• Law Office of Gerald R Prettyman

Patent Restriction Practice

So, you filed a patent application, and instead of a patent, the Patent Office sent a form that states “Claim(s) A-B are subject to restriction and/or election requirement”, and a letter that contains the following paragraphs almost verbatim:

1. Restriction to one of the following inventions is required under 35 U.S.C. 121:

I. Claims 1-XA, drawn to a ------ classified in YYY

II. Claims XB-XC, drawn to a +++++++ classified in ZZZ.

(You may also get one or more paragraphs about Species Restriction.)

2. Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:

(… Ad nauseam)

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.

(… Ad nauseam)

So (1), you ask – what is this?

First, let’s start (as lawyers are taught) with a little law. Patent law says a patent can claim only one invention. Patent claims for more than one invention must be reduced to one invention. Now the good news is that this is not a rejection of the invention. The patent examiner considers the Claims to state two or more inventions, and is requiring you to select (“elect”) one of the inventions, thereby 'restricting' the application to that invention. You must pick one invention by electing one set of claims for this patent application for the examiner to review (and likely reject, but that’s another article). You still have time until the first application issues as a patent or expires to file the same patent specification, drawings, and abstract, but with the unelected claims.

Yes, you can argue that the examiner is wrong, (see the paragraph that says, “The election of an invention may be made with … traverse …). You will though lose time on your patent (20 years for the filing date) and spend money on an appeal with very little gain. In the greater sense of having a patent in hand, your money and time are better spent making an election to restrict this application, file a divisional application on the restricted claims, AND IF you have really good reason to fight the examiner, file a continuation at and FIGHT that one.

So (2), what do you do?

Fortunately, responding to a restriction requirement is not difficult, BUT, make sure you answer all FOUR parts. But, you say, the paragraph in bold only had two parts. Well, you are correct – but don’t pay attention to anyone who says the Patent Office makes things easy.

The four parts and (1) an election of the invention and species (if required) to be examined, (2) a statement of the elected claims (including species claims if required), (3) a statement that the restriction is made without traverse, and (4) a statement of cancellation of the unelected claims.

Here is an example:

1. Invention Election

a. The Applicant elects invention I for Claims l-XA, drawn to a -----, classified in class YYY. This election is made without traverse.

b. The Applicant withdraws invention II for Claims XB-XC.

If the Restriction includes a Species Requirement make sure you also state something like this:

2. Species Election – This election is made without traverse.

a. The Applicant elects Species A1 to Claim D

b. The Applicant withdraws Species A2 to Claim E.

Please note that Office Actions require complete and exact responses. This article is thus NOT intended, or likely sufficient, to assist you in preparing a complete and exact response. You should contact competent patent authority. If you want further information, please contact Gerald R. Prettyman, Patent Attorney at 925-600-7342.

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