Responding to Restriction Requirements

I recently had a three way restriction requirement from the US PTO on an application. The examiner had restricted the invention three ways:

1. An apparatus with features possibly usable outside the client’s business.
2. A special instance of the apparatus directly relating to a product being developed by the client.
3. A method for using either invention 1 or 2.

The business situation of the client is this: they are in the process of developing a technology that could be widely deployed in 3-5 years. Right now, any potential infringers/licensees are very small players and do not pose a business threat. The client is feverishly working to deploy some product and prove that it works. If their trials are successful, the market is much bigger than they can supply right now. They may raise capital and expand to meet the market, or they may license the technology to one or more existing players in the market.

The question is: how to respond to the restriction?

My suggestion is to elect the first invention, the one which does not necessarily directed at the client’s product. Rather than filing divisional applications right away, I would wait and file a divisional on the method claim, then file a divisional on the invention directed specifically at the client’s product.

There are several reasons for this.

Looking at the invention directed specifically at an embodiment like the client’s product, if we pursue it now, we will get a patent based on today’s understanding of what we think is the important features of the invention. We would rather make that definition as far into the development cycle as possible. There is always the possibility that technology or market considerations may cause certain parts to be more important than we can see at this point. This is one reason why I want to do this embodiment last.

Another reason is that there are no potential infringers that need to be dealt with immediately. If we did have a patent issue protecting the client’s product, we would do little with it, except hang a plaque on the wall.

Having a patent issue on invention #1, the apparatus outside the client’s business, the client will have a bargaining chip or a potential licensing stream outside the core business. The client could negotiate such a patent away without losing coverage on the core product.

Looking at the method inventions, the potential infringers may be customers who buy the product. However, because the product is not widely deployed and thoroughly shaken out, there may be some changes to the methods that we may wish to make to the application with a continuation-in-part application.

Taking all of this into consideration, I suggest taking the generic invention first, the methods second, and the actual client device third. I also suggest doing them as serially as possible, filing a divisional as late as possible and on paper, and keeping the application alive.

There are a couple situations that may change the strategy. The first is if the client feels like the product has matured and stabilized and that there is a potential licensee. In such a case, I would suggest pursuing the product invention as quickly as possible. Another situation is if another player in the market looks like they will infringe. In that case, I suggest beginning to tailor the claims to match the potentially infringing product so that a licensing deal can be reached quickly and amicably, or so the infringer be shut down fast.

Because we have no knowledge of the merits of the case from the examiner, we cannot use the merits as a basis for evaluating one invention over the other in the restriction requirement.

In summary, the business considerations of the client, including their ultimate potential business strategies, can be the key to deciding which step to take in this case. The patent attorney who does not have the ability to appreciate the client’s business interests and operate with those in mind does his client a gross disservice.