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Restriction Requirement compared to Election of Species

An Examiner may issue a restriction requirement and/or require an election of species. The Examiner typically does so at the beginning of prosecution before evaluating patentability.  One reason is that both restriction and election of species reduce the initial search performed by the Examiner. It is important to understand the difference between a restriction and an election of species.

If the Examiner believes that more than one patently distinct invention is claimed, the Examiner can issue a restriction requirement. To respond to a restriction requirement, one invention must be elected. The election of the invention may be done with traverse (arguing that the restriction is improper). The other claims will be withdrawn from consideration.

The Examiner may also require an election of species when multiple variations of an invention are claimed. The claims may include one or more generic claims. The generic claim encompasses all variations. For example, a generic claim may be recite an incandescent lightbulb with a filament, while the species may include incandescent lightbulbs with a bamboo filament, a carbon filament, and a tungsten filament. To respond, the Applicant must elect one species.  The Examiner will begin by searching for the elected species. If the elected species is allowable, the generic claims will be prosecuted. If a generic claim is allowed, the Applicant is entitled to consideration of claims to additional species that are dependent on the generic claim.

The Applicant may pursue withdrawn claims in a divisional application. Other inventions disclosed in the application may also be pursued in a continuing application as long as the original application is pending.

Restriction practice and continuation practice involve complex issues. Your patent attorney can help you understand and address these issues to help you maximize patent coverage. Cotman IP has experienced patent attorneys located in the Los Angeles area.

Written by
Dan Cotman
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