Do You Believe in Magic?

When I speak to foreign practitioners about US patent law, I am sometimes asked to teach them a trick.  It’s a great conversational idea, and the question is one I loved to answer in the past.

These days, I have to explain that I don’t know many tricks.  What happened?

If you look at magic performance, there is only the illusion of magic.  A trick, like the “floating table trick” can easily be explained with unconventional engineering techniques.  After another person understands the engineering technique, the trick stops being effective.

Almost all tricks in patent law are similar.  This week, I saw a “trick” posted on LinkedIn.  (Credit withheld to maintain anonymity, but provided upon request.)

Here is the trick:

That is, the claim set is:

1. A widget comprising A. B, C, and D.

11. A widget comprising A, B, and C.

12. The widget of claim 11, further comprising D.

21. A widget comprising A, B, and D.

22. The widget of Claim 21, further comprising C.

An Examiner might issue a restriction requirement between:

• Group I: Claim 1
• Group II: Claims 11-12
• Group III: Claims 21-22

The author says he then argues that restriction is improper.  For example, electing Group I might cause him to file a first divisional application directed to Group II and a second divisional application directed to Group III.

The MPEP makes clear, “IT STILL REMAINS IMPORTANT . . . THAT NO [RESTRICTION] REQUIREMENT BE MADE WHICH MIGHT RESULT IN THE ISSUANCE OF TWO PATENTS FOR THE SAME INVENTION.”  MPEP 803.01. 

So, in the present application, Claim 1 is directed to a widget comprising A, B, C, and D.  In the first divisional application, dependent Claim 12 is directed to a widget comprising A, B, C, and D.  And in the second divisional application, dependent Claim 22 is also directed to a widget comprising A, B, C, and D.  Therefore, the restriction between Groups I, II, and III “MIGHT RESULT IN THE ISSUANCE OF TWO PATENTS FOR THE SAME INVENTION.”

Consequently, the restriction is improper, right?

The author claims, “I’ve used this technique dozens of times to prevent examiners from restricting my independent claims. It works.”

It shouldn’t work: the author has merely gotten lucky.  Why?

First, we cannot draw a conclusion if an Examiner fails to issue a restriction.  The reason is that the Examiner might have simply overlooked the possibility of a restriction.  I have certainly written claim sets intended to draw a restriction and failed: mechanical and electrical Examiners simply do not follow restriction practice particularly well.

But surely his arguments have been successful, right?

It is possible, but the reason might be the Examiner did not draft the restriction correctly.  If the Examiner had paid more attention, they could simply issue a provisional statutory double patenting rejection between Claims 1, 12, and 22 along with the restriction.

In such a scenario, the Applicant still must provisionally elect a group and address the provisional statutory double patenting rejection.  That is, Applicant must amend or cancel at least two of Claims 1, 12, and 22 at the time of reply to the restriction requirement.

Because Claims 1, 12, and 22 are no longer redundant, the Examiner is free to make the restriction requirement final after the Applicant’s reply.  That is, the “trick” would no longer work.

But what about the impressive CAPITAL LETTERS quote from the MPEP?  Well, that language is taken out of context.  That MPEP section is entitled “Review by Examiner with at Least Partial Signatory Authority.”  That is, the words relate to a reason why Primary Examiners sign certain Office Actions rather than junior Examiners.  Those words have nothing to do with the merits of a restriction.

I brought this matter to the attention of the author.  He retorted, “Double patenting exists only across two separate patents.”  By making that assertion, he is willfully playing ignorant.  Examiners typically examine applications rather than issued patents.  Therefore, it is understood that Examiners typically issue provisional rejections, rather than nonprovisional rejections.  In other words, his comment says nothing about a provisional double patenting rejection, which is exactly the type of rejection that would be included in a restriction.

So, in my view, this “trick” is based on anticipating that an Examiner will do a poor job in issuing a restriction requirement.  Although that might happen, I think an Applicant might be pretty angry at the attorney when an Examiner is unimpressed by the attorney’s unconventional engineering technique (and his misunderstanding of the MPEP).