If an application contains multiple inventions within the application as determined by looking at the claims which are to more than one independent and distinct invention, the United States Patent and Trademark Office (USPTO) may impose a restriction requirement. The applicant must then elect one of the inventions for prosecution in the original application but may file divisional applications claiming the non-elected inventions.
The Independent and Distinct Standard
The Commissioner of Patents and Trademarks may require restriction if two or more independent and distinct inventions are claimed in one application. Current USPTO policy precludes restriction, even in the case of multiple species, unless the two groups of claims are patentable over each other, which means that neither is obvious in the light of the other.
“Independent” is defined by the USPTO as meaning not dependent or that there is no disclosed relationship between the two or more subjects disclosed.
”Distinct” is defined by the USPTO as meaning related or dependent, but capable of separate manufacture, use, or sale as claimed and patentable over each other.
Restriction is appropriate where two joined inventions are either independent or distinct.
The USPTO may require restriction where two or more inventions are related or dependent but nevertheless ”distinct.” Inventions are distinct if they are both capable of separate manufacture, use, or sale as claimed and patentable over each other. Assuming two joined inventions are distinct in this sense, then restriction will be required if, but only if, one or more of the following ”reasons” are present:
separate status in the art
a different field of search
Procedure for Division and Election
An examiner enters a restriction requirement when he or she determines that the application includes claims to independent and distinct inventions. The applicant must then indicate a provisional election and may traverse the requirement by requesting reconsideration. In the next action, the examiner may make the requirement final and will take action on the elected claims and any linking or generic claims.
Election of Restricted Invention
A restriction requirement calls upon the applicant to elect that invention to which his or her claims are to be restricted. Election is thus the designation of the particular one of two or more disclosed inventions that will be prosecuted in the application.
Traverse and Reconsideration
If the applicant wishes to contest the restriction requirement, he or she must traverse the requirement and request reconsideration as well as stating a provisional election. The applicant must give reasons why the requirement is in error. After traverse, the examiner reconsiders the requirement and may repeat and make it final. In making the requirement final, the examiner also acts on the merits of the elected invention.
Petition and Review
If the examiner makes a traversed requirement final, the applicant may petition the Commissioner to review the requirement. The applicant may file the petition after the restriction requirement is made final and must file it not later than an appeal on the merits of final rejection. A restriction requirement is subject to judicial review through mandamus and the Administrative Procedure Act.
Withdrawal of Claims for Non-elected Inventions or Species
After a restriction requirement becomes final, the examiner will withdraw from further consideration all claims for non-elected inventions or species. If claims to elected inventions are allowed, the claims to non-elected inventions must be cancelled. The applicant may traverse the examiner’s holding that a given claim is not for elected subject matter. Such a holding is an appealable rejection. The applicant may file a divisional application claiming the non-elected inventions or species.