Fire quickly or keep your powder dry?

Sometimes, timing is everything. In patent prosecution, often much of the timing is dictated by the Office and corresponding rules and regulations. However, there are some areas where the applicant gets to control the timing of certain actions. One example is whether to challenge a restriction by petition. The rules only require that it be done before appeal (which means before the Notice of Appeal is filed). Of course the applicant must preserve the ability to petition by timely traversing the restriction in the first place. But assuming that is done, the applicant can elect to petition right away, or hold back. Each has strategic implications and pluses/minuses.

One applicant that has experience challenging restrictions is NXP. One of their cases (14/722,800) illustrates the “early” petition strategy - literally the same day they filed a response traversing the restriction. Of course, this is technically too early, as the right to petition does not vest until the restriction has been repeated or made final. See 37 CFR 1.144. As a result, the Petition decision was easy for the Office - dismissed as untimely.

Nevertheless, this early strategy makes clear to the examiner that the applicant can and will traverse restrictions, and will also force the issue with a petition. As discussed in previous posts, one of the major benefits of a successful petition against a restriction is a new, non-final, Office action. Thus, the examiner faces having to generate a new action (and perhaps do additional searching and analysis) likely without sufficient points commensurate with the extra work. Therfore, this early approach may help deter maintenance of improper restrictions in the first place, at least in some cases. That is what happened here - the examiner’s next action withdrew the restriction and addressed all claims.

So, if traversing restrictions is part of your strategic approach, also make sure to consider the timing of petitions as part of that strategy.