If an application contains claims 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 invention for prosecution in the original application and may file divisional applications claiming the nonelected inventions. Restriction is imposed to prevent subversion of the statutory fee structure for the application for and issuance of patents and to preserve the integrity of the system of examination and classification within the USPTO.
Two or More Independent and Distinct Inventions Claimed in One Application
The Commissioner of Patents and Trademarks requires restriction if two or more independent and distinct inventions are claimed in one application. This is the independent and distinct standard. USPTO policy prevents restriction unless the two groups of claims are patentable over each other, which means that neither is obvious in the light of the other.
The USPTO defines ”independent” as meaning ”not dependent,” which in turn means ”there is no disclosed relationship between the two or more subjects disclosed.” The USPTO defines ”distinct” as related or dependent but ”capable of separate manufacture, use or sale as claimed” and ”patentable (novel and unobvious) over each other.” The USPTO contends that restriction is appropriate where two joined inventions are either independent or distinct. The Commissioner of Patents and Trademarks must require restriction if two or more independent and distinct inventions are claimed in one application.
The USPTO may require restriction where two or more inventions are related or dependent but nevertheless ”distinct.” Inventions are distinct if they are both (1) capable of separate manufacture, use, or sale as claimed and (2) patentable over each other. Assuming two joined inventions are distinct in this sense, then restriction will in fact be required if but only if one or more of the following reasons are present: (1) separate classification, (2) separate status in the art, and (3) different field of search.
Examiner Enters Restriction Requirement
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 oppose the requirement by requesting reconsideration. In the next action, the examiner may make the requirement final and will take action on the elected claims.
One restriction requirement does not preclude a second one at a later stage of the prosecution. Additionally, a restriction requirement may be made, withdrawn, and then required again if the circumstances warrant. In requiring restriction, the examiner must indicate clearly how the application is to be restricted as well as the reasons for restriction.
Applicant Must Elect an Invention
A restriction requirement calls on the applicant to elect an invention to which the claims will be restricted. Election is thus the designation of the particular one of two or more disclosed inventions that will be prosecuted in the application. In responding to such a requirement, the applicant must state a provisional election even though he or she contests the propriety of the restriction requirement. This enables the examiner to examine claims to the elected invention immediately as well as to reconsider the requirement.
Provisional Election Binding on Applicant
The provisional election binds the applicant throughout subsequent prosecution. The general policy of the USPTO is not to permit the applicant to shift to claiming another invention after an election is once made and action given on the elected subject matter. Shifting would allow the applicant to obtain two examinations for the price of one. However, the USPTO may waive election and permit the applicant to shift.
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 state 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. After a restriction requirement becomes final, the examiner will withdraw from further consideration all claims for nonelected inventions or species. If claims to elected inventions are allowed, the claims to nonelected 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.