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.

Popular posts from this blog

Surprising Uses for Oobleck

Image
Oobleck is a common name for a non-Newtonian fluid comprising cornstarch and water. Named after a substance humorously described in Dr. Seuss’s classic children’s story, Bartholomew and the Ooblek, the cornstarch and water concoction is frequently used in children’s science classes as a fun way to learn about fluid mechanics. You may have fond memories, yourself, of playing with oobleck as a youth. Oobleck behaves as a fluid when touched gently, but becomes hard as a solid when hit with great velocity. For example, a person could run across a swimming pool of oobleck without getting their feet wet. However, if a person stood still on the oobleck, then they would slowly sink. Because oobleck is a children’s plaything and because of its simple recipe (cornstarch and water), one may be surprised to learn that inventors have attempted to patent serious industrial uses for the material. As an example, one current patent application, US 2015/0016885 (now abandoned), is for a system of fi
Read more

Dispensing with the Formalities: Ex Parte Quayle Actions

Image
Checking my email after work one day, I was greeted with some unfortunate news: the application I was prosecuting had received yet another Office action.   Frustrated, I couldn’t resist skimming the substance of the rejection.   After all, like any patent practitioner, I thought my arguments were pretty irrefutable.   The news only got worse… or so it appeared.   The Office action was something called an “ Ex Parte Quayle action.”   Having never received one of these actions, I started mentally preparing myself to pull out the MPEP and research some arcane rejection. To my surprise, I didn’t find myself knee-deep in case law the following day.   Ex Parte Quayle actions, while somewhat inconvenient, are far from insurmountable.   In short, an Ex Parte Quayle action or “Quayle action” is issued when an application has objections remaining as to formal matters, but is otherwise allowable.   Accordingly, the mailing of these actions closes prosecution on the merits of the appl
Read more

Adaptive Headlight IP

Image
The recent Infrastructure bill signed into law by President Biden affects many things, but one aspect that affects the automotive world is adaptive headlights.  As noted by Jalopnik puts it somewhat crudely, this means “our headlights will suck way less” (link to https://jalopnik.com/finally-our-headlights-will-suck-way-less-1848067412 ). But with this sudden change, adaptive headlights in the US may be in for a particular messy IP situation since many companies may have considered it was not necessary to protect their adaptive headlight innovations in the US because of the 50-year old rule preventing such technology. Recent patents in the field from applicants such as Lumileds and Arex indicate that smaller players and startups may be able to break into the market which is expected to explode in the next few years once the final rules are implemented.  For those in the industry that have typically avoided US patent filings in the adaptive headlamp area, they may want to rethink th
Read more