Sometimes the USPTO gets it right

What happens so often is that the USPTO gets things wrong about the PCT process.  For example the USPTO seems so often to go out of its way to avoid giving any credit, let alone full faith and credit, to the work done by the International Searching Authority when it searches and examines a patent application.  So here is a refreshing example of the USPTO getting it right.

By way of background this case started when a client of our firm filed a PCT application in a foreign patent office.  The applicant picked the that foreign patent office as its searching authority.  The ISA established an international search report and written opinion (ISR/WO) putting forth the view that all claims were novel and possessed an inventive step.

With this favorable WO in hand, the client asked us to enter the US national phase and to get the case on the Patent Prosecution Highway.  Which we did.  The case got put on the Highway on February 10, 2015.  Fifteen days later the Examiner mailed a restriction requirement (RR).  The Examiner made a mistake, using the “distinct invention” standard for restriction when in fact the Examiner should have used the “unity of invention” standard.  So we did what we always do — we asked the Examiner to withdraw the RR.  We never heard back from the Examiner (which is how it usually goes), so we then filed a petition asking that the Examiner be directed to withdraw the RR.  This was on March 25, 2015.  Our petition went to a Quality Assurance Specialist in the Technology Center. Here is what the QAS wrote:

This is a decision on the petition filed March 25, 2015 requesting that the restriction requirement of February 25, 2015 be withdrawn.

On February 25, 2015, the examiner issued an Office Action containing a restriction requirement pursuant to 35 U.S.C. 121.  In support of this restriction requirement, the examiner asserted that the various embodiments discussed in the office action were independent or distinct and that there would be a serious search and examination burden if restriction were not required.  In response, on March 25, 2015, the Applicant filed the present petition requesting the withdrawal of the restriction requirement.  In this petition, Applicant drew attention to the fact that the subject application is a 35 U.S.C. 371 national stage application, thus rendering inapplicable the 35 U.S.C. 121 restriction rules upon which the examiner had relied.  MPEP 1893.03(d).  Applicant further urged that there would not be a search or examination burden since the record shows that all claims had already been searched and examined by the International Searching Authority.

A review of the record indicates that the subject application is indeed a 35 U.S.C. 371 national stage application and that the record contains the ISA Written Opinion and Search Report, substantiating Applicant’s assertion that there is no search burden. Therefore, the restriction requirement of February 25, 2015 is withdrawn and the subject application will be returned to the examiner for action in due course.

This is music to my ears.  Here is a USPTO person actually coming out and saying that the ISR/WO “substantiates” our “assertion that there is no search burden.”

What might the Examiner do next?  One possibility is the Examiner might figure out the right way to do an RR in a national-phase case (using the “unity of invention” standard), and then might prepare and mail another RR.  But maybe the Examiner will actually examine all sixteen pending claims.  We’ll see.

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