I love Chess. You get to command 16 pieces, each type of piece having different rules of movement and attack, to take down the enemy in accordance with a fairly complex set of rules for conquest. And it’s fun because your opponent has the exact same weapons and defenses as you do (besides the player that gets to go first). So in terms of strategizing, you end up thinking multiple moves ahead. It’s an epic game.
In the world of patent prosecution, there are also rules of attack and defense to take down the enemy that prevents your patent application from being issued a Notice of Allowance. This world requires knowing the rules and thinking moves ahead so that your application doesn’t get checkmated.
One classic move that the Examiner will pull is issuing a “restriction.” The general basis for restriction is that the application as filed includes more than one independent and distinct invention, which are generally not allowed. See 35 U.S.C. 121; 37 CFR 1.141. For instance, if you have claims 1-10 related to a machine and then claims 11-20 are related to a method of manufacturing the machine, the Examiner may issue a restriction requirement saying that the application contains two independent and distinct inventions and for the Applicant to choose either claims 1-10 or claims 11-20. The Applicant will then have to file a divisional application on the claims that are now withdrawn.
Restrictions come in two varieties: Restriction Requirement and Election of Species Requirement. See MPEP 803.03. Both involve electing a particular group so that the only one independent and distinct invention is contained in the application and both also require a traverse if a right of petition is to be preserved. But what is the difference between the Restriction Requirement and the Election of Species Requirement? The answer to this question will help in the terms sometimes being incorrectly used interchangeably. This confusion may stem from both requirements falling under the “Restriction” umbrella. See 37 CFR 1.129(b). It is helpful to know the difference not only for strategy in whether to traverse, but also in communicating with those in other jurisdictions outside the US that do not have similar Restriction practice.
A restriction requirement is proper when two or more independent and distinct inventions are recited in the claims. 37 CFR 1.141. If the claims only recite generic claims (claims directed to one independent invention) then you’re not looking at a restriction requirement. On the other hand, an election of species requirement is proper when there are patentably distinct species that are embraced by a generic claim. The reasoning here is to avoid situations where the Applicant simply adds new claims that introduce independent and distinct inventions to the claims after the Examiner has not issued a restriction on the claims. So the Examiner instead issues an election of species, for instance saying that Figs. 1-5 are distinct from Figs. 6-9 and that the Applicant must elect one group.
So in sum, in a Restriction Requirement, you have to elect claims for further examination. In contrast, in an Election of Species Requirement, you elect an invention and then indicate which claims you believe read on that species.
One strategy tip to keep in mind. There is a temptation to view the Examiner as the opponent and to try and do the opposite of what he says. For instance, if he comes in and takes your pawn, take it back. Therein lies the danger. Sometimes taking the bait is actually facilitating your opponent thinking a couple moves ahead. Applied to this topic, in a Restriction Requirement, it makes a lot of sense to traverse a restriction requirement because 1) restrictions are overused and they get annoying after a while; 2) the Examiner’s probably not correct in asserting that the claims recite more than one independent and distinct invention; and 3) money is being wasted in electing claims and filing divisional applications when a search probably could be done without serious burden by the Examiner anyway. See MPEP 806.05(d).
On the other hand, traversing an Election of Species might box yourself in later down the road. In an election of species, any traversal is saying that the species are the same and therefore if the Examiner later finds art on one species, it automatically can apply to the other species that you argued was the same. Something to keep in mind when you think you are scoring a small victory, you may be walking into a trap.