Effetive techniques for replying to USPTO Restriction Requirements.

1. THE INTELLECTUAL PROPERTY MINUTE
JANUARY 2010: RESTRICTION PRACTICE
We have seen the increasing use of restriction and election of species requirement by patent examiners over the
last several years. Here are some suggestions for preventing and overcoming restriction requirements.
Pre-Restriction
When drafting the patent application, prepare method and product claims so they contain as many similar
limitations as possible. This technique will reduce the ability for the examiner to say that the method as claimed
can be used to make a different product or that the product as claimed can be made by a different method. Also,
to anticipate an election of species requirement, draft one claim as broad as possible so that it can be considered
a generic claim and also include a linking claim.
Replying to Restrictions
On receipt of a restriction requirement, take a hard look at the requirement itself and the underlying
reasoning. Some of the mistakes made by Examiners include: (1) applying PCT rules to U.S. applications, (2)
not accounting for all generic or linking claims, (3) forcing a species election where they are not mutually
exclusive, (4) imposing a restriction rather than an election of species, and (5) not providing sufficient reasoning
to support the argument that the method as claimed can be used to make a different product or that the product
as claimed can be made by a different method. Look for generic claims and linking claims that can be used to
limit the impact of the restriction requirement. And remember, there is nothing precluding you from amending
the claims to defeat the restriction requirement, i.e., adding a generic claim or a linking claim, as well as
amending the generic claim to include all of the species. 90% of the time, one of these problems exist and can
be used as a basis for traversing the restricting requirement.
Post-Restriction
Win or lose, there are certain actions that can be taken lessen the impact of restriction practice. For an election
of specie requirement, make sure that the generic claim is an independent claim that contains both the elected
specie and the non-elected specie(s). When the elected specie has been allowed, the Examiner must examine
the non-elected species. But if the claim is already an independent claim, and the Examiner has already
determined it is allowable, the Examiner will likely do nothing more. But if the elected specie is in a dependent
claim, the Examiner will continue the examination process.
Also keep in mind your ability to take advantage of rejoinder practice. With rejoinders, the Applicant can rejoin
claims after the product and method claims have been restricted. Where the Applicant elected and obtained
allowance of a product claim, the process claims may be rejoined provided that the process claims depend from
or include all the limitations of the allowable product claim. The best method for keeping rejoinder a viable
option is to not cancel the method claims; rather, continue to amend the method claims throughout prosecution.