You have agonized over your patent application. Multiple revisions have been prepared. The drawings cover various alternatives and embodiments. The claims provide a range of desired coverage. The prior art has been searched and disclosed. You are ready for that first Office action so you can convince the examiner of the novelty and inventiveness of your application.
Then you get a restriction. The examiner is forcing you to select just one of your figures, and you can’t even understand the logic of why or how this is being done. Further, the examiner is forcing you to elect between your independent claim groups. None of this is has anything to do with the substance of your invention. But, it will have broad impacts on the scope of protection you can obtain in this application, as well as your ability to make amendments during prosecution.
So, how do you respond to a restriction? It depends on the strategy. Below we list some things to consider. While you may be tempted to not spend much time or effort on this decision because it is non-substantive, you will be living with consequences for years to come. It can be worth putting real effort into this first response to the Office as it sets the stage for prosecution to come.
Traverse or not, that is the question. But really it is not that much of a question. There is little downside to traverse if your practitioner knows their stuff. Usually one can traverse with little effort. And remember, you do not have to necessary put all of your arguments as to why the restriction is proper at this stage, rather you just need to point out an error in the restriction. This is often easy to fine as examiners generally do not actually follow restriction practice as set forth in the MPEP. Rather they take shortcuts since the conventional wisdom is not to traverse. But, of course you must be careful in the traverse to never admit obviousness, etc. There are other, much less controversial ways to traverse. Read some of our other posts on the blog on how to do this.
Re-evaluate the claim sets. If the examiner is restricting you to one category, consider re-drafting claims so that you maximize examined claims in the selected category. While this might render a traverse moot, perhaps you can get most of the desired range of scope staying within a single category.
Re-evaluate the claims in light of business or technology changes. A restriction is the first action (usually), but it still might be a year or more after filing. The technology may have advanced, etc. This is a chance to modify claims and alight them with business or technology changes.
Check the examiner statistics (e.g., www.bigpatentdata.com). You may want to adapt your claim strategy knowing your examiner’s proclivities. You may want to adjust your decision on traversing and/or filing divisionals as well. This is a chance to re-think your approach with a lot more information - don’t waste it.
Consider amendments that frustrate the restriction. Perhaps you realize you will need to fight the restriction with a petition later on in prosecution. Often amendments can be made that do not cause too much downside in terms of claim scope, but that can increase chances of winning the petition against the restriction. Read some of our previous posts about how to do this.
Evaluate which claims/figures to elect based on the facts of your case. Perhaps the client needs quick coverage of a particular embodiment. Perhaps there is a knock-off product that is close to a particular embodiment. Perhaps you are worried about difficult examination. All of these drive the election of claims that will be examined. Perhaps a particular election will maximize the number of claims examined. But also, will selection of the broad embodiment limit your ability to amend if the examiner finds close art? (hint - yes!). One needs to think about many factors in electing the claims for prosecution at this stage as one cannot undo this selection later in prosecution (without having to file a new divisional application). For example, as we explained in a previous post:
One approach is to try and maximize the the number of claims examined. In the case of a figure-based restriction, while counter-intuitive, it can often be strategically advantageous to select the most narrow and specific embodiment. This does not mean that only narrow claims will be examined. Quite the opposite - it is often possible to select a narrow embodiment and successfully argue that the broader, more generic claims also read on the selected embodiment. This approach has the added advantage that if a specific feature from the narrow embodiment turns out to be necessary for patentability, the applicant will be procedurally allowed to amend the elected claims to include it. Not so if the Applicant elects a more generic figure/embodiment. In that case, if a narrowing feature from a non-elected figure is needed for an amendment, it will be excluded and not examined. The Applicant will be required to file (and pay for) a divisional application if claims with the narrowing feature in a non-elected figure is desired.
Many years of future prosecution and thousands of dollars are often determined by what looks like a simple, relatively inconsequential restriction requirement issued in the first action of a case. Make sure to make strategic choices in responding to restrictions or you may be paying for it, literally, down the road for many years to come.