Strings Attached to Restriction Requirements


If you prosecute patent applications long enough, you are bound to receive a restriction requirement. Restriction requirements have become quite common, with the overall restriction rate estimated to be a little more than 50%.
Restriction requirements can create headaches for applicants by limiting the ability to amend claims during prosecution. Applicants should also beware that other strings are attached to restriction requirements. For example, in the case of a species restriction:
“If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.” (MPEP 809.02(a))
That is, for the remainder of prosecution after a species has been elected, any added claims need an extra statement to indicate their species. An extra statement may seem small in the scheme of everything, but forgetting this little indication could give the Examiner an avenue to stall the application.  
Avoid getting tangled up in formalities and review the types of restriction elections that have been made before filing a response. If a species election has been made, remember that the impact extends beyond the amendments.

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