Restriction Requirement

A patent generally covers a single invention. Often, however, a patent application will be filed that arguably covers multiple inventions. The United States Patent and Trademark Office (USPTO) uses "restriction requirements" as discretionary tools to limit the examination of a patent to only one invention.

In order to issue a restriction requirement, the patent Examiner must find that two independent or distinct inventions have been claimed and that there would be a serious burden on the examiner to examine all the claims. In general, restriction requirements are proper where: (1) the application recites two or more patentably distinct inventions, or (2) the application recites two or more patentably distinct species without an allowable generic claim encompassing the species. An examiner might require a restriction if there are claims directed to: (1) multiple embodiments, (2) an overall assembly and one or more subassemblies, and (3) an apparatus and a process.

In responding to a restriction requirement, we must elect the claims that are directed to a particular invention. This is true even if we intend to traverse (argue) the restriction requirement. The non-elected claims will be "withdrawn" and the Examiner will not consider them.

In most situations, a patent resulting from an application in which there was a restriction requirement will issue without the withdrawn non-elected claims. On the other hand, an applicant can request "rejoinder" of the withdrawn (non-elected) claims upon the allowance of the elected claims. The Examiner is not obligated to rejoin the withdrawn claims unless they are amended (usually concurrently throughout the prosecution of the application) to contain the elements of the allowed elected claims.

An "election requirement" is slightly different than a restriction requirement. An election requirement allows the Examiner to focus on one "species" of the invention. Theoretically, this reduces the Examiner’s work load. At the end of prosecution (the process during which the patent is examined), if claims to the elected species are found allowable, the Examiner is required to expand the scope of his search to a reasonable number of non-elected species.

We are seeing progressively more of these restriction and election requirements. A recent article co-written by former PTO Director Jon Dudas along with Stepen Maebius and Sean Tu makes a strong statement regarding the rise in restriction requirements:

"Restriction practice has clearly grown in the past few years. In 1993, there were only approximately 1,000 restriction requirements in the biotech practice group (out of approximately 32,000 first office actions). However, in 2008, the number of restrictions ballooned to 21,911 restriction requirements in the biotech practice group (out of approximately 42,000 first office actions). Thus, there has been a growth from only 1.5% of patents receiving restriction requirements to over 50% of patents receiving restriction requirements in the biotech practice group."

Further, a single application may receive multiple restriction requirements and/or election requirements. Sometimes these restriction and election requirements are presented in a single document, sometimes we receive them serially (one after another), and sometimes subsequent restriction or election requirements show up late in the prosecution of the application.

Unlike substantive claim rejections under §§ 112, 101, 102, and 103, it may not be worth the time and cost resources to argue for the removal or reconsideration of a restriction (or election) requirement where the examiner has at least a colorable argument for the restriction. One reason for this is that at any time prior to the issuance of a patent from this application, you may choose to file one or more separate applications (e.g. a divisional application) in which you continue to pursue the remaining claims. The withdrawal of non-elected claims and their subsequent re-filing in one or more divisional patent applications results in no loss of substantive rights. Instead of paying attorney fees associated with forming and presenting arguments against the restriction, which may or may not be successful, it may be to your advantage to expend resources pursuing the non-elected claims in a divisional application (see Continuation Applications). Other factors you should consider include the PTO costs associated with the divisional over the life of the patent (including maintenance fees) and the strategic advantages of having a pending application and/or multiple issued patents.

Restriction requirements may be presented, at the Examiner’s discretion, in a phone call (examiner interview), or in writing (an Office action). If the election is made during a phone call, it can be handled quickly and inexpensively. On the other hand, if there is a written Office action, a formal response must be filed (costing a minimum of $500). The response to a written restriction requirement generally must be filed no later than one month after the mailing date of the Office action. Extensions may be available for a fee.