Restriction Practice During Examination

Posted Friday, August 15, 2008 by Jim Ruttler.

Examiners have been more routinely issuing restriction requirements in an apparent effort to ease their workload and increase the fees generated by the US Patent Office. During examination, an examiner can issue a restriction requiring an applicant to select a single invention or embodiment for further prosecution on the merits. In response, the applicant must always comply with the restriction requirement and elect a single invention or embodiment for further examination. However, the applicant can do so with or without traverse. Traverse simply means taking issue with the examiner’s basis for issuing the restriction requirement. Thus, making an election without traverse means complying with the examiner’s restriction requirement without further argument and proceeding with examination on those elected claims. And, making an election with traverse means complying with the examiner’s restriction requirement but also arguing that the requirement was improper.

The decision to make the election with or without traverse is an important one because an election without traverse is binding and non-petitionable. It results in proceeding with examination on the merits of only the elected invention or embodiments. The non-elected invention or embodiments are not examined unless a further divisional non-provisional application is filed. This results in a further delay of examination and additional expenses pertaining to examination and maintenance fees of the separate application. An election with traverse asks that the examiner reconsider his or her position regarding the restriction requirement. If the examiner continues with the restriction requirement a petition can be filed asking for review of the examiner’s position. Note, however, that a traverse can be a waste of resources and a delay of the inevitable and, with regards to embodiment restrictions, can result in detrimental and irreversible admissions against interest.

In short, responses to restriction requirements should be considered carefully as they have a direct impact on examined subject matter, finances, and issuance dates.

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