Reply to Restriction Requirement still necessary?

Started by njwolf, 03-30-15 at 10:02 PM

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njwolf

After filing a non-provisional in the U.S., I received a Restriction Requirement requiring both an election of an invention and an election of a species and setting a two (2) month statutory period to reply.  If within one (1) year of the U.S. filing and before the two (2) month statutory period to reply to the Restriction Requirement, I file a PCT application and select the EPO for the search, do I still need to submit a reply to the U.S. examiner's Restriction Requirement?

Robert K S

#1
Sorry, but I'm still a little unclear with regards to the scenario.  Is it the intent to abandon the domestic patent rights on the invention(s)?  Obviously, if you fail to prosecute in the U.S., the domestic application will go abandoned.
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

khazzah

Quote from: njwolf on 03-30-15 at 10:02 PM
After filing a non-provisional in the U.S., I received a Restriction Requirement requiring both an election of an invention and an election of a species and setting a two (2) month statutory period to reply.  If within one (1) year of the U.S. filing and before the two (2) month statutory period to reply to the Restriction Requirement, I file a PCT application and select the EPO for the search, do I still need to submit a reply to the U.S. examiner's Restriction Requirement?

If all you care about is co-pendency for the PCT app, then No, you don't need to file a Response to Restriction making an election. Since the PCT is all you care about, you could then let the US case go abandoned.

Note that the Restriction is almost certainly a Shortened Statutory period. That means you actually have 6 months to respond, but if you go past the 2-month period then you have to pay EOTs to keep the case pending -- even if it's only for co-pendency. 
Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.

patent_type_real

Not quite sure of the point here.  Yes, you can file a PCT app, let the restricted US app go abandoned, then enter US national stage or do a US continuation from the PCT app.  There may or may not be a restriction requirement issued for the national stage US app.  But it is more likely than not that you'll get both a unity of invention finding from the ISA and another restriction when you file the US national stage. So why bother?  That's an expensive way to kick the can down the road without any real substantive effect.

Do you want to abandon the US app and only file foreigns?  Can do, but probably get the unity of invention finding and have to deal with that anyway.  They *love* to do the unity of invention thing and invite you to pay more fees in the international stage to search those "extra" inventions.

What's the harm in filing a response to the restriction requirement?  You can always petition that restriction requirement if you what to challenge it (and waste your client's money, which looks like is in the works anyway).

Oh, and you do not have to file the PCT within two months of the restriction requirement, if you don't want to.  You can pay for the extension to have the US application be "alive" when you file the PCT app up to six months from the restriction requirement.  Waiting and paying the extension fee will waste more client funds.

You're gonna have to deal with the restriction/unity thing some how some way--either in initial US prosecution or PCT evaluation and then national phase filing (any country).  And you'll certainly have some splainin' to do if you ever litigate that puppy after you try to avoid the restriction--these things ain't private.  So why delay?

Just file a response to the restriction/election requirement.

This is only an anonymous generic discussion of a hypothetical situation based on the extremely limited (or non-existent) facts I read in this anonymous post as I sit in my room listening to some tunes after my sixth hour high school class.  Don't think that any of this is real legal advice, 'cause it ain't.
This ain't none real legal advice.

patent types can make stuff up as long as it is "with reasonable clarity, deliberateness, and precision" MPEP 2111.01.IV

Looking for a clue?  Check Karen's patent prosecution blog at

http://allthingspros.blogspot.com/

patent_type_real

Quote from: khazzah on 03-30-15 at 10:56 PM

Information provided in this post is not legal advice and does not create any attorney-client relationship.


Looks like I need to get me one o' those footer things, eh?
This ain't none real legal advice.

patent types can make stuff up as long as it is "with reasonable clarity, deliberateness, and precision" MPEP 2111.01.IV

Looking for a clue?  Check Karen's patent prosecution blog at

http://allthingspros.blogspot.com/

patent_type_real

This ain't none real legal advice.

patent types can make stuff up as long as it is "with reasonable clarity, deliberateness, and precision" MPEP 2111.01.IV

Looking for a clue?  Check Karen's patent prosecution blog at

http://allthingspros.blogspot.com/

njwolf

Robert, thank you for your reply and please excuse my ignorance.

I do not intend to abandon the domestic patent rights on the invention(s).

It is my understanding that before the U.S. examiner will perform a search on my U.S. application, I am required to make an election of the invention and of the species in reply to the Restriction Requirement.  However, if I file a PCT application and select the EPO as the searching authority, does that now shift the burden of performing the search and providing me with a search report from the USPTO to the EPO?

I don't know if this is even reasonable.  But my concern is that I don't want to provide an unnecessary, superfluous document (like a Reply to Restriction Requirement) to the USPTO as part of the application's record that the examiner (or subsequently a court) could use to limit my invention.

Again, thank you for your time and attention to this matter. 

patent_type_real

#7
Quote from: njwolf on 03-30-15 at 11:16 PM

It is my understanding that before the U.S. examiner will perform a search on my U.S. application, I am required to make an election of the invention and of the species in reply to the Restriction Requirement.  However, if I file a PCT application and select the EPO as the searching authority, does that now shift the burden of performing the search and providing me with a search report from the USPTO to the EPO?


That only means the EPO will examine the *international* phase of the application, NOT the national (US) phase.  Even if you go PCT, then back into the US, it will be a US examiner examining the application when it returns to the US phase.  The EPO (international) search/assessment won' really carry that much weight in the US.  That international search/assessment is more to help you decide if you even want to file national phase applications (and might help with patent prosecution highway requests).  There are a couple of countries around the world that will just rubber stamp the international findings, but you aren't going to file there anyway. 

Most countries do an independent search/examination when you enter the national phase in that country--even if that specific country did the international search/assessment!

See http://www.ipwatchdog.com/2011/08/18/an-overview-of-the-pct-international-patent-process/id=18805/
This ain't none real legal advice.

patent types can make stuff up as long as it is "with reasonable clarity, deliberateness, and precision" MPEP 2111.01.IV

Looking for a clue?  Check Karen's patent prosecution blog at

http://allthingspros.blogspot.com/

Robert K S

I think I understand now that njwolf's original question was predicated on the misunderstanding that an EPO designation on a PCT application would somehow supersede the USPTO's search authority on the pending domestic application.  patent_type_real answered the question.
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

Tobmapsatonmi

Quote from: patent_type_real on 03-30-15 at 11:13 PM
There, that's better.

(begin footer)
This ain't none real legal advice.

Looking for a clue?  Check Karen's patent prosecution blog at

http://allthingspros.blogspot.com/

+2.
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

njwolf

All,

Thank you for taking the time to provide me with your thoughts on the matter.



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