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After a 2.5 year wait the patent office has finally responded to my patent application with an election restriction.

While writing the application with my lawyer, it was obvious from the beginning that there are three different inventions playing on the same physical principals. This is especially true when the prior art is taken into consideration.

I have always wanted to proceed with claims 15 to 20 first. Filing a traverse isn't a good strategic choice, so this should be a very simple reply.

It would be fantastic if someone could just briefly tell me how to respond myself to this election restriction. There doesn't seem to be a return letter form in the email. A simple 'I choose invention 3 with claims 15-20' shouldn't cost 875$!!!!

EXCERPT FROM MY OFFICE ACTION LETTER:

  1. Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter; (c) the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries); Application/Control Number: 13/585,682 Art Unit: 4166 Page 3 (d) the prior art applicable to one invention would not likely be applicable to another invention; (e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and-or 35 U.S.C. 112, first paragraph.

Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention. The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse.

..so how do I reply? Submit some online form? Send them a letter? Or call the patent examiner with the phone # listed?

  • Are you going to dump your attorney and take it over yourself? Then the answer might help you. One, the patent office will only deal with one person on any formal matters. You have presumably given your attorney the power to be that person. Technically, to have them listen to you, first revoke the POA. If try to do this yourself and you don't fire him/her. She/he will, and should, fire you as a client. – George White Nov 24 '14 at 5:12
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    The fee seems extremely high for the situation you describe. – George White Nov 24 '14 at 5:21
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    Thanks for your input. I've just called the uspto's inventor's assistance, and they unequivocally stated that examiners only correspond with 1 party. I really would need to dump my lawyer to do this myself. btw my lawyer has come down with the price to 500. still seems like too much, if they want to keep me as a client then charging half a thousand dollars for 5 minutes of secretarial work is not ok! – Jonas Nov 24 '14 at 17:09
  • Besides administrative aspects, there is talking to the examiner and understanding their point of view, talking to the inventor and explaining the options - some decisions can come back to bite you later, and taking professional responsibility for not screwing it up. The possibility of losing our registration is on the table every time we do or don't do something. As one data point, I would charge about half in a similar restriction situation. However, I am a patent agent in a solo practice. A patent attorney in a top IP law firm could easily, and reasonably, charge double. – George White Nov 25 '14 at 1:32
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A short letter to the Commissioner of patents that says the applicant herby elects invention number X which covers claims Y-Z without traverse. It must identify the application, best if it has application number, filing date and control number. It must be signed to be considered as even existing. You can mail it or FAX it to them or try to figure out the Electronic Filing System.

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The answer by George White appears to be correct. I know I maybe too late to reply, but I too encounter the same type of restriction as Jonas/The inquirer. I am a pro se type of inventor, without a patent attorney. However, you could actually reply within the Electronic Filing System under "Electronic Filing", and then enter your "Application Number" and "Confirmation Number". Once authenticated, it will bring you to a "EFS Registered" page, where you can browse for the simple reply of what George has pointed out above. I have consulted two different patent attorneys and both also made the some points of George. Once you have selected your pdf file, then under the "Document and Description", look for "Response to Election / Restriction Filed". Click on "Upload and Validate" once all files have been selected/added. Then contact the examiner to verify the upload on their end. To avoid any abandonment, better make sure to look under the "Transaction History", to make certain that the server recorded the transaction. Above all, make sure to reply within the time window allocated or else risk abandonment.

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