I. Basics of a restriction requirement
In a restriction requirement, an examiner on your case is (1) indicating that the claim set has claims that are directed to different inventions and (2) requiring you to choose one of the inventions for examination. The choice is generally simple in that you select the commercial embodiment of the invention or the most likely candidate depending on where you are in the launch of your product. However, the ramifications of your choice may dictate what you can claim in a subsequent continuing patent application. Otherwise, your subsequent patents may be invalidated for double patenting.
Here is an example of a common scenario of a restriction requirement. A car has a steering wheel, a suspension and a braking system. These systems may individually and collectively help to improve the performance of the car. In claiming this ‘invention’, patent attorneys will layer a claim set to include claims to each of the components separately and to the system collectively in order to obtain the broadest protection possible. However, each of these components may be deemed a different invention through they are all interrelated. You will receive a restriction requirement in this case.
A more frustrating example is one where the examiner makes a restriction requirement between an apparatus and a method for using the apparatus. They seem like the same invention but according to patent office rules, they are not. The bottom line here is not to argue with the examiner because the costs for doing so are greater than just electing one invention and filing a continuing application to seek patent protection for the non-elected invention. By electing one invention for examination, you are not waiving your right to seek patent protection for the non-elected invention.
As I indicated above, when you receive a restriction requirement, the restriction requirement dictates what you can and cannot claim in a subsequent continuing patent application. The basic rule is that the patent related applications must not cross the lines of demarcation set forth in the restriction requirement. Otherwise, the subsequent patent(s) may be invalid for double patenting.
II. Patent claims in subsequent application is invalidated in light of prior restriction requirement
To explain, let’s discuss St. Jude Medical v. Access Closure (Sept. 11, 2013 Fed. Cir.). In this case, the patent owner filed a series of patent application which matured into patents. Below is a diagram of the relationships between the patents.
The grandparent patent received a restriction between the method and the apparatus. Plus, it also received what is known as a 3-way species restriction. You may receive a species restriction if you list different ways of accomplishing a particular function and claim each of the functions. Here, the patent owner had to elect one of either the method or apparatus and elect one of the 3 species. See diagram below.
In the grandparent patent of the St. Jude case, the patent owner elected the Apparatus invention Species B for examination. In the Janzen patent, the patent owner elected the Apparatus invention Species C and the Method Species C for examination. The Sibling patent sought protection for the Method in a generic fashion without regard to species A, B or C.
As shown in the first diagram above, you can file subsequent patent applications and obtain multiple patents based on a single disclosure. Because of this option, the patent laws have additional rules to prevent you from extending the life of your patent protection by obtaining multiple patents. This use to be more of a problem when patent term was calculated based on the date of issue. However, the problem has been greatly reduced since patent term is now calculated from the date of filing. Nevertheless, the issue does arise as in the above case and in cases where there is a patent term adjustment. To mitigate the problem of extending the life of patent protection, the courts have allowed patent owners to obtain patents with claims that are similar to each other as long as the patent owner is willing to disclaim the terminal portion of the patents (i.e., terminal disclaimer) so that the patents as a family expire on the same date.
One of the instances where you don’t have to terminally disclaim the patent term of your patent is in a restriction requirement situation under 35 USC 121. Any subsequent patent application that you file as a result of the restriction requirement is not subject to double patenting and terminal disclaimers. Hence, these patents can have different patent terms when there is a patent term adjustment. The patents remain intact as long as you maintain consonance and do not cross the lines of demarcation of the restriction among the patents in the family.
Now, if the line of demarcation is between the apparatus and method (i.e., red line in the second diagram above), then consonance was not maintained between any of the patents. If the line of demarcation is between the species (i.e., green line), then consonance is maintained between the Grandparent and Janzen but not maintained between Janzen and the Sibling patents. In both instances, some of the claims will be invalidated. However, the least number of claims will be invalidated if the line of demarcation is at the species level.
III. Holding of the case
In this case, the Federal Circuit held that the line of demarcation is at the species level. Since the Janzen and Sibling patents cross the line of demarcation and did not maintain consonance, the conflicting claims of the Janzen patent were invalidated.
This is the type of minutiae that most inventors don’t want to wade through and will most likely make a mistake on when they attempt to prosecute a patent application pro se. If you do choose to proceed in representing yourself before the USPTO, do bear in mind the ramifications of a restriction requirement on subsequent patent applications.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.