Patent restrictions and elections

Why is my examiner holding a chainsaw?

USPTO examiners can require patent restrictions.  These narrow the scope of your originally submitted patent claims.  Choose carefully here.

A while back, you filed a patent application.  Now you have received a phone call or letter from your examiner.  You are informed that there are “Election/Restrictions” and that you must choose between various patent claims on various “Species group” lists.  What is this?

Your initial USPTO patent filing fee buys your patent application about 25 to 30 hours of total examination time.  This is not a lot of time, and frequently examiners think that an application will take longer than this. When this happens, the examiner can reduce his workload by asserting that your application contains “multiple inventions”.  Each of these “multiple inventions” is called a “species”.  These “species” are pieces or fragments of your original claim set.  Examiners divide your claim set among these species, and then send you a notice asking you to “elect” a “species” and claims for examination.  The claims that you don’t elect are called “withdrawn”.

Be careful here.  Examiners have orders to initially reject most patent applications.  The examiner is chopping your invention into smaller pieces to make it quicker and easier to reject. This chopping is uneven. Some pieces may be commercially useful, others not.  Some pieces may be easy to reject, others hard. Sometimes there are only a few pieces, but other times the examiner may split your invention into 15 or even 50+ pieces!

USPTO rules allow restrictions and elections to be done either orally or in writing.  Sometimes your examiner may call you on the phone, explain the restriction and election options, and ask what you want.  A bad decision can be costly, and these oral elections are often legally binding.  I recommend not deciding on the spot.  To be sure you understand all the details and have time to think, request the restriction in writing.

There are restriction rules.  The species need to be distinct, and the restriction should not destroy the invention.  If your examiner has violated these rules, you can and should argue back (this is called a “traverse”) in writing.  Unfortunately, you still have to choose, no matter how unreasonable your examiner’s scheme may look.

Even if your examiner rejects your arguments, there will be other chances.  Later in the examination process, after your elected claims are found to be allowable, you can request “rejoinder” and try to get more claims examined.  You can also have the unelected claims examined later (for extra filing fees) as one or more divisional applications.