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. See MPEP Section 803 for more information.
A common restriction requirement is between claims for an apparatus and those claiming a method of using the apparatus. The examiner will suggest a group of claims that the examiner believes is directed to the apparatus invention and another group of claims that the examiner believes is directed to the method invention.
To respond to the restriction requirement, the inventor must elect one group of claims for examination. For example, if the claim set included a claim to a pencil and a method for using the pencil, the examiner may restriction the patent application to either the pencil or the method of using the pencil. The applicant must elect one for examination. Click here for other scenarios where a restriction requirement may be made. A response that does not include an election to one of the inventions listed by the examiner is non-responsive and the patent application may eventually become abandoned.
The election may be made with traverse or without traverse. If it is made with traverse, which means that the applicant is disagreeing with the examiner regarding the restriction requirement or the grouping of claims, the applicant may submit arguments as to why the restriction requirement is improper. Nevertheless, the applicant must still make an election. If the election is made without traverse, which is typically the recommended route unless there are unique circumstances, then the applicant merely makes an election.
Generally, in practice, it is better to make the election without traverse. The reason is that most arguments traversing the restriction requirement are not successful and cost money. Those traversals that have been most successful for me have involved a regrouping of the claims differently than that suggested by the examiner. This has often occurred in applications that describe multiple embodiments where the examiner did not fully appreciate how the various embodiment s should be grouped and has grouped the various claims incorrectly. In these cases, instead of removing the restriction requirement, the grouping of claims are arranged to make more sense in relation to the invention being described in the patent application.
Another reason for not traversing the restriction requirement is that the restriction requirement prevents the examiner from making a double patenting rejection on a later filed divisional patent application. To overcome the double patenting rejection, the applicant typically files a terminal disclaimer which would make the patent term coincide with the earlier filed parent patent application. By not traversing the restriction requirement, the patent terms of the parent and the subsequently filed divisional patent applications can have different patent terms. Although patent’s term is 20 years from the earliest priority date, due to patent term adjustments for patent office delays which could result in an extension for a number of years, it may be beneficial to allow for this possibility by prosecuting similar claims in two different related patent applications.
For key technologies, multiple patent applications claiming priority to a single parent application are typically filed to protect different aspects of the technology. By not traversing the restriction requirement, the divisional patent application could have a longer patent term than the parent patent application because of Patent Office delays in examining the application. During litigation, the defendant cannot argue that the patent maturing from the subsequent divisional patent application is invalid for double patenting reasons. The alleged infringer cannot argue that the claims of two different patents resulting from the restriction requirement are obvious in light of each other and therefore invalid. As such, two different patents can have similar claims but are prohibited by statute from being obvious (i.e., invalid) in light of each other.
Each restriction requirement, like each patent application, comes with its own set of issues, values and concerns. Thus, each restriction requirement must be separately evaluated to see whether it fits within the commonly used responses or whether it warrants some action that differs from that discussed above.
I invite you to contact me with your patent questions at (949) 433-0900. 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.