Election of Claims

Wiscagent

If the examiner says you have to select a claim set, then you must.  However, you can select a claim set with traverse and protect your right to have the restriction reconsidered at a later date.  See MPEP sec. 818.

Isaac

In the case of related but distinct inventions, the examiner always has the discretion *not* to restrict.   The examiner should base the decision to restrict or not on whether there is an undue burden in the search, but I suspect that other more pragmatic concerns might play a role.

Traversing a restriction requirement has the unfortunate consequence of putting remarks into the record which may limit the scope of your claims.  The more well crafted your argument that Group I ain't all that different from Group II, the more of an inference you create that the scope of Group II ain't all that different from Group I.

And of course when you lose the battle over the restriction requirement and your claims do end up in different patents with no terminal disclaimer, your remarks might help support a double patenting rejection in court.

drew_eh...

If you file a divisional based on a restriction requirement, properly claiming benefit of the first application, the following examiner is precluded from delivering a double patenting rejection.

As I understand it, this is a major burden on the examiner due to the possibility of multiple infringement suits to an infringer if there is restriction separating claims which cover a single embodiment which could fall under the scope of both patents.

If I recall correctly, there is a REQUIREMENT that the examiner believes there to be "undue burden" in prosecuting the patent as it stands; therefore, a proper response is to (1) elect a set of claims (2) urge the practitioner that, since there are linking claims (set 3) the single inventive concept should be prosecuted as it stands and (3) respectfully request an explanation regarding the undue burden required to prosecute the application as filed.

Am I mistaken in my thought process?

Isaac

There are some exceptions to the rule, but yes generally speaking the PTO cannot issue a restriction requirement and then later issue a double patenting rejection.   The examiner should avoid creating a situation where a double patenting rejection between the restrictable groups of claims may be supported.   If the examiner errs in making this call, in some situation the PTO will issue a double patenting rejection anyway.   If this happens, hopefully the applicant will have an opportunity to remedy the problem.

But that does not mean that a double patenting rejection could not be properly alleged and affirmed in  court if the PTO screws up.

The examiner should and generally does present the rationale for finding an undue burden in the same office action presenting the restriction requirement.   Usually the examiner simply shows that examining the two inventions requires searching different classes.  

drew_eh...

35USC121

If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement under this section has been made, or an application filed as a result of such requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuence of the patent on the other application. If a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director may dispense with signing and execution by the inventor. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.

Of course, if the claims in the divisional are changed than that is a different story.

And of course, there's nothing that says that the PTO or courts can alledge double patenting, albeit "improper" in a case where the claims haven't changed.

Isaac

Hmm. I remember in the patent academy having 35 USC 121 explained.  It was indicated that in
some situations the PTO would issue a double patenting rejection after making a restriction.  I expect that the PTO would in such a situation withdraw the restriction requirement.

But you are correct that a court would be precluded statutorily from making a double patenting rejection.

JimIvey

Quote

Isaac

While I was an examiner at the PTO, I interviewed at a firm that asked me about a restriction of exactly the type Jim describes. ?I was caught of guard and offered an opinion that such a restriction was silly because the inventions were at best distinct and that no examiner could argue with a straight face that the he would spend even a split second of extra search time if he found a way to rejection one of the sets of claims.

Reflecting after the interview, I realize that the question probably was not hypothetical and that my answer although sincere and correct was inappropriate. ?I should have ducked the question.