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Case D
Failing to Oppose a Requirement for an Election of Species
A restriction or a requirement for an election of species in U.S. practice is analogous to a holding of a lack of unity in many other forums. This happens when an examiner believes that an application claims more than one invention, so the examiner requires the applicant to elect a single invention/set of claims for examination. The other claims may be examined in other applications filed later.
To avoid any misunderstanding, I state explicitly that many restrictions requirements are valid. The examiner explains how the claims are restrictable into groups according to the provisions of the Manual of Patent Examining Procedure (MPEP). In some cases, perhaps, the examiner may not explain so well, but the claims are grouped properly anyway. In these cases, the applicants should simply elect a claim group for further prosecution and then decide when and if to file any additional applications to receive examination of the other claims. In this case study, though, I focus on the subset of restriction requirements that are not proper.
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In this case study, an applicant filed a patent application for an elaborate automobile accessory that measures tire pressure while the automobile is moving, so the driver can see a tire pressure reading without needing to stop the vehicle. The accessory had an angular velocity detector, a torque detector, and a temperature sensor, among other components. The invention required the angular velocity detector for proper operation, but the invention could also function (although not as well) if either the torque detector or the temperature sensor were omitted.
Accordingly, the applicant filed two claims, both reciting the angular velocity detector as an element of the accessory. The first claim also recited the torque detector, and the second also recited the temperature sensor.
The examiner reasoned that a tire pressure sensor having a torque detector was a different ”species” from a tire pressure sensor having a temperature sensor, so he required that the applicant elect one of the two claims for further examination. The applicant traversed the rejection, arguing that the torque detector and the temperature sensor were not mutually-exclusive features. That is, a tire pressure sensor could have both features, and he indicated such an embodiment already disclosed in his application. The applicant further cited a provision in the Manual of Patent Examining Procedure stating that elements in different claims that are not mutually-exclusive cannot form the basis of an election of species requirement.
Accordingly, the examiner withdrew the requirement for an election of species. Both claims were eventually allowed, and the patent issued. Had the applicant failed to traverse the requirement, though, he would have had to pay additional costs for filing and prosecuting a second patent application in order to obtain the same claim coverage. He would also have had to pay a second issue fee and a second set of maintenance fees.
Accordingly, the applicant filed two claims, both reciting the angular velocity detector as an element of the accessory. The first claim also recited the torque detector, and the second also recited the temperature sensor.
The examiner reasoned that a tire pressure sensor having a torque detector was a different ”species” from a tire pressure sensor having a temperature sensor, so he required that the applicant elect one of the two claims for further examination. The applicant traversed the rejection, arguing that the torque detector and the temperature sensor were not mutually-exclusive features. That is, a tire pressure sensor could have both features, and he indicated such an embodiment already disclosed in his application. The applicant further cited a provision in the Manual of Patent Examining Procedure stating that elements in different claims that are not mutually-exclusive cannot form the basis of an election of species requirement.
Accordingly, the examiner withdrew the requirement for an election of species. Both claims were eventually allowed, and the patent issued. Had the applicant failed to traverse the requirement, though, he would have had to pay additional costs for filing and prosecuting a second patent application in order to obtain the same claim coverage. He would also have had to pay a second issue fee and a second set of maintenance fees.
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There is an unfortunate misconception by quite a few people that any opposition at all that an applicant provides to a restriction requirement will harm the strength of the patent. This is wrong. There are good ways to traverse a restriction requirement, and there are not-so-good ways. For example, in the case study above, if the applicant had argued instead that a tire pressure sensor having a torque detector was an obvious variation of a tire pressure sensor having a temperature sensor, he probably could have succeeded in having the requirement for an election of species withdrawn. However, if the examiner later found a prior disclosure of a tire pressure sensor having a torque detector (and an angular velocity sensor), he of course would reject the first claim, but he could also use applicant’s earlier arguments as admissions to reject the second claim as being obvious. A competitor could present the same argument in a district court, if she were trying to persuade the court to invalidate claims.
The argument of the last paragraph is an example of a wrong way to traverse a restriction requirement. What the applicant argued in the case study above, though, does not bring the same risks.
Many people do not understand restriction practice well, and as a result their costs for patent protection increase unnecessarily. If you would like to discuss restriction requirements that you have received, you may contact me, and we can discuss whether the restriction requirement is proper, and, if it is not, how to traverse it. We can discuss also whether, for your business goals, it could be favorable not to traverse the restriction regardless of whether it is proper.
The argument of the last paragraph is an example of a wrong way to traverse a restriction requirement. What the applicant argued in the case study above, though, does not bring the same risks.
Many people do not understand restriction practice well, and as a result their costs for patent protection increase unnecessarily. If you would like to discuss restriction requirements that you have received, you may contact me, and we can discuss whether the restriction requirement is proper, and, if it is not, how to traverse it. We can discuss also whether, for your business goals, it could be favorable not to traverse the restriction regardless of whether it is proper.