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“Action” of “Withholding” Claims in Patent Prosecution

Posted by James Juo | Sep 14, 2022 | 0 Comments

A pre-GATT patent application, i.e., filed prior to June 8, 1995, would be entitled to a patent term of seventeen years from the date of issuance. Otherwise, the issuing patent would be entitled to a patent term of twenty years from the earliest claimed filing date (and 1995 is more than twenty years ago). That pre-GATT status, however, would be lost for any subsequent divisional application.

Hyatt Application on the GATT Bubble

Gilbert P. Hyatt filed U.S. Patent Application No. 08/435,938 (“the `938 application”) on May 5, 1995 (during a time known as the “GATT Bubble”). The USPTO completed an initial examination in 2003; but from 2003 to 2012, the USPTO stayed the examination of many of Hyatt's applications pending litigation.

In October 2013, in response to an office action from the USPTO, Hyatt selected eight claims out of about two-hundred for examination in pending `938 application. Those eight claims were rejected in February 2015, and, in August 2015, Hyatt responded with significant amendments to those eight claims. For one of the selected claims, only the preambular terms “A” and “comprising” from the original claim remained after the amendment.

Determining that these claim amendments shifted seven of the eight selected claims to different inventions, the USPTO issued a restriction requirement between the originally selected claims and the amended claims. As a result, Hyatt could prosecute his amended claims only in a new, separate divisional application which would not have pre-GATT status. If a divisional application were filed to prosecute those restricted claims, then any resulting patent would have no patent term because the earliest claimed filing date for the divisional application would be more than twenty years ago.

District Court Appeal

To avoid that fate, Hyatt filed a complaint in the Eastern District of Virginia alleging that the restriction requirement was improper.

In particular, Hyatt relied on USPTO rule 37 C.F.R. § 1.129 which prohibits restriction for applications having a priority claim from at least three years before June 8, 1995, a criterion which Hyatt's `938 application case met. But the rule also includes an exception if the failure to issue a restriction requirement prior to April 8, 1995 was “due to actions by the applicant.”

The district court held that, in failing to claim the separate inventions until many years after 1995, the “[w]ithholding” of these claims fell within Rule 129(b)(1)(ii)'s applicant-action exception.

Federal Circuit Appeal

On appeal to the Federal Circuit, Hyatt argued that “actions,” as used in the applicant-action exception, does not encompass “inactions”—so his first action within the meaning of Rule 129 was in August 2015 when he filed the claim amendments that prompted the restriction requirement. Hyatt v. U.S. Pat. & Trademark Off., No. 21-2324, __ F.4th __ (Fed. Cir. Sept. 8, 2022).

          As a threshold matter, we first note that Mr. Hyatt's failure to disclose his species-altering amendments can also be accurately characterized as an act of withholding. . . . And whether Mr. Hyatt's actions are characterized as a failure to disclose or an act of withholding an entirely new species, it was that conduct of Mr. Hyatt that prevented the Examiner from entering a restriction requirement.


[T]he Examiner was unable to issue a restriction requirement for the '938 application within the relevant time frame “due to” Mr. Hyatt's “actions.”

Because Hyatt delayed presenting claims that could be subject to restriction until many years after the `938 application was filed, the Court concluded that the applicant-action exception can and did apply in this case, and affirmed that the restriction requirement was proper.

The patent attorneys at Thomas P. Howard, LLC prosecute and litigate patents nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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