Understanding US Patent Restrictions

One of the first things that can happen after filing a US patent application is the issuance of a restriction requirement. This requires you to select what claims you want examined and which claims to drop - along with a deadline to lodge your response. The deadline can be extended, but as expected - you have to pay for it. You are also asked to say whether you are nominating with or without traverse.

This isn’t as scary as it looks, but it does require some thought.  

These notices are issued because often a patent specification has separate (independent) claims which cover the product, its manufacture and its use.  In general (but not always), when drafting these claims, they have similar restrictions/claim integers within them.  That way, all claims can be seen to apply to the same invention. 

The US is quite particular with this requirement.  Therefore, where the independent claims have different claim integers they ask you to choose which ones you want examined – effectively dropping the other claims from examination.

Often the best claims to choose are the product claims as they are often the most relevant and there are more of them. It does require dropping the manufacture and use claims. However, this is not fatal.  If the product claims are subsequently allowed by the US examiner, then there is the option to bring back in the other claims often with some amendment to match the allowed product claims.  Another option is to file a derivative US patent application with claims just relating to use or manufacture.

 If you disagree with the examiner’s request for restriction, you can “traverse” it.  Basically, show that you want to appeal it.  To do so, you have to file your reasons for traversing along with the election.  Most times there is no need to file “traverse” and election "without traverse”" is the simplest and most cost-effective way to proceed.