Tag: Patent Prosecution

Election of species requirements are part of U.S. patent restriction practice. Examiners often caption these matters an “election/restriction” or the like. Election requirements deal with how genus and species inventions are disclosed and claimed. This differs from regular restriction practice, which requires an applicant to elect one group of claims from among different groups of claims to independent or distinct inventions identified by an examiner. Instead, an election requirement deals with an application in which there is a generic (genus) invention claimed as well as more than one species of invention within that genus claimed. In this sense, an election requirement is a special type of restriction. It is possible to have both types of restrictions, by groups of claims and by species, issued at the same time.

The Basics of an Election Requirement

More than one species of an invention, “not to exceed a reasonable number,” may be specifically claimed in different claims in a single U.S. patent application, provided that the application includes (i) an allowable claim generic to all the claimed species and (ii) all the claims to species in excess of one are written in dependent form or otherwise include all the limitations of the generic claim. But where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive.

A species restriction acts as a kind of cap on the amount of searching that a U.S. patent examiner has to do for a given application, limiting it to a reasonable number of species. It is possible for applicants to include dozens or even hundreds disclosed species embodiments in a single application. Genus/species election practice helps prevent examiners from being overwhelmed by the presence of voluminous numbers of species. Election requirements may arise where the examiner suspects that the generic claim will not be patentable/allowable but the number of disclosed species makes searching them all impractical.

A key aspect of election requirements is that they are based on an examiner identifying different disclosures—often by figure, but sometimes with reference to the detailed description of the specification. In reply, the applicant then has to elect one species and identify the claims that read on that elected species and those that are generic. Perhaps the most important point about elections of species is that the claims will be restricted to the elected species if no claim to the genus is found to be allowable. So, really, an election requirement is the examiner saying (contingently) that if there is ultimately no allowable generic claim, then there will be claims to independent and distinct inventions (species) and a serious examination burden will be present. This ties the election of disclosed species to a restriction between claims in the application.

Election requirements can arise in just about any patent application. However, election requirements are somewhat more common for chemical, biotech, and similar types of inventions. Election of species requires are a creation of USPTO regulations and are not explicitly provided for in statutory law, other than in relation to regular (statutory) restriction practice.

What is a “Species”?

Species always refer to the different embodiments of a generic (or genus) invention. In contrast, claims are definitions or descriptions of inventions. Claims themselves are never species as such. The scope of a given claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a given claim may encompass two or more of the disclosed embodiments (and thus be designated a generic or genus claim). Species may be either independent or related as disclosed in a given application.

As an example, consider a mechanical invention with a first part connected to a second part. In one species embodiment, they are connected by a mechanical fastener (e.g., bolt, screw, rivet, etc.). In another species embodiment, they are connected via an applied electromagnetic field. In yet another species embodiment, they are connected via a chemical reaction that occurs between the parts when treated in a chemical bath. These embodiments might be claimed in a mutually exclusive way, and searching one may not capture prior art relevant to the others. Although the there may be a generic invention to the first and second parts being connected, regardless of how they are connected.

What is “Generic” or a “Genus”?

Initially, it is important to distinguish between generic or genus inventions as disclosed, on one hand, and generic claims, on the other. Election of species practice begins with identification of disclosed species. However, generic disclosures do not matter much for election requirements and replies. Rather, election practice only really cares about generic claims, in relation to specific species claims.

What constitutes a generic claim depends upon the specific species claims that are present in a given application. The USPTO says that, in general, a generic claim should require no material element in addition to those required by the specific species claims, and each of the specific species claims must require all the limitations of the generic claim. If you have claims that are mutually exclusive, and there are material elements recited in one claim but not another, there may not be a generic claim and instead there may simply be independent or distinct claimed inventions—in other words something subject to conventional restriction practice.

PCT National Phase Entry Applications

Regular election/restriction practice does not apply to PCT national phase entry applications. Instead, a unity of invention standard governs, which requires having a common or corresponding special technical feature that defines a contribution over the prior art. However, U.S. examiners can still issue requirements to elect a particular species in national phase applications and to withdraw non-generic claims to unelected species, and the procedures are ultimately similar. Applicants must still make elections and rejoinder of withdrawn claims is still possible. This means that the ultimate effects are similar though the terminology differs somewhat. If anything, there is slightly greater leeway for applicants to amend the claims to keep them together under the unity of invention standard.

If a U.S. examiner applies conventional election/restriction practice requirements to PCT national phase entry applications, that is a procedural error that should be called to the examiner’s attention. That sort of mistake does happen from time to time.

Keep in mind that prior indications by the international search authority or international preliminary examining authority in the international phase of a PCT application are not binding in the national phase. That means that even if a prior PCT written opinion indicated that claims posses unity of invention, the U.S. examiner could disagree and still issue a unity of invention election of species restriction in the national phase.

Requirements for an Election of Species Response

Patent applicants are required to elect a species for examination in reply to an election requirement and to identify the claim(s) that read on the elected species, as well as any generic claim(s). A reply (or response) is considered incomplete if no election of a particular species is made.

To the extent that a restriction between groups of claims to independent or distinct claimed inventions was also made, that election by claim group needs to be made in addition to the species election. Those different elections effectively stack on top of each other. The only claims that will be examined are those that are part of both the elected species requirement and the elected group of claims. In other words, the claims that will be examined will only be those that are the net result of the two elections (by claim group and by species).

An election of species can be either “with traverse” or “without traverse”. “Traverse” means that the applicant is arguing that the restriction requirement is incorrect or improper and should be reconsidered and withdrawn in whole or part. Traversing a species election/restriction requirement requires actually making an argument about why the species restriction is wrong. An election that is made subject to a traversal is called a provisional election. Traversing the election requirement is necessary to later file a petition to challenge it. However, it is highly uncommon to traverse an election of species requirement.

The applicant can also make an assertion about which claim(s) are generic that may differ from the examiner’s indication of the generic claim(s). This is often an critical aspect of responding to the election requirement.

Strategic Considerations for Election Requirement Responses

There are a few strategic considerations the go into deciding how to reply to an election of species requirement. Consider the following, for example:

1. What is the most commercially important embodiment of the invention, or which embodiment has the most commercial potential? Many times this is the most important consideration.
2. What generic claims are present? An examiner will generally indicate which claim(s) he or she thinks are currently generic. Applicants might not agree, and might indicate that additional or different claims are generic to all claimed species. Indications of generic claims, as well as indications of which specific species claims read on the elected species, can have significant impacts on later enforcement of any resultant patent. Such indications, or a failure to argue that certain claims are generic, may play a significant role in claim construction and the ability of competitors to avoid or design-around granted claims. These indications may also impact the scope and availability of the doctrine of equivalents.
3. Which embodiment is covered by the most claims? All else being equal, sometimes an applicant might make an election simply to retain the largest number of claims.
4. How does the election of species requirement relate to an accompanying restriction by groups of claims? Examiners will often issue both a restriction by identified groups of claims, and also require election of a disclosed species. Because only the claims that are encompassed by both elections will be examined, this sometimes favors making certain elections that will retain a reasonable number of claims.
5. Might claims be amended? One or more claims might be amended in order to make them generic, to depend from a generic claim, and/or to make provide a linking claim. Claim amendments might be used to try to facilitate later rejoinder of claims directed to an unelected species.
6. Are you willing to file one or more divisional application(s) to pursue unelected claims? A election/restriction requirement is an indication that filing unelected claims in a new divisional application will prohibit a double patenting rejection in the later-filed divisional. However, whether or not the applicant is willing to incur further expense associated with a divisional filing (or perhaps multiple divisionals) may influence which species is elected in response to the restriction. It is possible to defer a divisional filing decision so long as the current application remains pending. This may allow an opportunity for claim rejoinder to be considered. Ensure that there is a clear demarcation between restricted species and claims to preserve divisional filing safe harbor protections against double patenting. Keep in mind both short-term (e.g., costs to traverse and/or petition a restriction) and long-term costs (e.g., divisional filing and maintenance fees) associated with each option.
7. Which species have the best chance of patentability? This may not be known. But, depending on the scope of the prior art or potential patent-eligibility issues, certain disclosed embodiments and corresponding specific species claims might face either easier or more difficult examinations. Sometimes an applicant has a sense of which claimed embodiment(s) are the most unique.
8. Is it important to obtain a patent very quickly, or not? Certain elections of species may make examination take longer, such as if the election results in reassignment of the application to a different examiner in a different group art unit. Although the effect on the speed of examination may be speculative at the time of the species election.

When strategizing how to respond to an election of species requirement, the main issues are usually which species to elect and which claims to designate as being elected species-specific claims or generic.

It is often not advisable to challenge an election of species requirement by traversing it. Doing so usually involves admitting that the species are not patentably distinct, that is, that they are obvious variations of each other. That may limit the sorts of arguments that can be made later on to distinguish prior art, etc. Of course, there are situations in which examiners identify species incorrectly (e.g., incorrectly identifying different views of a single embodiment as different species), in which case traversal may be appropriate and worthwhile. Traversal is necessary to preserve the right to later petition against the restriction, however.

An experienced patent attorney can help an applicant assess possible election requirement response strategies for any given case.

Petitions Against Election Requirements

It is possible to file a petition against a election/restriction requirement that has been made final. Such petitions are decided by technology center directors, as opposed to the Office of Petitions or some other centralized USPTO authority. However, such petitions may not be worth the effort and cost in attorney fees–unless, for instance, the applicant faces a need for multiple divisional applications with a large total cost. Importantly, such a petition against an election requirement may be deferred until after final action on or allowance of claims to the invention elected, but must be filed no later than an appeal.

In order to preserve the ability to file a petition against an election requirement, it is necessary to traverse the election requirement in the initial response. Failing to traverse a restriction waives the opportunity to later file a petition against the election/restriction requirement.

Rejoinder

Unelected, withdrawn claims can potentially be rejoined upon the allowance of an elected claim. Claims that depend from or otherwise require all the limitations of an allowable claim are eligible for rejoinder. If a generic claim is allowed, then the election requirement effectively disappears and all claims are rejoined by default. Rejoinder is also possible when there is a “linking claim”. Rejoinder practice means that unelected claims might still have a chance to be included in a granted patent despite a prior restriction.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Contact Austen

Introduction

Patent examiners may issue a restriction requirement against a pending patent application. Restriction is permitted under U.S. patent law if two or more independent and distinct inventions are claimed in one patent application. Knowing how to respond to a restriction requirement, and what types of responses are possible, first requires understanding what they are. There are some strategic and practical considerations that make some types of responses more worthwhile than others. What makes the most sense will depend on the particular claims involved, the basis of the restriction, and the application’s patenting strategy. Experienced U.S. patent attorneys tend to have a sense or intuition about what sorts of restriction requirements are proper and which sorts of responses are worthwhile in any given case.

Restriction practice centers around how much work the USPTO has to do to examine a given application. Applicants are sometimes frustrated by restriction requirements that have the appearance of an examiner trying to avoid work or to game the “count” system that is used internally by the USPTO to track examiner productivity, by forcing the applicant to file a divisional application. At times, the rationales given for restrictions can seem unconvincing or circular. On the other hand, applicants seeking to avoid the official fees normally associated with filing separate patent applications for independent and distinct inventions that necessitate separate examination are rightfully subject to restriction requirements.

The Basics of a Restriction Requirement

A conventional restriction requirement means the examiner believes there are multiple independent or distinct inventions being claimed. A restriction requirement will identify different inventions by groups of claims. The examiner is insisting that the applicant pick one claimed invention, by group, to be substantively examined for patentability. That is called making an election.

Every requirement to restrict has two aspects: (A) the reasons why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction was not required.

Claims are “independent” if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect. This type of restriction is straightforward. It does not come up that often.

Restrictions between related but “distinct” inventions are more common. These restrictions are closely tied to prohibitions against double patenting. The precise requirements for a proper distinctness restriction will depend on the types of claims involved. A lower standard applies to restrict out inventions in different statutory categories—generally referring to the difference between apparatus and method/process claims. However, for applications with so-called combination and subcombination claims (e.g., claims to an overall device and to a subassembly usable in it), or with claims to related products or related processes (i.e., claims in the same statutory category), a higher standard is applied. Further, even when claims are distinct, the examiner must also show that examining those claims together would pose a serious burden. This refers to the burden to search for prior art and evaluate the claimed invention against the search results.

Where the claims of an application define the same essential characteristics of a single disclosed embodiment of an invention, restriction between them should never be required. This is because the claims are not directed to distinct inventions. Rather, they are simply different definitions of the same disclosed subject matter, merely varying in breadth or scope of definition. Many if not most patent applications do disclose multiple embodiments, which can raise questions about whether particular claims are directed to the same or different embodiments.

Examiners have considerable discretion about issuing restriction requirements. Even when a restriction requirement could be made, an examiner is not affirmatively required to do so. There is considerable variation in how restriction practice is utilized by different examiners, and also between different technology centers and group art units at the USPTO.

Following a restriction requirement, the applicant is required to elect one group of claim(s) for examination. Unelected (or nonelected) claims will be withdrawn and will not be substantively examined. Importantly, an applicant will generally be prohibited from later adding claims to an invention independent or distinct from the elected claims. There is generally no opportunity to change your election later on. Although “rejoinder” may permit previously unelected claims to be allowed if they depend from or otherwise require all the limitations of an allowable claim. Rejoinder is discussed further below.

Unelected claims can remain in an application, denoted as “withdrawn”. Examiners essentially ignore withdrawn claims. It is possible to amend withdrawn claims if desired. However, withdrawn claims must either be rejoined or canceled when an application is in condition for allowance. If the elected claims are patentable, it is common for patent examiners to call counsel of record to request approval of an examiner’s amendment to cancel withdrawn claims, in order to permit a notice of allowance to be sent. If restriction was not traversed, examiners can also unilaterally cancel withdrawn claims at allowance by way of an examiner’s amendment.

Election of species requirements are related to but distinct from basic restriction requirements among groups of claims. Considerations for election requirements are discussed elsewhere. If present, they require a separate and distinct response by the applicant in addition to a responsive election of a group of claims.

PCT National Phase Entry Applications

Regular restriction practice does not apply to PCT national phase entry applications. Instead, a unity of invention standard governs, which requires having a common or corresponding special technical feature that defines a contribution over the prior art. However, U.S. examiners can still issue requirements to elect a particular invention in national phase applications and withdraw unelected claims and the procedures are similar. Applicants must still make elections and rejoinder of withdrawn claims is still possible. This means that the ultimate effects are similar though the terminology differs somewhat. If anything, there is slightly greater leeway for applicants to amend the claims to keep them together under the unity of invention standard.

If a U.S. examiner applies conventional restriction practice requirements to PCT national phase entry applications, that is a procedural error that should be called to the examiner’s attention. That sort of mistake does happen from time to time.

However, it is important to note that prior indications by the international search authority or international preliminary examining authority in the international phase of a PCT application are not binding in the national phase. That means that even if a prior PCT written opinion indicated that claims posses unity of invention, the U.S. examiner could disagree and still issue a unity of invention restriction in the national phase.

Requirements for Replying to a Restriction Requirement

Patent applicants are required to elect a claim group for examination in reply to a restriction requirement. A reply (or response) is considered incomplete if no election is made.

An election can be either “with traverse” or “without traverse”. “Traverse” means that the applicant is arguing that the restriction requirement is incorrect or improper and should be reconsidered and withdrawn in whole or part. An election of claims made with traverse is called a provisional election. Traversing a restriction requires actually making an argument about why the restriction requirement is wrong. Simply saying “with traverse” without making a substantive argument will be treated as an election without traverse.

Once restriction is required, a nonelected claim is only “withdrawn” once the examiner withdraws it from consideration. When initially responding to a restriction requirement, the examiner has not yet withdrawn any claims (and has not considered any traversal arguments). So when reproducing the claims in a restriction reply, such as to make claim amendments, the “withdrawn” identifier should not yet be used. But in any subsequent amendments, following the examiner’s indication that claims are withdrawn in an office action, the withdrawn claims withdrawn must be indicated as “withdrawn”.

Strategic Considerations for Restriction Responses

There are a few strategic considerations the go into deciding how to reply to a restriction requirement. Consider the following, for example:

1. What is the most commercially important aspect of the invention, and which group of claim(s) best covers that aspect? Many times this is the most important consideration.
2. How many claims are in each group (i.e., which group contains more claims)? Sometimes electing a group with more or the most claims might provide better value, in the sense of having a larger number of existing claims examined. Although the elected group of claims could potentially be expanded by adding new claims and/or amending existing claims.
3. Is the restriction between apparatus and method/process claims? Elections in this situation raise special considerations that sometimes make election of apparatus claims more desirable. If the apparatus claims are elected, rejoinder of the unelected claims to a method of making and/or using the product might be later rejoined and granted. However, if the method/process claims are elected, then rejoinder of the apparatus claims is not permitted.
4. Might claims be amended? One or more independent claims might be amended to recite a common essential inventive feature as part of a traversal argument to try to make the restriction moot. Alternatively, or additionally, new claims might be added, such as by canceling unelected claims and adding new dependent claims to the elected group (canceling unelected claims may avoid official extra claim fees in this scenario). Unelected, withdrawn claims can also potentially be amended later, to try to facilitate rejoinder. However, claim amendments might have prosecution history estoppel implications and claim amendments cannot have the effect of contradicting a prior election.
5. Are you willing to file one or more divisional application(s) to pursue unelected claims? A restriction requirement is an indication that filing unelected claims in a new divisional application will prohibit a double patenting rejection in the later-filed divisional. However, whether or not the applicant is willing to incur further expense associated with a divisional filing (or perhaps multiple divisionals) may influence which claims are elected in response to the restriction. It is possible to defer a divisional filing decision so long as the current application remains pending. This may allow an opportunity for claim rejoinder to be considered. Ensure that there is a clear demarcation between restricted claims to preserve divisional filing safe harbor protections against double patenting, particularly if an election of species is involved. Keep in mind both short-term (e.g., costs to traverse and/or petition a restriction) and long-term costs (e.g., divisional filing and maintenance fees) associated with each option.
6. Which group(s) of claims have the best chance of patentability? This may not be known. But, depending on the scope of the prior art or potential patent-eligibility issues, certain groups of claims might face easier or more difficult examinations. If the restriction requirement cites prior art as justification for restriction, that cited art may inform how to make a claim election. If the restriction alludes to prior art without specifically citing any references, it may be possible to call the examiner to obtain further information about the particular prior art that the examiner has in mind.
7. Did you intend different claims to cover different inventions, or simply want different claims to have distinct scope? In some situations, the claims may have been originally drafted to purposefully have significantly different scope. In that case, traversing the restriction might be contrary to an existing patenting strategy.
8. Is it important to obtain a patent very quickly, or not? Certain elections or traversals of restriction may make examination take longer, such as if they result in an application being reassigned to a different examiner in a different group art unit. However, the effect on the speed of examination may be speculative at the time of the claim election.
9. Has the examiner made a procedural error or omission in the restriction? For instance, the MPEP says, “Examiners must provide reasons and/or examples to support conclusions . . . .” As another example, an examiner might list nonexistent or inapplicable search classifications. Moreover, examiners may state grounds for restriction that are contrary to statutory, regulatory, or MPEP provisions. Examiners might apply domestic restriction practice to a PCT national phase entry application where unity of invention instead applies, for example.

Sometimes it is not worthwhile to challenge a questionable restriction by traversing it. Doing so requires effort. It may be more expedient and cost-effective to pursue other options, such as by amending claims and/or by cancelling claims and filing them in a new divisional application. Examiners often maintain rejections regardless of any traversal arguments, and will simply adjust the stated rationale slightly. Patent attorneys sometimes consider traversing a restriction to be a waste of time. Though if an examiner has made a substantial mistake by overlooking or misstating claim language, for instance, traversal may be worthwhile. Also, traversal is necessary to preserve the right to later petition against the restriction.

Design patent applications with multiple claimed embodiments also present unique questions with regard to the effect of an election on the doctrine of equivalents, because the concepts of literal infringement and equivalents infringement are intertwined for design patents.

An experienced patent attorney can help an applicant assess possible restriction response strategies for any given case.

Petitions Against Restriction Requirements

It is possible to file a petition against a restriction that has been made final. Such petitions are decided by technology center directors, as opposed to the Office of Petitions or some other centralized USPTO authority. However, such petitions may not be worth the effort and cost in attorney fees—unless, for instance, the applicant faces a need for multiple divisionals with a large total cost. Importantly, such a petition against a restriction may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than an appeal.

In order to preserve the ability to file a petition against a restriction, it is necessary to traverse the restriction in the initial response. Failing to traverse a restriction waives the opportunity to later file a petition against that restriction.

Rejoinder

Unelected, withdrawn claims can potentially be rejoined upon the allowance of an elected claim. Claims that depend from or otherwise require all the limitations of an allowable claim are eligible for rejoinder. Rejoinder is also possible when there is a “linking claim”. Rejoinder practice means that unelected claims might still have a chance to be included in a granted patent despite a prior restriction.

What is unintuitive about rejoinder practice, however, is that when a restriction is between product/apparatus claims and claims to a method of making and/or using the product, rejoinder is only possible if the product or apparatus claims are elected. Election of the method claims will not allow later rejoinder of the unelected product/apparatus claims. This means withdrawn method claims might be keep in the application for possible later rejoinder but, when method claims are elected, withdrawn apparatus claims might instead be cancelled at an appropriate time. This is a somewhat arbitrary aspect of USPTO procedure, but nonetheless needs to be considered at the time an election is made.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Contact Austen

The Basics of a Restriction Requirement

Patent examiners may issue a restriction requirement against a pending patent application. If two or more independent and distinct inventions are claimed in one patent application, the USPTO may require the application to be restricted to one of the inventions. A conventional restriction requirement means the examiner believes there are multiple independent or distinct inventions being claimed. The examiner will identify the different inventions by groups of claims. The applicant must then pick one claimed invention to be substantively examined for patentability. That is called making an election.

Every requirement to restrict has two aspects: (A) the reasons why each invention as claimed is either independent or distinct from the other(s); and (B) the reasons why there would be a serious burden on the examiner if restriction was not required. The second aspect refers to the burden to search for prior art and evaluate the claimed invention against the search results.

A restriction requirement is not considered to be an office action on the merits. That is, it is not considered to be a substantive determination as to patentability. Restriction requirements normally arise before a first office action on the merits. However, it is also possible for restriction to arise after a first action on the merits, such as where an applicant later adds or amends claims to recite an independent or distinct invention from what was originally presented.

Examiners will frequently call the applicant’s counsel of record by phone to present a restriction requirement. This use of oral elections is meant to speed up examination and avoid the need to send written documents back-and-forth.

Election of species requirements are related to but distinct from restriction requirements among claims. Election requirements for disclosed species are discussed in detail elsewhere.

Determining Whether Claims Are Independent or Distinct

For purposes of restriction practice, claims are “independent” if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect. This type of restriction is straightforward. It does not come up that often. An example of independent inventions is an application that discloses and claims an invention for a dental prosthetic device and another, unrelated invention for a chemical compound for polishing shoes.

Restrictions between related but “distinct” inventions are more common. These restrictions are closely tied to prohibitions against double patenting. The precise requirements for a proper distinctness restriction will depend on the types of claims involved. A lower standard applies to restrict out inventions in different statutory categories—generally referring to the difference between apparatus and method/process claims. However, for applications with so-called combination and subcombination claims (e.g., claims to an overall device and to a subassembly usable in it), or with claims to related products or related processes (i.e., claims in the same statutory category), a higher standard is applied. Further, even when claims are distinct, the examiner must also show that examining those claims together would pose a serious burden.

For example, a device disclosed in a patent application might have a unique mechanical actuator, a special chemical composition for a coating on the actuator, and a unique electronic controller. If each of those aspects is set forth in separate and distinct independent claims, it is understandable that a single examiner may not have expertise in mechanical, chemical, and electrical technologies to examiner each of them together. That is true even when each of the distinct invention is related in the sense of being usable together in the same device. But claiming distinct inventions in a way that means they could be used separately, without the use of the other inventions, presents the possibility of a restriction.

After a Restriction Requirement Is Issued

Following a restriction requirement, the applicant is required to elect one group of claim(s) for examination. Unelected (or nonelected) claims will be withdrawn and will not be substantively examined. Importantly, an applicant will generally be prohibited from later adding claims to an invention independent or distinct from the elected claims. There is generally no opportunity to change your election later on. Although “rejoinder” may permit previously unelected claims to be allowed if they depend from or otherwise require all the limitations of an allowable claim.

Restriction requirements can be important for later determinations. Going forward, the examiner is bound by the restriction. For instance, an examiner cannot later claim that certain claim limitations have no patentable significance when a prior restriction requirement insisted otherwise. A restriction requirement also means that double patenting is inapplicable. This means an applicant can file a new divisional application to unelected claims without receiving a double patenting rejection, avoiding the need for a terminal disclaimer. This might result in patent term adjustment that extends the expiration of the divisional patent beyond that of the earlier (parent) application.

Considerations for how to respond to a restriction of claims in a patent application are discussed here.

Why Are Restriction Requirements Made?

Because applicants can prepare patent applications any way they choose, it is possible a given application could include multiple inventions. The existence of U.S. restriction practice is the other side of the coin to the availability of divisional applications. A divisional application allows an applicant to file a further patent application to another disclosed invention. Restriction practice is meant to prevent applicants from imposing unreasonable examination demands on patent examiners. Although if an examiner chooses not to restrict claims in a given application that has no effect on validity of a resultant patent.

Examiners have considerable discretion about issuing restriction requirements. There is considerable variation in how restriction practice is utilized by different examiners, and also between different art units or technology centers at the USPTO.

Applicants are sometimes frustrated by restriction requirements. They can have the appearance of an examiner trying to avoid work or to game the “count” system, which the USPTO uses internally to track examiner productivity, by forcing the applicant to file a divisional application. At times, rationales given for restrictions can seem unconvincing or circular. Also, while the USPTO’s guidance (see, e.g., MPEP 801.02) states that restriction is permitted when there are either independent or distinct inventions claimed, some argue that the patent statutes (and corresponding regulations) should be interpreted to permit restriction only among claimed inventions that are both independent and distinct. Others complain that the USPTO has overstepped its authority by allowing an alleged serious “examination burden” to justify restriction without showing a serious “search burden”. On the other hand, applicants seeking to avoid official fees normally associated with filing separate patent applications for independent and distinct inventions are rightfully subject to restriction requirements.

PCT National Phase Entry Applications

Regular restriction practice does not apply to PCT national phase entry applications. Instead, a unity of invention standard governs, which requires having a common or corresponding special technical feature that defines a contribution over the prior art. However, U.S. examiners can still issue requirements to elect a particular invention in national phase applications and withdraw unelected claims and the procedures are similar. Applicants must still make elections and rejoinder of withdrawn claims is still possible. This means that the ultimate effects are similar though the terminology differs somewhat. If anything, there is slightly greater leeway for applicants to amend the claims to keep them together under the unity of invention standard.

It is important to note that the USPTO can make an independent determination of unity of invention. Prior indications by the international search authority or international preliminary examining authority in the international phase of a PCT application are not binding in the national phase. That means that even if a prior PCT written opinion indicated that claims posses unity of invention, the U.S. examiner could disagree and still issue a unity of invention restriction in the national phase.

Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

Contact Austen