USPTO Examiners sometimes issue restriction and election requirements to focus examination on particular figures and/or embodiments. As a result, some of the Applicants’ disclosed subject matter and (usually) claims are not substantively examined.
Applicants might dislike this result. If an Applicant wants examination of all of their subject matter, it might be necessary to pay for two prosecutions, two Issue Fees, and two sets of maintenance fees. So, Applicants sometimes traverse restriction requirements.
Examiners generally withdraw clearly erroneous restrictions. For example, assume a US Examiner followed typical USPTO restriction practice in a PCT National Stage application. The Applicant might traverse the restriction because the claims satisfy the unity of invention requirement. In this case, the Examiner will likely withdraw the restriction.
In our experience, Examiners infrequently withdraw their restriction requirements in other situations. That is, Examiners typically make their restrictions final.
At this stage, Applicants can file Petitions against the restriction requirements. 37 CFR 1.144. Applicants seldom file these Petitions. However, we have heard these Petitions are typically granted (i.e., the restrictions are withdrawn).
So, Applicants first should recognize that an Examiner finalizing a restriction requirement does not end the review of the restriction. Rather, the finality of the requirement is simply a procedure that begins the review of the restriction by another party.
Second, if Applicants are interested in determining whether a restriction was proper or correct, they should file Petitions against these restrictions more frequently.
If we can assist in review of restrictions and the advisability of filing a Petition, please contact us.