One common first action from the US Patent Office is a restriction requirement alleging that the patent application includes multiple inventions and requires the applicant to make an election. This generally results in increased costs and aggravation for the applicant, as well as delays in prosecution. While divisional applications can always be filed for the unelected claims, other strategies may be considered depending on a client’s goals.
At McCoy Russell LLP, we have developed numerous potential strategies. One strategy may include drafting applications to decrease the likelihood of being subject to a restriction in the first place. Another strategy that may be applied when a restriction is issued includes considering traversals against the restriction as well as amendments to obviate the restriction. For example, merely traversing restrictions, when done properly and without creating admissions that can be used against the application with regard to obviousness, can provide strategic benefits.
McCoy Russell, being a data driven firm, tracks its performance in traversing and on average as many as one-third of the restrictions are withdrawn. Further, the data shows that even if not withdrawn, having traversal remarks on the record both expedite prosecution and increase the likelihood of securing an allowance of claims from a statistical point of view. Finally, the traverse allows for the option of filing a petition against the restriction, which can create further leverage for the applicant.
In our experience, petitions can be a strong tool if done properly. And in our data, we have been successful with petitions against restrictions at a rate of approximately 90% over numerous years of tracking. We help clients select the right strategy to meet their objectives, and can present an array of options including ways to strategically fight against restrictions – and win.
