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Restriction Requirement Practice. Prepared by Woodard Emhardt. Restriction Practice. 35 USC 121 Divisional Applications “If 2 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…”

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Restriction Requirement Practice

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restriction requirement practice

Restriction Requirement Practice

Prepared by

Woodard Emhardt

restriction practice
Restriction Practice

35 USC 121 Divisional Applications

  • “If 2 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…”
  • And means or
  • MPEP Chapter 800

i.e. unrelated

  • The 2 claimed inventions are unconnected in design, operation and effect
  • e.g. A process and apparatus, wherein the apparatus is incapable of being used in the process




  • Inventions are related, if they are disclosed as connected in design; operation; or effect
  • Inventions are distinct, if as claimed, they are not connected in:
        • design;
        • operation; and
        • effect and
  • At least one of the inventions is patentable over the other
  • 2 Types:
    • Separate – independent/distinct invention or
    • Too many species to be examined with regard to single genus claim
general criteria for restriction
General Criteria for Restriction
  • The inventions are independent and distinct


  • Searching and examining more than 1 invention would place a serious burden on the examiner
specific criteria for restrictions i
Specific Criteria For Restrictions I
  • “Claimed inventions are in different statutory categories”; and
  • One-way patentability test
  • e.g. combinations and sub-combinations
specific criteria for restrictions ii
Specific Criteria for Restrictions II

Claimed inventions are:

  • Related and in same statutory class, and
  • They met a 2-way test
  • i.e. – the 1st invention would not infringe the second invention; and

– the 2nd invention would not infringe the

1st invention

types of claims prone to restriction
Types of Claims Prone to Restriction
  • Claims to combinations and sub-combinations
  • Intermediates and final products
  • Genus – species claims
  • Claims to Products, Processes and Products made by an Apparatus or any combination thereof
restriction of claims added after office action on the merits
Restriction of Claims Added after Office Action on the Merits
  • Restriction Requirements generally issued before 1st Office Action can be issued at any time during prosecution
  • Newly added claims encompass an independent or distinct invention
  • Restriction of new invention is permissible
proper notice of restriction and response
Proper Notice of Restriction and Response
  • Examiner must give concise reasons for restriction requirement
  • Examiner must set forth species that can be elected (37 CFR 1.143)
  • Applicant given 1 month to respond to requirement
  • Response must include (an election of) claims and/or list of species and claims to which species applies
  • Applicant must traverse to preserve right to appeal restriction
  • Failure to traverse = compliance
telephone restriction practice
Telephone Restriction Practice
  • Examiner instructed to notify applicant of restriction by telephone before mailing restrictions
  • Applicant may elect claims/species over the telephone – usually given 3 days to respond by telephone
  • Pros: Faster than waiting for mailing; quicker allowance
  • Cons: Examiners prefer mailing
why traverse
Why Traverse?
  • May succeed, in which case you reduce filing fees and delay associated with filing divisionals
  • Preserve right to petition
  • Client expectations
  • Be careful not to described the invention beyond what is already described in its claims and specification
  • Better to lose the argument about a restriction requirement than to undermine the value of the claims
traversing restriction
Traversing Restriction
  • Right to petition (37 CFR 1.144)
  • Applicant, for reason, may petition the Director to review a restriction requirement
  • Petition must be filed before filing any appeal in the case
  • Election without proper traverse is considered compliance
estoppel issues
Estoppel Issues
  • Successfully arguing that restricted claims are unpatentable over one another, precludes an applicant from later arguing that each different invention is separately patentable over the prior art

Useful form paragraph from Chuck Schmal:

It is respectfully submitted that claims could be examined together without imposing an undue burden.  As stated in § 803 of the Manual of Patent Examining Procedure, “[i]f the search and examination of an entire application can be made without serious burden, the Examiner must examine it on the merits even though it includes claims to distinct or independent inventions.”  Under this standard, it is believed the search of groups jointly would not impose a serious burden.

timing of petition to withdraw restriction requirement
Timing of Petition to Withdraw Restriction Requirement
  • 37 C.F.R. Petition may be deferred until after final action or allowance of claims …, but must be filed no latter than an Appeal
  • Petitions under 37 C.F.R. 1.129(b)(2) decided by the Technology Center Director
35 u s c 121
35 U.S.C. §121
  • … “A patent issuing on an application with respect to what a requirement for restriction under this section has been made, or an application filed as a result of such a requirement, shall not be used as a reference entered into the PTO or in the counts against a divisional application or against the original application.”
35 u s c 121 continued
35 U.S.C. §121 continued
  • “The validity of a patent shall not be questioned for failure of the Director to reference the application to be restricted to one invention.”
no carry over
No Carry Over
  • An original restriction requirement in an earlier filed application document does not carry over to claims of a continuation application, in which the examiner does not reinstate or refer to the restriction requirement in the parent application
  • Caution: possible double patenting rejection or loss of right during litigation due to double patenting
  • In order to secure the benefit of 35 U.S.C. §121, claims in a divisional application must be consonant with the restriction requirement
  • If claims in a divisional application are not consonant with the restriction requirement…may result in loss of benefit of 121, leaving its claims in the divisional subject to a double patenting attack
    • Gerber Garment Tech v. Lectra Sys. Inc., 916 F.2d 683, 16 USPQ 2d 1436 (Fed Cir. 1990)
tips for avoiding restrictions
Tips for Avoiding Restrictions
  • Limit claims to what is enforceable, and valuable
    • e.g. Do not claim process for making a novel product, especially if the product is more valuable than process
  • Limit the species in genus claim to species which that are truly of commercial value
  • Include genus claim, liable to deferrable species
  • Include linking claims
linking claims
Linking Claims
  • Allowable linking claims prevent restriction between inventions
  • e.g.
    • Genus claims linking species claims:
    • A claim to the necessary process of making a product linking proper process and product claims
    • A claim to a “means” for practicing a process linking proper apparatus and process claims; and
    • A claim to the product linking a process of making and a use (process of using)
linking claims and restrictions
Linking Claims and Restrictions
  • Genus claims linking species
  • Sub-combination claim linking plural combinations
  • Restriction permissible when application contains both:
      • linking claims, and
      • distinct inventions
  • All linking chains are examined with any elected claims
  • If any linking claim is allowable
  • Restriction must be withdrawn
    • unexamined linked claims must be rejoined
    • applicant must re-present unexamined claims for further consideration is they were cancelled during prosecution
  • Restriction becomes final when first action on the merits is issued
traversing linking claims
Traversing Linking Claims
  • Species elected and only linking claim is traversed
  • No linking claim is allowed
  • No basis for petition to withdraw restriction between elected and non-elected species

Note: When traversing provide basis for similarities between elected and non-elected claims based on criteria otherthan just the linkingclaim



Examining non-elected claims or species after elected claims or species have been found in condition for allowance

rejoinder of non elected claims
Rejoinder of Non-Elected Claims
  • Withdrawal of a restriction requirement after elected claims/species examined
    • After claims drawn to elected invention are in condition for allowance
    • Non-elected claims require all of the limitations of the allowed claims
    • Claims to non-elected invention must be amended to include all limitations of allowed elected claims

e.g. Product and Process of Making or Using

rejoinder of process claims requiring an allowable product
Rejoinder of Process Claims Requiring an Allowable Product
  • If elected product claims found allowable
  • Unelected process claims that include all of the limitations of the allowable product claims may be considered for rejoinder
rejoinder after elected claims allowed
Rejoinder after Elected Claims Allowed
  • When any of the following are allowable:
      • Generic claim;
      • Linking claim;
      • Sub-combination claim

any previously withdrawn claims including all of the limitations of these allowable claims are eligible for rejoinder

rejoinder continued
Rejoinder Continued
  • Product inventions or process inventions
    • If all elected product or process claims found allowable, then
      • Any non-elected claims that includes all of the limitations of the allowed claims are eligible for rejoinder
  • Claims that do not require all of the limitations of the allowed elected claims remain withdrawn
  • If restriction requirement is withdrawn claims in related applications which include all of the limitations of the elected allowed claims are subject to double patenting rejections
rejoinder continued33
Rejoinder Continued
  • Consequences for continuation and divisional applications
  • Once a restriction is withdrawn claims become subject to obviousness type double patenting rejections over claims of patents issuing from related applications
application nationalized in the us from a pct
Application Nationalized in the US from a PCT
  • Applications under 35 U.S.C. 365
  • Unity of Invention PCT Regulations Rule 13 Unity of Invention
  • Rule 13.1 one invention or group linked by a single inventive concept
  • Rule 13.2 there must be a technical relationship among the inventions
applications filed under pct
Applications Filed under PCT
  • Filed pursuant to 35 U.S.C. 365
  • PCT Rule 68 – lack of unity of invention
  • Rule 68.1 – International Preliminary Examining Authority (IPEA) may choose to examine entire application despite finding lack of unity
  • Must notify applicant if IPEA finds lack of unity
pct continued
PCT Continued
  • Rule 68.2 – IPEA may invite applicant to restrict claims or pay additional exam fees
  • Applicant may pay fee under protest
  • Board reviews protest and may impose a protest fee

When Restriction is Improper I

  • If claims define the same essential characteristics of a single disclosed embodiment of an invention
  • If claims are differentdefinitions of the same disclosed subject matter (different embodiments of invention)
  • If claims vary only in breadth, or scope of definition
when restriction is improper ii
When Restriction is Improper II
  • If 2 or more related claims are not distinct from one another, restriction is never proper
  • 37 CFR 1.141:

“[If] an allowable generic claim links a reasonable number of included species.”

  • Note: If the number of species listed in a genus is excessive, the examiner may require an election
species claims
Species Claims
  • Species always refer to different embodiments of the invention
  • If a generic claim is allowable, generally all claims drawn to species are allowable provided that the species claims require all of the limitations of the generic claim
species restrictionable
Species - Restrictionable
  • There is no relationship between species
  • There is a patentable difference between species


  • Applicant must elect a species to prosecute, even if applicant traverses
  • If claimed species are clearly unpatentable (obvious) over one another
  • The applicant should not be forced to elect a species
only generic claims
Only Generic Claims
  • Restriction improper unless generic claims includes so many species that it creates an undue search and examination burden to search and examine
  • If applicant later prosecutes specific distinct species claims, applicant may be required to elect species
examples of restrictions 1
Examples of Restrictions 1
  • Combination and sub-combination
    • Combination does not require the particulars of the sub-combination
    • Sub-combination has separate utility either alone or in a materially different combination
  • 2-way test, and
  • Burden on Examiner
examples of restrictions 2 2 or more related processes
Examples of Restrictions 22 or More Related Processes
  • 2-way test for distinctiveness; and
  • Separate classification
  • Undue burden on Examiner
  • Burden on the Examiner
    • e.g. Intermediate and final products are materially exclusive
    • Not obvious varieties of one another
    • Intermediate useful for making products other than the claimed final product
examples of restrictions 3 2 or more related processes
Examples of Restrictions 32 or More Related Processes
  • 2-way test for distinctiveness; and
  • Separate classification
  • Undue burden on Examiner
  • Burden on the Examiner to show that
    • e.g. Intermediate and final products are materially exclusive
    • Not obvious varieties of one another
    • Intermediate useful for making products other than the claimed final product
examples of restrictions 4 process apparatus
Examples of Restrictions 4Process & Apparatus

A) Process as claimed can be practiced by hand orby only a materially different apparatus; and/or

B) The apparatus as claimed can be used to practice another materially different process

  • Burden: on examiner must supply reasonable examples
examples of restrictions 5 process of making and product made
Examples of Restrictions 5Process of Making and Product Made
  • Restrictionable if both or either:

A) Claimed process is not an obvious process of making the product; and the claimed process can be used to make another materially distinct product; or

B) The claimed product can be made by another materially distinct process.

  • Burden: Allegation of different process and product neednot be documented
examples of restrictions 6 generic claims
Examples of Restrictions 6Generic Claims
  • Definition
    • Each species claim must require all of the limitations of the generic claims
    • The generic claim should require no material element that is not required by the allowable species claims