Is it worth arguing a restriction requirement?

It appears that more than half of patent applications are issued a restriction requirement, in which a Patent Examiner believes your claims contain more than one invention and asks you to elect one invention to be examined. The other invention’s claims are then withdrawn from current examination. When you receive the restriction requirement (by telephone or a written office action), you have the option to “traverse” it. To traverse a restriction requirement is to present rebuttal arguments about why the restriction is improper and to argue that all claims should be examined. This can be a difficult decision that requires careful consideration.

First, if you have a limited budget, it may be better to use those resources for a response to a review on the merits. Successfully overcoming a restriction requirement can be difficult in most technologies. A 2010 review by Patently-O blog reported that only 6% of computer invention restrictions were overcome. The rate was 20% for chemical inventions and 18% for mechanical inventions. However, in the biotech field, more than half of the restriction requirements were overcome, so you may consider trying to argue it with the Examiner if you have a biotech invention.

Sometimes, however, it is worth letting the Examiner have a “win” and not force him/her to do more work to review and respond to your arguments. You can always pursue the restricted claims in a divisional or continuation application.

The effect of a restriction requirement is that the Examiner cannot later raise a Section 103 obviousness rejection on the alternate version. Strategically, this may be beneficial in the long run. In the case of a restriction requirement for claims directed to both a device and a method, a restriction requirement is likely to be sustained. However, there are viable arguments you can assert. The Examiner often asserted has some version of “it would be a burden on the Examiner to search more than one class.” That is not the legal standard in MPEP Section 803. Look at the Examiner’s search report to uncover what classes and subclasses were searched. Often the class or subclass is not even relevant, and the Examiner is raising a smoke and mirror issue that is rebuttable.

You can also point out overlaps between the different groupings of claims and argue that the additional search would not be substantial since it would be in the same subclass and/or they depend from the same independent claim.

In the end, there is little harm in arguing a restriction requirement, but the chance of success can be fairly low. As long as you have realistic expectations, and some good faith meritorious argument, it may be worth the effort to try. However, if there is no merit to your argument, I would probably not traverse it and would re-file to have the claims examined in a continuation or divisional application. If you are budget-conscious, it is probably wise to use your resources to argue on the merits rather than to traverse the restriction requirement. Of course, these are broad generalities, and it is important to consider the specifics of your particular case.