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Requirements for Restriction and Election of Species- Techniques to Prevail and Do No Harm, and Recent Developments

Original Air Date 1.19.23
This course has expired and is no-longer eligible for CLE

Conventional wisdom held that traversing restriction requirements was rarely successful, and that the attempt did more harm than good. But things have changed. Changes in the law of double patenting, exhaustion, and the § 121 safe harbor have changed the economics. Conversely, in the last few years, examiners have become much more aggressive in restricting applications. So now, it’s important for practitioners to know how and when to push back. First, we discuss a framework to understand the law and how to traverse--why is it important, and what types of traverse are effective and do no harm. Second, we discuss examples in detail to help illustrate the broader principles. Third, the Patent and Trademark Office (PTO) has recently rekindled interest in this topic by requesting further comments--we discuss AIPLA's comment letter.

Presented by:

  • David Boundy, Potomac Law Group PLLC
  • Phil Harris, Holland & Hart
  • Don Heckenberg, Venable, LLC


AIPLA is an approved provider by most jurisdictions requiring CLE. Each program requires individual jurisdiction approval, and each jurisdiction has different approval guidelines and time frames so programs may not be pre-approved for CLE. Program accreditation is sought in all attendee requested jurisdictions and may be available for up to one year after the original air date. Specialized credits (Ethics, Elimination of Bias, Diversity, Equity & Inclusion, Technology, etc.) approval varies by jurisdiction. CLE reporting and/or certificates of attendance may take up to 4 weeks for processing.

For information on CLE accreditation and processing, please contact the AIPLA CLE Department at cle@aipla.org.