What is a restriction requirement?
A mandate from the examiner to divide your claims into more than one category and elect one for examination
A “restriction requirement” is an examiner’s decision that the claims of the patent application are directed to two or more separate and independent inventions (i.e., categories) and that the patent applicant must choose one of those inventions for examination. The examiner will not examine a Claim Set directed to two or more inventions. For example, claims to the product (i.e., apparatus claims) and claims to the method of using the product may be considered two different inventions and therefore subject to a restriction requirement.
Claims directed to alternative embodiments and other aspects of the invention might also be considered wholly different inventions. For example, inventions related to a transmitter-receiver system may include claims directed to a receiver, different claims directed to a transmitter, or claims directed to the system of the receiver and transmitter. Claims directed to the receiver in contrast to claims directed to the transmitter may be considered different inventions. In this case, an examiner may render a restriction requirement and, as in the example above, the applicant would need to choose between the claims directed to the receiver, transmitter, or system including the transmitter and receiver. Inventors might think of all these components as elements of one single invention, but they may likely be three, legally different inventions, as discussed below.
What are common situations in which a restriction requirement is made?
When both an apparatus and a method claim are included in the Claim Set
Restriction requirements are frequently made when Claim Sets recite both an apparatus claim and a method claim. Additionally, if a patent application admits that there are multiple embodiments, the examiner may be more likely to render the restriction requirement and divide the application based on how the application describes the multiple embodiments. Even though these aspects might cause an examiner to render a restriction requirement, inventors should not exclude them from the patent application when deciding what to include in the patent application. They should discuss whether including these aspects in their patent application would be beneficial with their patent attorney.
Why is the examiner saying that there are two or more inventions in the patent application and asking me to select only one for examination?
Technical, legal definitions and reasoning
In my experience, inventors often feel examiners are incorrect in rendering restriction requirements. They do not feel the product and its method of use are different inventions. For example, the transmitter claims and the receiver claims do not appear to be different inventions. Although from a layperson’s perspective this may seem correct, the legal definition used by the USPTO to determine when claims are directed to two or more inventions is very broad and differs from a lay understanding.
Often from the layperson’s standpoint, the product claim and the method claim for the product’s use are the same invention since they refer to the same apparatus. However, if the apparatus can be used with two or more methods, as is often the case, the scope of examination for the method and apparatus claims are not co-extensive and are therefore different inventions. For example, a kitchen knife can be used in two different methods. A first method entails using the knife to slice tomato. A second method of using the knife entails crushing garlic. In this regard, the knife claim may be considered a different invention from a method claim involving the knife.
Should I choose the apparatus or the method claims when there is a restriction requirement between the two?
It is usually best to choose the apparatus claim for examination.
For a restriction requirement based on the apparatus and method claims, it is usually more beneficial to select the apparatus claims for examination because they are generally broader than method claims. Apparatus claims cover all methods of use whereas a method claim covers only one. However, there are cases in which one might want to select the narrower method claims for examination. For example, if the goal is to seek the issuance of a patent regardless of the scope of protection, it would be preferable to have the method claims examined because they are theoretically harder to reject than an apparatus claim. The inventor can always seek broader patent protection by filing one or more continuing patent applications, as discussed below (FAQ#22-29).
Can I still secure a patent for non-elected claims in response to a restriction requirement?
Restriction requirements do not prevent applicants from seeking examination on non-elected inventions. A restriction requirement simply indicates that the examiner will examine only the elected invention. The non-elected invention(s) can be examined in a subsequent application (i.e., continuing application). A continuing application may be filed at any time before the current patent application is either abandoned or a patent is issued. An applicant can file a continuing application immediately or wait to see how the current patent application proceeds through the examination stage.61
Should I oppose the examiner (i.e., “traverse” the examiner’s position) on the restriction requirement?
I generally do not recommend it.
The restriction requirement may be “traversed” but is usually costly and unsuccessful. Even if an applicant traverses a restriction requirement, the USPTO requires the applicant to select one of the claimed inventions for examination so that patent prosecution can continue should the examiner not withdraw the restriction requirement. Unless there is a clear error in the restriction requirement, I generally do not recommend traversing it because it is rarely successful, and it is generally less expensive to file continuing patent application to secure patent protection for the non-elected claims.
Are there any benefits to not traversing the restriction requirement?
A restriction requirement might not be as bad as you think.
In my opinion, a restriction requirement is not detrimental to the examination. It may even be beneficial. The non-elected claims can be examined in a divisional application, and the examiner cannot render a “nonstatutory double patenting rejection.”62 A nonstatutory double patent rejection occurs if the claims of the patent application are similar, but not identical, to a pending patent application or an issued patent. To overcome a nonstatutory double patenting rejection, the inventor can file a terminal disclaimer that disclaims any “terminal portion” of the patent maturing from the divisional application that extends beyond the patent term of the previously filed patent application. In this case, the parent and divisional patent applications will have “co-extensive patent terms.”
If a restriction requirement is made, a nonstatutory double patenting rejection cannot be made. Thus, the terms of the patents maturing from patent applications having a common parent application may be different. This means the inventor might have a patent term for one of the patents that is longer than the other patent,63 which could be beneficial for inventions that have significant, daily, commercial value. For example, some patented pharmaceuticals are worth millions of dollars per day and it might be advantageous to extend the patent term even by one day. Other inventions are worth less money, but the patent owner may nonetheless wish to retain the possibility to extend the patent term if the benefits outweigh the costs.
61. See 35 U.S.C. § 120 in Appendix F
62. Most patents from related patent applications expire on the same date unless there are patent term adjustments that account for delays made by the USPTO, which are generally ninety to 180 days but may be significantly longer. Citation: http://patentlyo.com/patent/2016/11/patent- adjustment-statistics.html
63. See 35 U.S.C. § 102 and 35 U.S.C § 103 respectively in Appendix F