Rampant Restrictions and Improper Divisionals: The Gap between "Independent or Distinct" at the USPTO and "Patentably Distinct" in the Federal Circuit and Why We Should Encourage Examiners to Keep Similar Claim Sets Together
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Rampant Restrictions and Improper Divisionals:
The gap between independent or distinct at the
USPTO and patentably distinct in the Federal
Circuit and why we should encourage examiners
to keep similar claim sets together
Heather Hildreth*
The Federal Circuit is sensitive to how, even after the Uruguay Round Agreements
Act (URRA),' the perfect storm of an improper restriction requirement,2 the §121
Safe Harbor,3 and a patent term adjustment4 or extensions award may allow a
patentee an unjust term extension or to otherwise circumvent the policies behind
obviousness-type double patenting (ODP)' in a way that courts cannot later fix.7 The
URAA and Federal Circuit case law embracing a strict reading of the Safe Harbor
help to restrain this risk. Restriction practice, however, remains largely unchanged
at the United States Patent and Trademark Office (USPTO), where ODP concerns
are less salient than the administrative policies behind restriction requirements. As
*I owe a special thanks to Professor Thomas at Georgetown University Law Center (GULC) and my friend and
classmate, Brooke Purinton, for offering thoughtful feedback and comments on this Article. All opinions are my own.
I wrote this paper in Spring 2021 as a student at GULC and briefly revised it in Spring 2022 to account for recent
developments. I currently work as a patent agent/student associate while I prepare to take the DC bar exam.
' Uruguay Round Agreements Act, Pub. L. No. 103-465, § 532, 108 Stat. 4809 (1994) [hereinafter URAA]. The
URAA changed the patent term to expire 20 years from the effective filing date. See 35 U.S.C. $ 154(a)(2).
2See generally, U.S. PATENT & TRADEMARK OFFICE (USPTO), MANUAL OF PATENT EXAMINING PROCEDURE, Ch. 800, 9th
Ed., Rev. 10.2019 (June 2020) [hereinafter MPEP]. A restriction requirement is where the examiner divides groups
of claims and requires the applicant to elect one for examination. Id.; 35 U.S.C. $ 121 (2012). Restriction requirements
are explained in detail in Part I.
3 35 U.S.C. $ 121 (2012) (third sentence). The Safe Harbor shields divisional applications from a double patenting
rejection where the parent is used as a reference. Id. The Safe Harbor is explained in detail in Part I.
435 U.S.C. 154(b). Patent term adjustment (PTA) is based on examination delays. Id. PTA is explained in detail in
Part II.
5 35 U.S.C. 156. Patent term extension (PTE) is based on administrative approval delays for the product. Id. PTE is
explained in detail in Part II.
6See In re Thorington, 418 E2d 528, 534 (CCPA 1969); MPEP $ 804.01.
7 Fallaux discusses, in dicta, the post-URAA possibility of an unjust time-wise extension arising from both patent
term adjustment (PTA) and patent term extension (PTE). In re Fallaux, 564 E3d 1313, 1319 (Fed. Cir. 2009). AbbVie
discusses the concern, in dicta, primarily in the context of PTA. AbbVie Inc. v. Mathilda & Terence Kennedy Inst. of
Rheumatology Tr., 764 E3d 1366, 1373 (Fed. Cir. 2014)
s See Geneva Pharm., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1382 (Fed. Cir. 2003) (discussing strict test);
Bristol-Myers Squibb Co. v. Pharmachemie B.V., 361 E3d 1343, 1350 (Fed. Cir. 2004); Pfizer, Inc. v. Teva Pharm. USA,
Inc., 518 E3d 1353, 1360 (Fed. Cir. 2008); G.D. Searle LLC v. Lupin Pharm., Inc. 790 E3d 1349 (Fed. Cir. 2015); In re
Janssen Biotech, Inc., 880 E3d 1315, 1322-23 (Fed. Cir. 2018); Ex Parte Sauerberg, Appeal 2015-007064 (PTAB Jan.
10, 2017). The discussion of the Safe Harbor in Part I touches on the holdings of these cases.
102 J. Pat & Trademark Off. Soc'y 364 (2022)](ViewImageLocal?handle=hein.journals/jpatos102&div=24&collection=&method=preview&ext=.png&size=3)
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