Saturday, September 13, 2008

US provisionals

Dear Nancy,

Thanks for organising this blog. I hope to be going to use this for typical day-to-day typicalities. I will be able to inform you on European and Dutch patent law and the pecularities of working with these systems.
I hope that I will be able to learn from you all on the prosecution details in other countries.

One thing that annoys me more and more lately, is the habit of the US examiners to issue restriction requirements. Especially in the biotech field, I am always getting these, and it seems that the frequency is going up dramatically. Not only regarding to the number of applications that meet with such a restriction requirement, but also the 'depth' of the restriction is increasing: where it used to be that the examiner found two or three inventions in one application, now regularly I have applications with 8 or more inventions.
The problem is, that I am happy to divide out my application if there are indeed more than one invention, but most often in the PCT application from which the US application did originate no lack of unity has been mentioned, nor is there any problem with the corresponding European application.
Is there any explanation for this behaviour of the examiners? Do they get more credits for a restriction requirement than for a normal office action or grant? Do they need to increase the number of (divisional) application to get more income for the USPTO?

Also, I have found it useless to file a protest to these restriction requirements. One of the latest examples is a case where initially a restriction requirement was issued because there was some prior art that allegedly took away the novelty or inventive step of the general claim(s). Luckily, the cited prior art was either only published after the priority date or it was arguable not anticipating the invention. So, in our response (in which we also filed some minor amendments in the claims) we protested against this restriction requirement. To my surprise, I recently received a new restriction requirement, wherein the examiner basically defined the same 8 inventions as in the earlier restriction requirement. However, he now based this restriction on the provisions of the MPEP. No word was spent to the earlier restriction requirement and/or to our response. And in this case in both the original PCT application and in the European equivalent application we do not have any problems with unity at all.

I recently posted a general question on LinkedIn and in one of the answers it was suggested to bring MPEP 1893.03(d) to the U.S. Examiner's attention. Although I know that many of my US colleague attorneys agree with me that protesting is useless, has anyone any experience with bringing this argument?

Thanks for any comments in advance.

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