The Federal Circuit issued a Rule 36 affirmance recently in the case of In re Morrison. At the heart of the discussion during much of the oral argument was the case of In re Weiler. The Patent Office explained that In re Weiler supports the proposition that (1) if an Applicant’s application receives a restriction requirement for inventions A and B and (2) the Applicant elects A and only pursues a divisional application for B, (3) the Applicant/Patent Owner of patents for A and B may not use the reissue statute to pursue a third and distinct invention, C. While most patent attorneys will say — no, that’s ludicrous — such is In re Weiler. [Listen].
The panel comprised of Judges Moore, O’Malley, and Clevenger questioned the logic behind In re Weiler during the oral argument. For example, Judge Clevenger pointed out why should restriction practice, which exists merely for the convenience of the Patent Office, deprive a patent owner of a statutory right grounded in the reissue statute? [Listen]. Nevertheless, the associate solicitor from the Patent Office doggedly defended In re Weiler. [Listen] and [Listen]. If you were curious, In re Weiler is not cited in the MPEP.
Restrictions have been relatively common in the biotech arts for quite some time. Anectdotal evidence suggests that restrictions are on the rise in the electrical and computer arts in recent years.
You can listen to the entire oral argument of In re Morrison [here].