In patent prosecution, restriction requirements are often a critical juncture in the process, and responding appropriately requires thoughtful consideration. Importantly, there is no "one-size-fits-all" approach to responding to restriction requirements. Each case is unique, shaped by a variety of factors, including the facts of the case, the client’s strategic goals, the landscape of prior art, and potential enforcement strategies. Explore other posts on the blog as to restriction response strategies, how to traverse, why to traverse, and how to petition.
This post explores the very specific situation of an oral restriction—usually in a phone call with the examiner—as there are several special considerations to keep in mind.
Understanding Provisional Elections
When an examiner requests a response to a restriction requirement orally over the phone, the applicant’s election is provisional. See MPEP 812.01. This means that while the election is made during the conversation, it must later be confirmed in writing in the first office action on the merits (FAOM). This process can streamline interactions between the applicant and examiner, saving time and potentially reducing administrative costs, but it brings certain procedural disadvantages that must be understood in order to properly advise your client.
The STRATEGIC TIMING Disadvantage of Oral Elections
As noted above, oral elections can save prosecution time by avoiding the mailing of an action and the inevitable delay in preparing and filing a response, along with further delay on the examiner side. When an examiner calls on the phone asking for an election, they are likely doing so because they are ready to do the search/examination imminently.
However, one challenge with oral restriction elections is the resulting timing issue if you intend to elect with traverse (and if you have any intention of potentially petitioning the restriction down the road). Specifically, by electing claims orally (even with traverse), the applicant faces significant limitations in terms of subsequent prosecution and being more likely to file a Request for Continued Examination (RCE). As RCE fees are one of the major drivers in prosecution costs, any action that can reduce the potential for RCEs is worthwhile of consideration.
Here’s how the timing problem plays out:
Election With Traverse Over the Phone: Suppose the applicant elects claims with traverse during the phone call. The election is provisional until it is confirmed in the subsequent FAOM.
First Office Action on the Merits: The first action will address the examined (elected) claims substantively and typically maintain the restriction. At this point, the applicant may wish to not only file a response to the substantive rejections, but also petition the restriction requirement. However, the applicant cannot petition yet because the restriction has not yet been made final. As confirmed by 37 CFR 1.144, “[a]fter a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement.”
Final Office Action: The restriction typically does not become final until the next, often final, office action. At this stage, if the claims are rejected and the restriction is maintained, the applicant may now file a petition. However, this leaves the applicant in a bind—because the clock is running on responding to the final rejection, and the Office of Petitions is unlikely to render a timely decision, the applicant may be forced to file an RCE to keep prosecution alive. While decisions on petitions against restrictions may be delayed until after a final rejection (see 37 CFR 1.144, “Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal.”), in practice petitions against restrictions can and will be decided before a final action is mailed if the petition is filed sufficiently before the deadline for responding to the first action.
In this scenario, the applicant is more likely to face a procedural dilemma: the delay in petitioning effectively forces them into a situation where they may need to pay the RCE fee, while waiting to receive a decision on the petition.
Comparing Oral Election to Written Election
Now, contrast this with the situation where the applicant requests a written restriction requirement from the examiner:
Election With Traverse in Writing: The applicant receives a written restriction and responds in writing to the written restriction, electing claims with traverse.
First Office Action on the Merits: Upon receiving the FAOM, the applicant not only gets the examiner’s substantive assessment of the elected claims but also a final restriction requirement (assuming it is maintained).
Opportunity to Petition: At this point, the applicant can immediately petition the final restriction requirement. This enables prosecution to continue in parallel while the petition is under review, giving the applicant a better chance of receiving a decision on the petition before the clock runs out on responding to any final rejection.
Potential Avoidance of RCE: If the petition is successful, the applicant can obtain a new, non-final office action—without needing to file an RCE, since the previously unelected claims will now be examined.
Strategic Considerations
When deciding whether to accept an oral restriction requirement, the applicant should weigh the potential advantages of streamlining the process with the examiner against procedural pitfalls, such as outlined above. Responding to oral restriction requirements requires a clear understanding of both the procedural rules and the broader strategic objectives of your client. While a provisional oral election can expedite early interactions with the examiner, it can also create disadvantages including increasing the potential of RCE fees. if a petition against the restriction is needed. By recognizing these issues, patent practitioners can make more informed decisions and better manage the overall prosecution timeline, ensuring that their clients’ goals are met as efficiently as possible.