Strategies for Making an Election Responsive to a Restriction

When an Examiner places a restriction on an application, the Applicant must make an election. However, there are many factors governing that choice. The choice also becomes difficult to evaluate when the Examiner requires and election of species, often based on the figures.

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.

As this example illustrates, 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.