Traversing in a patent proceeding means to register a formal disagreement with the examiner's findings or requirements. An inventor must file an application with the United States Patent and Trademark Office to obtain protection for his invention. Once filed, the application is reviewed by a patent office examiner who decides whether to grant the patent. If the inventor doesn't agree with the examiner's rulings, either during the application process or the examiner's final decision, he must traverse.
To qualify for a new patent, an invention or idea must be unique -- not one already patented by another inventor. Types of patent applications include: a utility application for a manufacturing invention, such as a new machine or material; a design application for a new product; and a plant application for a new type of plant. The patent application process is extensive; the inventor must supply information about the invention that includes drawings of the invention from all angles, explanations of mechanics and overall purpose. The inventor must supply clear information to the examiner on the application to decrease the chance of rejection.
If the inventor receives a formal adverse action from the patent office -- such as a patent restriction or an initial rejection of the patent application -- he must formally traverse. The process varies according to the type of objection or restriction the examiner is raising and by which type of patent application was filed. A basic traverse requires a written response from the inventor stating why he disagrees with the examiner's conclusion with supporting facts and documentation. The response and supporting papers must be submitted to the United States Patent and Trademark Office by the deadline stated in the formal action notice from the examiner.
A restriction requirement is a common action that merits a traverse, according to the website of patent attorney David McEwing. U.S. patent laws allow only one invention for each patent application. If an examiner determines the inventor has submitted more than one invention on the same application, he will issue a restriction requirement. For example, if an inventor has filed for a patent for a new bicycle design and the design includes a new type of wheel, the examiner may consider the bike's frame and the wheel design as two separate inventions. The restriction requirement requires the inventor to pick one set of invention claims on the initial application to pursue while the other claims are set aside. For example, the bike inventor may choose to pursue only the frame's design. If the inventor traverses a restriction requirement, he is still required to make a choice of which claim to pursue, but he may also provide a written argument for reconsideration of the restriction requirement at the same time.
If the examiner won't remove the restriction requirements, the inventor must file a divisional application and pay another application fee. The divisional application is the same as the original application but only covers the claims the inventor didn't chose the first time. (Refs 1,5)
It is important for an inventor to traverse a decision or action by the examiner in a timely manner. For example, if an inventor fails to traverse a restriction requirement during the application process, he will not be permitted to petition for appeal of the restriction by the director of the USPTO later on. The patent office views the failure to traverse at the appropriate time as an acceptance of the restriction requirement. Inventors who are unsure whether to traverse a particular adverse decision or action by the USPTO, should contact a patent attorney for assistance.
- Law Office of David McEwing, P.C.: Restriction Practice
- United States Patent and Trademark Office: 818.03(c) Must Traverse To Preserve Right of Petition
- United States Patent and Trademark Office: How to Get a Patent
- United States Patent and Trademark Office: Design Patent Application Guide
- The Business of Patents: The Divisional Patent or Divisional Application
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