Service

Restriction Requirement Legal Response

This legal service is for us to prepare and file a Legal Response to a Restriction Requirement (RR) Office Action from the USPTO, which is somewhat similar to the "unity of invention" requirement internationally, if you know about that.  An election of "species" is also required.  

In summary of the below details, there are two approaches available: 

1. The Simple Election option, where we respond to accept the restriction and elect which of the Examiner's claim groups to first examine, and the rest will have to be prosecuted later in a divisional application, or 
2. The traversing the restriction option, where we make arguments against the restriction and make the required election indicated in the first option.  In either case, the USPTO requires an election be made, but in option 2, if we traverse the restriction, the Examiner must overcome our counter arguments, so there is a chance of keeping all of the claims in the original application.  

It is usually best to have us traverse the restriction to keep your options open later and try to keep overall prosecution costs down by not having to prosecute two or more patents instead of one.  

If you select option 2, we cannot know, or predict, in advance what the chances are of overcoming this restriction requirement.  In any case, your patent rights are not affected, just whether the application is examined as one application or separately as one or more applications.

If you will have us timely respond, simply select and order/pay for the level of service service you want (i.e., our simple election or traverse) plus any extension fees that will be due.  After you complete the checkout, and administrative intake steps, you will be asked for your claims election input.  To meet deadlines without significant payment delays, you should order/pay electronically online.

However, to avoid rush fees, we ask you to retain us at least 2 weeks prior to the deadline; however, you should handle this matter ASAP (preferably within 1 week of this email) to avoid unexpected problems and rush fees that come with last minute rush jobs. 

Read further below for helpful decision making information and more details explaining what this is.  Basically, the USPTO wants to get paid for examining/searching certain claims, which they consider to cover an independent invention(s).  Otherwise, they figure inventors would just stuff several inventions into one patent filing to avoid paying for separate USPTO filing fees.

Only a very short time (2 month from USPTO mailing) is allowed for a reply in writing.  However, for us to respond we require your authorization and retainer to cover the practitioner's time, our RR fee, and any USPTO late fees that will be due.  For your reference, if the response period deadline is passed (e.g., after 2 months), then the USPTO charges progressively increasing extension fees.

NOTICE: Please keep in mind that initially, by law, you are forced to make an election and all non-elected claims will be withdrawn from this application, and will either have to be reintroduced if a generic claim can be later allowed in the current application, or in a separate "divisional" application while the application with the elected claims is still pending.  If you select our "traversing option" above, and we are successful, then the restriction will be withdrawn and all claims will be Examined in this application.

Our general guidance regarding Restriction Requirements

Here is a basic legal definition of a Restriction Requirement:

If two or more independent and distinct inventions are claimed in a single application, the examiner may require the applicant to elect (designate) a single invention to which the claims will be restricted (limited to). This requirement is known as a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action (final rejection). (See 37 CFR § 1.141 and § 1.142)

Basically, this means that the USPTO says your patent application has more than one invention in one filing, and you need to select one right now for Examination.  After this RR step, the next step could be allowance of some or all of the claims.  We can argue against the restriction, but a provisional election of which claims they should first examine is required.  In any case, this restriction requirement, or any response to it that is filed, has nothing to do with any current or future rejection, or not, of your claims.  It boils down to higher prosecution cost if their restriction requirement is not overcome because they would have you split up your case into multiple, which could double or triple your costs, and corresponding delays in getting those claims allowed.

For a simple election response, this is a relatively simple matter that usually takes us about an hour to prepare it.  There is also a $100 filing fee.  At our 50% reduced flat-fee scheduled we originally offered, that your case is still under, the total fee is reduced to $250 for us to prepare and file the simple election response.  This ‘simple election’ level is written with the goal to properly elect a species with some minimal attempts to preserve your patent rights without making any specific counter arguments, which, is generally not deemed sufficient to permit you to later request reversal of the restriction (via a ‘rejoinder’ request) should we later negotiate a unifying ‘genus’ claim during the examination/prosecution phase of the process.  If you wish us to, instead, argue against the restriction requirement (i.e., "traverse the restriction"), and thereby establish your future right to request rejoinder reversal of the restriction then our total fee is $500 for us to prepare and file detailed counter arguments traversing the restriction requirement, whereby when doing this traversal option, if we win a restriction reversal on this response or later (during the examination process) get the Examiner to accept our rejoinder request then this would generally save you from incurring much greater cost (usually doubles your total fees/costs spent) and lost time if you otherwise have to file a divisional application.

Once claims are elected, they will define the scope of the original application.  If they are allowed, you may want to have us argue against the restriction and/or try to reintroduce claims in a more acceptable form, possibly also continuing the prosecution, or put them in a divisional application as mentioned before.  

As a reminder, it is the specification of the disclosure will block others from later patenting the non-elected claims.  However, that is not the same, of course, as getting a patent with those claims, which you can use in court against copyists.  Claims define the invention that you can protect, not what's in the specification.  The value of a divisional application is to protect the non-elected invention (i.e., claims) and gives separate patents, which can be advantageous in some litigation situation.  

Also, if you read the filed specification and it does not cover all variations that you have in mind, then you should have us file a continuation in-part application (CIP) that adds those details or new embodiments.