Typically at the beginning of a new year we go out with the old and in with the new. But, at the beginning of this year, I am taking a look at some old cases that we should revisit. The cases, decided by the Court of Customs and Patent Appeals (CCPA), the predecessor to the Federal Circuit Court of Appeals, relate to restriction requirements and “Markush claims.”
In the US patent practice, as in most other patent systems, the Examiner can decide that the claims that the applicant presented relate to more than one invention and require the applicant to elect only one group of claims for examination, where the other claims can be presented later in a divisional application. (The Examiner’s action is known as a restriction requirement). Markush claims are claims written in the alternative, such as a composition comprising B wherein B is selected from B2, B3 and B4.
The name Markush claims comes from the name of the patent applicant who first used the claim and appealed a rejection to the Commissioner. The interest in this old case stems from the fact that restrictions are more common in US practice. They also result in the applicant having to pay double fees or more and extend the patent prosecution. Usually, there is not much that can be done. The argument against a restriction requirement is one that patent attorneys do not win too often. It is possible to petition the Commissioner to review the matter, an action that involves another fee, but decisions on such petitions may take longer than the patent prosecution.
However, there is one set of circumstances where the old cases of In re Weber (“Weber”) and In re Haas (In re Haas was decided the same day as In re Weber and follows Weber) can provide a strong argument. When the Examiner restricts within a claim, such as restricting within a Markush claim (that is, asking the applicant to select for examination one of the alternatives in the Markush claim), the Examiner is going against the applicant’s right given by the statute to claim this invention as he/she sees fit. The Weber court stated that the applicant’s right under 35 USC 112, second paragraph, to claim his/her invention as he/she sees fit overcomes any discretion that the Director may have had to restrict within a claim. Such a statement makes restrictions within a claim invalid. Restrictions within claims can happen in two circumstances, when the Examiner restricts within a Markush claim or when the Examiner restricts a dependent claim from the independent claim. There are some alternatives to arguing in the second circumstance, such as when the independent claim is generic and should be examined together with the dependent claim. But, when the Examiner restricts within a Markush claim, sometimes the only alternative left is to go back and cite Weber.
The one concern here is that patent prosecution should be a negotiation between the applicant and the Examiner; whereas, the above approach is more like a confrontation between the applicant and the Examiner. One possibility is to make the US restriction practice closer to that of the European patent office (EPO), an approach that is also followed by other patent offices. “Unity of Invention,” the EPO and PCT term related to restriction requirements (as in PCT Rule13.1), requires the same or corresponding “special technical feature” in the group of claims. At the EPO, in some cases, a prior art reference is used to show lack of “special technical feature.” In other cases, the fact that the claims are directed to solving different technical problems is used to show lack of special technical feature. Moving the US practice closer to the EPO practice could result in fewer restriction requirements and could allow for amendments to the claims that would resolve the unity of invention question.