Restriction requirements occur when a patent examiner at the USPTO deems that an inventor has included more than one invention in a patent application. With the recent increase in filing fees, there may be a strong desire to include patent claims directed to a plurality of related, but separate inventions into one patent application. However, due do the USPTO count system (how the examiner’s at the USPTO are graded/paid), having the Examiner perform multiple searches for different inventions within the time limit they are given for a single invention put an “undue burden” on the Examiner. Specifically, 37 CFR 1.142(a) states:
If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action.
Sometimes, Examiners at the USPTO use restriction requirements to force applicants to split up applications into multiple parts, even if the claims are somewhat similar. Examiners may use this tactic because they will be able to quickly increase their counts due to only having to learn one specification and somewhat similar claims. However, most of the times I have received restriction requirements is because the claim language is really different. For example, a device that does a first process based on location will have completely different prior art than the same device that does a second process on time, even if the first process and the second process are somewhat related.
Typically restriction requirements are sent before prosecution starts in their own office actions, and applicants are given one month to respond to the restriction requirement. The restriction requirements will typically have at least two set of claims that the Examiner contends are different inventions, where the applicant MUST elect at least one of the sets of claims. A response to the restriction requirements is fairly simple, with sample language being “To expedite prosecution and without conceding to the Examiner’s positions, Applicant elects claims set A, within claims 1-7.”
In restriction requirements, an applicant may choose to “traverse” the restriction requirement or “not traverse” the restriction. By traversing a restriction requirement (you still have to select a set of claims), and you can argue the Examiner’s reasoning, and in minimal circumstances the Examiner may be persuaded by your arguments and withdrawal all are part of the requirement. In traversing the restriction requirement, you may be able to persuade the examiner amending the claims so there is at least one generic claim, where the most crucial part of the invention disclosed in each set of claims. However, traversing a restriction requirement without amending the claims will likely not turn out well, and another restriction requirement will be sent. However, I typically only traverse when the Examiner has made a complete misjudgment of the grouping of claims or another egregious error. This is because when traversing you may create arguments that generate prosecution history that may limit the scope of a granted patent. Nonetheless, sample language I use while traversing a rejection may be,
“To expedite prosecution and without conceding to the Examiner’s positions, Applicant elects claims set A, within claims 1-7, with traverse. Applicant respectfully submits that claims should be examined together without imposing an undue burden on the examiner. As stated in § 803 of the Manual of Patent Examining Procedure, “[i]f the search and examination of an entire application can be made without serious burden, the Examiner must examine it on the merits even though it includes claims to distinct or independent inventions.” Because the claims are directed towards a single, independent invention and contain similar claim limitations, under this standard, it is believed the search of groups jointly would not impose a serious burden.
So what happens to the non-elected claims? You do not lose the right to these claims, to gain patent protection over the non-elected claims a divisional or continuation patent application must be filed.
AUSTIN PATENT ATTORNEYS SUGGESTIONS TO AVOID RESTRICTION REQUIREMENTS:
- Limit the claims to include only enforceable and valuable limitations, not all possibilities and combinations that could be use
- Include a similar limitations in each of the claims, so you can argue that the claims have a “Genus claim”
- Make a separate invention part of a dependent claim, due to their dependency they are part of the invention of the independent claim. Therefore, during prosecution you can determine the merits of the dependent claim to determine if a divisional application or continuation application should be filed on the dependent claim’s limitations.
- Be careful how you respond to restriction requirements. Based on the language in your restriction requirement and your responds to the restriction requirement patent prosecution estoppel may be created. Plantronics, INC. is a decent case discussing the possibility of when patent prosecution estoppel or claims may be limited based on the language in the restriction requirement and the response.
- Fish and Richardson created the linked webinar associated with how to respond to restriction requirements, which may be of assistance to patent practitioners.