Restriction requirements (or election of species) are issued by the USPTO when the Examiner determines that there are multiple and/or distinct inventions claimed. The result is that an Applicant is required to elect one invention for prosecution on the merits. Based on the Applicant’s election, the Examiner proceeds to then search and examine only the elected claims, unless the Applicant can convince the Examiner to withdraw the restriction. The Applicant is, of course, able to file a divisional application to pursue non-elected claims.
As many Applicants have learned, the result of a restriction usually means increased expenses, delay, and possibly numerous other negative effects.
Unfortunately, over the years I have had to handle hundreds and hundreds of cases with restriction requirements. While often restrictions by Examiners are reasonable, it seems that at least some Examiners utilize restrictions to reduce their workload, and/or restrict the Applicant’s ability to make amendments. While I’ll discuss these issues in future posts, here I look at some aggregated statistics of restrictions in a common art unit and technology that seem to indicate that Examiners issuing restrictions are less likely to allow claims early in prosecution.
Specifically, data was compiled for a group of first actions on the merits issued over a 6 month period from a common set of related art units covering a specific technology, totaling 173 cases overall. Cases were divided into two groups, those with (39) and without restriction/election requirements (134). From this sampling, about 22% of cases received a restriction/election requirement. What was more interesting was the significantly divergent allowance rate on or after the first action. Only 33% of the cases with a restriction/election requirement (i.e., 13 cases) received a notice of allowance at or immediately after the first action on the merits; whereas 85% cases without a restriction/election (i.e., 115) received the notice of allowance at or immediately after the first action on the merits.
So, not only does a restriction mean increased costs and delay, but it may also be a signal for a more difficult and adversarial prosecution.
Expect many future posts on restrictions, and strategies to combat them.