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Don't Be Too Restrictive

Posted by Daniel Krueger | Oct 12, 2021

Conventional wisdom dictates that the applicant should not contest restriction requirements. As is so often the case, conventional wisdom is wrong.

The Patent Office is supposed to issue restriction requirements only when multiple inventions are being claimed and a full examination would impose an undue burden on the examiner. In practice, most examiners seem to have ulterior motives when issuing restriction requirements, e.g., as a justification for shuffling the harder-to-examine patent applications closer to the bottom of the stack. And it doesn't help that most applicants follow the conventional wisdom, filing multiple divisional applications which let the examiners claim additional work credit for cutting-and-pasting the work done on the original application. In short, examiners abuse restriction requirements to make their jobs easier.

Though acceding to restriction requirements brings added filing, issue, and maintenance fee costs, this approach allegedly minimizes any risk of claim scope loss due to prosecution history estoppel. And many applicants view divisional applications as a convenient way to increase the apparent bulk of their patent portfolios. But bulky portfolios eventually deplete research budgets, turning innovative companies into bureaucratic dinosaurs vulnerable to small, nimble start-ups.

With the recognition that broad coverage provided by a single patent is more valuable than corresponding coverage divided across multiple patents, it is easy to see the harm that pretextual restriction requirements can cause, whether through forcing undesired divisionals or through forcing the applicant to risk inadvertent narrowing of the claims while contesting the restriction requirement. These risks, however, can be mitigated. It is particularly worth noting that restriction requirements made in bad faith pay lip service to the supporting elements required by the MPEP but fall far short of adequate demonstrations that these elements exits. (For example, examiners often cite different CPC classifications as evidence of distinct inventions or undue search burden, yet the definitions for the cited classes show them to be unrelated to the application.) In such cases, the restriction requirement can be contested almost without any reference to the actual claim language, minimizing prosecution history estoppel risk.

The client's interests are usually best served by contesting the restriction requirement. In the last decade or so, more applicants are coming around, traversing bad restriction requirements and filing petitions when needed. While I haven't noticed a significant drop in the number of restriction requirements issued, I can attest that there has been a significant drop in the number of restrictions being maintained when the applicant traverses.

Ramey & Schwaller is a full-service intellectual property law firm working with a national client base from our Houston, Texas office. We are dedicated to enhancing client results through efficient practice management, innovative technologies and the use of skilled professionals.

About the Author

Daniel Krueger

Partner; Office: Houston

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