What options do I have if my new claims are withdrawn due to election by original presentation?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

If your new claims are withdrawn due to election by original presentation, you have several options: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