Restriction Requirement for Patents

Restriction Requirement

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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Patent Offices are Different

Not All Patent Offices are the Same

Patent Offices around the world will likely have different rules of practice.  In other words, how you obtain your Patent can require different legal procedures and strategies.

Patent Office Characteristics

  • The United States Patent and Trademark Office (USPTO) allows an Applicant to file an Original Patent Application, a Continuation Application, a Continuation-in-Part Application and/or a Divisional Application.
  • The Canadian Intellectual Property Office (CIPO) allows an Applicant to file an Original Patent Application or Divisional Application.
  • The European Patent Office (EPO) allows an Applicant to file an Original Patent Application or Divisional Application.

Types of Patent Applications

  • A Divisional Application is a Patent Application that is “divided out” from an Original Patent Application.
  • A Continuation Application is a Patent Application that claims priority to a prior pending Patent Application where the new Continuation Application is filed before the prior Pending Patent Application is patented. A Continuation Application is supported by the Specification and Drawings of the prior pending Patent Application.
  • A Continuation-in-Part Application is a Patent Application that claims priority to a prior pending Patent Application where the new Continuation-in-Part Patent Application is filed before the prior Pending Patent Application is patented. A Continuation-in-Part Application includes “new matter” that was in included with the Specification and/or Drawings of the prior pending Patent Application.
  • Divisional Patent Applications, Continuation Patent Application and Continuation-in-Part Patent Applications can be utilized by the owner to extend the scope of the Patent’s limited monopoly.

The Scenario

Our Louisville company filed original Patent Applications for the “gadget” in the USPTO, the CIPO, the EPO and other Patent Offices around the globe. After filing the Patent Applications, our engineering department invented our new and improved “gadget” that was similar to but slightly different than the original “gadget.”  Management decided to file additional Patent Applications claiming the improved “gadget.”

Potential Patent Offices’ Strategies

United States – USPTO

In the United States, your company could file any of the above Patent Applications for the improved “gadget.”

According to 37 C.F.R. 1.53, “a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c) or 386(c).”

European Union – EPO

The only potential option in the EPO is to file a Divisional Patent Application.  However, your improved “gadget” claims would only be allowed by the EPO if you can meet the conditions of EPO Rule 3.1.

EPO Rule 3.1 – Replacement or Removal of Features from a Claim 

“The requirements of Art. 123(2) are only met if the replacement or removal of a feature lies within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing (or the date of priority according to Art. 89, from the whole of the application documents G 3/89, G 11/91 and G 2/10).

Art. 123(2)

If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2):

(i)      the replaced or removed feature was not explained as essential in the originally filed disclosure;

(ii)     the skilled person would directly and unambiguously recognize that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve (in this context special care needs to be taken in cases where the technical problem is reformulated during the proceedings, see H-V, 2.4 and G-VII, 11); and

(iii)    the skilled person would recognize that the replacement or removal requires no modification of one or more features to compensate for the change (it does not in itself alter the invention).”

Thus, in the EPO, it is unlikely than an Applicant can meet the strict conditions of Art. 123(2) for an allowable amendment to the claims of a European Divisional Patent Application.

Need Help With Your Patent Application?

If your company needs assistance with filing Patent Applications in United States and foreign jurisdictions, please contact Business Patent Law, PLLC.

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and you have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.  If you need assistance, we are here to help.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.