Patent Law

Don't Feel So Restricted

By Gary Odom and Jordan Kuhn

From MPEP 802.02: Restriction practice is designed to require applicants to "elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, a species within a genus) for examination when two or more independent inventions and/or two or more distinct inventions are claimed in an application."

After speaking recently with a pro se applicant, the reminder bell went off, alerting me once again to the overuse and misuse of restriction requirements as another means for examiners to further "lazy-fy" the system, by reducing the claims examined to a number they deem appropriate. Granted, restriction practice does have some quirks and is often a bit tricky, but the principals are pounded into the apparently un-receptive brains of examiners during 8 months of training academy, and anyone who doesn't get it after 8 months probably isn't intellectually qualified for any career, except maybe ... patent examining .

Applicants must always elect no matter how ridiculous the restriction, but they may traverse the restriction, and traverse they must. Examiners and mis-management must not be allowed yet another method of restricting invention and innovation. Prosecutors must rebel and challenge misuse and misunderstanding by lackadaisical randomly competent examiners. So, go back, re-read MPEP Chapter 800, and break free from the bonds of the overly restrictive PTO.

Full post as published by The Patent Prospector on March 20, 2008 (boomark / email).