[Patentpractice] status identifier "withdrawn"?

[bill at eshelman.biz]

I was also trained to never take a “telephone restriction”. Not sure why, but I think it has to do with having the restriction and then the reply in the written record.

Bill 

 

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of David Boundy via Patentpractice
Sent: Friday, December 6, 2024 6:03 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Patentpractice] status identifier "withdrawn"?

 

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restriction (as opposed to election of species), and you elected with no traverse, yes, I think you need to use "withdrawn" (and I don't think you're giving up anything by doing so).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 <mailto: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When exactly am I required to use the status identifier "withdrawn"?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What I was taught was, I was not required to use a status identifier of "withdrawn" for claim 1 until I was good and ready.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*	Examiner mails a notice of non-compliant amendment, saying that I should have used status identifier "withdrawn" for claims 1 and 3.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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