Question 25
Domain 3: Patent Prosecution and MPEP-Based PracticeWhat is the proper response when an examiner makes a restriction requirement that the applicant believes is improper?
Correct answer: B
Explanation
When an examiner issues a restriction requirement, the applicant must follow it to keep prosecution moving, even if the applicant disagrees. The proper course is to "comply under protest" and then seek review by petition, because the applicant may challenge the examiner’s action without waiving the objection.
Why each option is right or wrong
A. The applicant must comply and cannot challenge the restriction
B. The applicant should comply under protest and can petition the decision
Under 37 C.F.R. § 1.144, a restriction requirement is not appealed on the merits at that stage; the applicant must make an election to avoid abandonment of the non-elected claims and preserve prosecution. If the applicant believes the restriction is improper, the remedy is to comply under protest and then seek supervisory review by petition under 37 C.F.R. § 1.181, rather than refusing to elect and risking delay or loss of rights.
C. The applicant should abandon the application
D. The applicant should file an immediate appeal to the PTAB