[Patentpractice] status identifier "withdrawn"?

[David Boundy]

If it's a statutory restriction (as opposed to election of species), and
you elected with no traverse, yes, I think you need to use "withdrawn" (and
I don't think you're giving up anything by doing so).

Just FYI.   The 1980s edition of the Kayton Treatise on which I cut my
teeth said "never take a telephone restriction"   I never have.   At the
very least, you want the traverse so you can rejoin later if the facts
warrant.

On Fri, Dec 6, 2024 at 5:02 PM Carl Oppedahl via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> When exactly am I required to use the status identifier "withdrawn"?
>
> I was taught, years ago, that it was up to me when if ever I would use
> that status identifier.
>
> Suppose there was a restriction between three independent claims 1, 2, and
> 3 and suppose I elect claim 2.
>
> What I was taught was, I was not required to use a status identifier of
> "withdrawn" for claim 1 until I was good and ready.
>
> Eventually maybe the time would come that claim 2 gets allowed, and maybe
> the client would be prepared to suck it up and get a patent with only claim
> 2.  If so, then I would cancel claim 1 and next thing you know I would get
> a notice of allowance.
>
> Just now I have the following sequence of events (claim numbers changed to
> protect the innocent).
>
>    - Independent claims 1, 2, 3 filed.
>    - Examiner calls on the phone, restricts saying there are three
>    inventions.
>    - On the phone I elect claim 2.
>    - Examiner mails an Office Action, memorializing the election and
>    rejecting claim 2.
>    - I file a response to the Office Action.  Claims 1 and 3 have status
>    identifier "original".  Claim 2 has status identifier "presently amended".
>    - Examiner mails a notice of non-compliant amendment, saying that I
>    should have used status identifier "withdrawn" for claims 1 and 3.
>
> Question.  Is this the Examiner busting my chops with a made-up rule?  Or
> is it really true that my hands are tied and I had no choice but to give a
> status of "withdrawn" for claims 1 and 3?
> --
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> Patentpractice at oppedahl-lists.com
>
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>


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