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« Bilski v. Kappos (2010) | Main | Reaction to Bilski v. Kappos »

June 29, 2010


I am not an expert on this, but I have listened to several of the most recent BCP talks on restriction practice and it seems like there are some major issues that must be addressed first: 1) the PTO's stance that rules must be "technology neutral"; 2) the PTO's unwillingness to provide sufficient specific examples of what is and isn't appropriate (in the MPEP) and 3) making petitions public. The BCP talks (and the MPEP, and everything else put forth as "guidance") ends up being absolutely unhelpful gobbledegook about different terms for categories that should and should not be restricted, but there is almost no specific guidance on whether a particular restriction is appropriate. This needs to be fixed before there can be a meaningful discussion about policy. And the Office hides the ball by continuing to maintain these petitions in secret and then dismissing individual complaints as "anecdotal."

"The third topic for which the Office is seeking comment regards restriction between related product inventions or related process inventions. Currently, there is no M.P.E.P. section that addresses this topic and the Office is considering adding a section that would address restriction between related product inventions and related process inventions. The new section would specify that there must be two-way distinctness and a serious burden for a restriction requirement to be issued."

I did always wonder why we didn't have one of those because claims can dice up one big process into 4 different parts or so and they are all, for all intents and purposes, independent and distinct inventions as they have been claimed even though they are usable together in one big process.

But, they explained to me how the office's position was on this and I figured ok.

However, if they require "mutual exclusivity" then they need to be clear that using "comprising" in either or both of the claims at issue doesn't negate the mutual exclusivity just as in species restrictions it currently does not. This is a difficult issue to all the way comprehend and wrap your mind around, but it is slightly unfair in terms of how much burden they can heap upon the examiner while simultaneously getting all these ind's allowed to blatantly independent and distinct claims. While I do understand why they never made such a rule before, I can see them implementing it.

Would that be a substantive rule?

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