What Our Company Did
We are a start-up existing on a shoe string budget.
An inventor not associated with our company invented a product. Because our company expected the product would improve our bottom line, we opted to take a license from the inventor to make and sell the product.
Apparently, to save legal fees, the inventor opted to represent himself before the USPTO. Unfortunately, about two years after filing the Patent Application, the inventor received a Restriction Requirement from the USPTO.
What do we do now?
What is a Restriction Requirement?
Title 35 United States Code 121 – Restriction Requirement
35 U.S.C. 121 reads:
“If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.”
35 U.S.C. 121 prevents a tribunal from using the first Application and/or first Patent from which the second Application was divided from being used to reject the claims of the second Application and/or subsequent second Patent.
Restriction Requirement – How The Inventor Can Respond
In the Restriction Requirement, the Examiner will argue something like, “The species are independent or distinct because as disclosed the different species have mutually exclusive characteristics for each identified species. In addition, these species are not obvious variants of each other based on the current record.” Generally, the Examiner will suggest groupings of claims from which the Applicant can select a single group of claims for first examination.
An Applicant has an opportunity to argue against the Restriction Requirement by stating that the species are patentably indistinct. However, this can be a risky strategy. Such an admission can be used to reject the second species of claims as obvious in view of the first species of claims and other prior art. In other words, the claims can be rejected as obvious pursuant to 35 U.S.C. 103.
The Better Strategy When Responding to a Restriction Requirement
When the Examiner argues for a Restriction Requirement, the Applicant can elect an invention for first prosecution.
In most instances, the better strategy for the Applicant is to elect one of the Examiner’s groupings claims for first prosecution. During prosecution, the scope of the claims can be expanded by amendment. Frequently, after the examination of the first grouping of claims, Applicant’s will file a Divisional Application including additional claims related to the invention.
Responding to a Restriction Requirement can be tricky. If you need assistance responding to a Restriction Requirement, please contact Business Patent Law, PLLC.
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