What options do I have if my new claims are withdrawn due to election by original presentation?

If your new claims are withdrawn due to election by original presentation, you have several options:

1. Request reconsideration: You can argue that the new claims are not directed to a different invention and request that the examiner reconsider the withdrawal.
2. File a divisional application: You can pursue the new claims in a separate divisional application.
3. Traverse the requirement: You can traverse the restriction requirement by arguing that the inventions are not patentably distinct or by submitting evidence showing the inventions to be obvious variants.
4. Amend the claims: You can attempt to amend the new claims to make them more clearly related to the originally claimed invention.

The MPEP 821.03 advises:

“To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse.”

It’s important to respond promptly and carefully to preserve your rights and options for pursuing all aspects of your invention.

To learn more:

• Election by Original Presentation
• Patent Claims
• Restriction Requirement
• USPTO Procedure
• Divisional Application