant the opportunity to modify or try alternative amendments that do avoid the shift without having to file an RCE. The Office would have no excess burden here because, in the (non-final) action providing the new restriction, the Office has not actually searched for the new features (this must be true since any restriction requires there to be a search burden and if the Office has already done the search then there can be no search burden).
Further, requiring examiners to follow the regulations would also improve compact prosecution and take away wasted effort in challenging improper restrictions. Under current practice, consider the pickle in which the applicant finds itself. The Applicant is now facing a final rejection and even if they believe the restriction is improper, filing a petition against the restriction does not toll the deadline to respond to the final rejection. Thus, either an RCE is filed, wasting time and money, or the Applicant runs the risk of abandonment should the petition be denied.
Unfortunately, there is a large incentive for Examiners to use the "election by original presentation" tool to aid in rejecting applications while spending little to no time or effort in the examination. In particular, any time an amendment is made that avoids the prior art but does not come directly from an already present dependent claim, the Examiner can simply refuse to consider the new claim element and issue a final rejection without even having to do any further searching or analysis by arguing that the invention has now shifted to something different. As explained above, the Applicant is then faced with a final rejection and most applicants are forced to file an RCE and try a different amendment.
I respectfully request that you investigate this issue and come to your own conclusions as to how to best address this situation. While it is a very narrow issue, it has a significant ripple effect and impacts a very large number of cases. Also, given the shaky ground on which Chevron deference stands, it would behoove the USPTO to follow the language of federal regulations rather than interpret the rule to be something other than what it says simply because it is beneficial to the USPTO.
If you have any questions or if I may be of service in any way in discussing this matter or otherwise, please do not hesitate to contact me.
I make this request as an individual interested in the fair administration of our patent system, and not for or at the request of any client.
John D. Russell, Ph.D.
IP attorney, inventor, and blogger (mriplaw.com)