Early Data Points Provided By Restrictions

As discussed in many previous posts, restriction requirements can be frustrating for the applicant. Nevertheless, they are a part of life for US practitioners, and so one might as well make the best of the situation.

There are numerous ways to leverage restrictions for the applicant (see many of the previous posts, such as this one). And sometimes an applicant prefers delay and dividing of the application, and so a restriction is welcomed.

An additional advantage the applicant receives from the restriction is a preview into the examiner assigned to the case, before the substantive examination has begun. While traditionally most applicants do not re-assess the claims upon receiving a restriction, with examiner data becoming prevalent (such as www.bigpatentdata.com), there are numerous strategic maneuvers an applicant can make upon receiving a restriction. Rather than viewing the response as a throw-away waste of time, the applicant might consider some of the following:

  • Assess the independent claim categories, consider re-drafting claims sets. For example, if the examiner tends to reject repeatedly, consider more claims focused on combinations or methods to start with, rather than the broadest possible component claim; or start setting up the independent claims that you want to appeal first. Or, for examiners that reject no matter what, consider adding even broader claims so that you have good differentiation when arguing on appeal.

  • Assess the dependent claim organization. For example, if the examiner tends to reject repeatedly, rather than using claims for “differentiation” or “broadening” purposes, focus more on nesting strategies and sprawling strategies to make the rejections more difficult to justify.

  • Re-draft claim sets to maximize the coverage and scope of the elected claim group and minimize other claim sets, keeping just enough for the eventual petition you might need down the road.

  • Evaluate whether related cases assigned to different examiners might be better vehicles to obtain desired claim scope and consider abandonment early with coordinated branching of divisionals, continuations, and CIPs in related family members.

So, do not let the extra information you obtain via a restriction go to waste. Be proactive and make the most of the situation to utilize the data and start steering your application from this first action.