Responding to Restriction Requirements in Patent Applications

A restriction requirement is an assertion by the examiner that the claims of a patent application are directed to two or more independent and distinct inventions. For more information, refer to MPEP Section 803.

Common Examples of Restriction Requirements

One frequent restriction requirement involves claims for an apparatus versus those claiming a method of using the apparatus. The examiner will suggest groups of claims, one for the apparatus invention and another for the method invention.

To respond, the inventor must elect one group of claims for examination. For instance, if the application includes claims for a pencil and a method of using the pencil, the examiner may restrict the application to either the pencil or the method. The applicant must then elect one for examination. A response that does not elect one of the inventions listed by the examiner is considered non-responsive, and the application may eventually become abandoned.

Election With or Without Traverse

The election may be made with traverse or without traverse:

• With Traverse: If electing with traverse, the applicant disagrees with the examiner on the restriction requirement or claim grouping. The applicant may submit arguments as to why the restriction requirement is improper, though an election is still required.
• Without Traverse: If the election is made without traverse, typically the recommended option unless special circumstances apply, the applicant simply makes an election without disputing the restriction.

Why Election Without Traverse Is Often Preferred

In practice, it is generally better to make the election without traverse:

1. Limited Success in Traversal Arguments: Most arguments traversing the restriction requirement are unsuccessful and increase costs.
2. Avoiding Double Patenting Rejections: Not traversing can prevent a double patenting rejection on later-filed divisional applications. Without traverse, the divisional application can have a longer patent term (i.e., patent term adjustment) than the parent application due to Patent Office delays, which may be beneficial.

When to Traverse a Restriction Requirement

1. Effective Regrouping of Claims: In general, I don’t traverse a restriction requirement except in one situation.  Sometimes, a patent application may include multiple different variations and embodiments.  So much so that it is confusing.  The examiner is confused and the variations and embodiments are grouped incorrectly.  In these situations, I generally conduct an interview with the examiner and explain how I would like to group the various embodiments.  It helps them and it helps the examination process.  In these cases, traversal may lead to a more logical grouping of claims.  I’m not trying to remove the restriction requirement.

Strategy for Key Technologies

For key technologies, it is common to file multiple patent applications claiming priority to a single parent application. These application will encounter a restriction requirement.  By not traversing the restriction requirement, the divisional application could benefit from a longer patent term than the parent application. Additionally, in litigation, the alleged infringer cannot argue that claims from two different patents resulting from the restriction requirement are invalid for double patenting, as statute prohibits this.

Case-Specific Considerations

Each restriction requirement, like each patent application, has unique issues, values, and concerns. Each requirement must be evaluated to determine if a standard response suffices or if specific action is warranted.

Get in Touch for Assistance

For questions about restriction requirements or any patent-related issues, please contact me at (949) 433-0900. As an Orange County Patent Attorney, I serve clients in Orange County, Irvine, Los Angeles, San Diego, and nearby areas. Feel free to share this article with others interested in learning more about patent restrictions.