Legal Definitions - traverse the requirement

In patent law, to traverse the requirement refers to the specific action a patent applicant must take when a patent examiner determines that their application describes more than one distinct invention. This determination is called a "restriction requirement."

When an applicant receives a restriction requirement, they must:

• Provide a detailed, written argument explaining why the examiner's decision is incorrect and why the claims in the application should be considered a single invention.
• Formally request that the examiner reconsider their decision to restrict the application.

It is crucial for the applicant to present a thorough explanation and not merely state disagreement. If an applicant fails to traverse the requirement in this manner, they lose the legal right to appeal the examiner's restriction decision later on.

Here are some examples illustrating this concept:

• Example 1: Integrated Software System

  A technology company files a patent application for a novel software system that includes both a unique user interface for data visualization and an innovative backend algorithm for predictive analytics. The patent examiner reviews the application and issues a restriction requirement, stating that the user interface and the backend algorithm are two separate inventions. To traverse the requirement, the company's patent attorney must submit a detailed response arguing that the user interface and the algorithm are inextricably linked, functioning as a single inventive concept where one cannot effectively operate without the other, and therefore should not be restricted into separate applications. They would formally request the examiner to withdraw the restriction.

• Example 2: Advanced Manufacturing Process

  An industrial inventor applies for a patent on a new method for creating lightweight composite materials. The application describes a specific chemical pre-treatment step and a subsequent unique molding technique. The examiner issues a restriction, claiming the pre-treatment and the molding technique are distinct inventions. To traverse the requirement, the inventor's representative must explain in detail how the specific chemical pre-treatment is uniquely designed to enable the subsequent molding technique, making them interdependent parts of a single, novel manufacturing process. They would then ask the examiner to reconsider the restriction.

• Example 3: Medical Diagnostic Device

  A biotechnology startup seeks a patent for a new medical device that combines a novel sensor for detecting biomarkers in blood with an integrated, automated system for dispensing a specific therapeutic agent based on those readings. The patent examiner determines that the sensor and the dispensing system are two separate inventions and issues a restriction requirement. To traverse the requirement, the startup's legal team must provide a comprehensive argument demonstrating that the sensor and the dispensing system are designed to work together as a single, unified diagnostic and treatment apparatus, and that separating them would diminish the core inventive concept. They would conclude by requesting the examiner to withdraw the restriction.