When an examiner believes that more than one distinctly different invention is being claimed, they may issue a restriction requirement. This means that the applicant must choose a certain group of applications to be processed in the pending application. A restriction requirement does not necessarily mean that there are any problems with the request or that requests are being rejected. It simply means that the examiner doesn't want to review all the claims that were originally filed.
The examiner will set out the groups of claims as they see them and the applicant must respond by choosing a group of claims. If the Office's action is an electoral requirement, the examiner believes that the statements in the request would cover more than one “species” (i.e., a variation) of a single invention. If a “generic” statement is allowed to be issued, other types of unchosen claims will also be accepted later on (which also covers the generic request). Keeping applications as retired is advantageous, especially when the withdrawn applications depend on a chosen claim (or share the patentable object with it). When a Markush group describes part of a combination or process, the members who follow “selected” from the group consisting of (or a similar introductory phrase) should be able to be replaced, one by the other, with the expectation that the same expected result will be achieved. Markush's claim would then be thoroughly examined with respect to the species chosen and to any species that were considered clearly unsustainable compared to the species chosen.
If the chosen species or the group of patentally indistinct species anticipate the previous technique or are obvious with respect to it, any statement that refers to the species or group of patentally indistinct species chosen must be properly rejected, based on art, any statement that refers to the species or group of patentally indistinct species or group of species that are patently indistinct must be properly rejected, based on art, any statement that refers to the species or group of patentally indistinct species. The issues behind a voter requirement and a restriction requirement are so similar that the USPTO uses a standard form of office action for both. However, supplementary restriction requirements will not be established in applications that have already received an action on their merits for multi-nucleotide sequences in the absence of extenuating circumstances. The search and examination should continue until it is found (previous technique) that anticipates or makes evident a species that falls within the scope of a suitable Markush group that includes the chosen species, or (it is determined) that no species from the previous technique that falls within the scope of a suitable Markush group that includes the chosen species cannot be rejected. Any new claim that relates to an invention that is independent of and distinct from the invention (s) of the original patent claims will be removed from consideration. The five species are patently different and the examiner requires a provisional election.
After the election, Markush's application will be examined exhaustively with respect to the species chosen and, in addition, to determine patentability. In applications containing a statement by Markush that encompasses at least two independent or distinct inventions, an examiner may require that a single species (or a group of patentally indistinct species) be provisionally chosen before examining its merits, with one exception. See Examination of Patent Applications Containing Nucleotide Sequences, 1192 OG 68 (November 19, 1999). The clarity of registry with respect to provisional choice of species is fundamental for correct application of 35 U. S.
C. In accordance with current practice, when an examiner decides to require a provisional election of this kind, in most cases they must call upon applicants to request a telephone election. It is important for applicants to understand what is involved in responding to a restriction requirement and how it can affect their patent application process. By understanding what is involved in responding to this type of office action and how it can affect their patent application process, applicants can make informed decisions about how best to proceed.
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