A restriction requirement occurs when two or more independent and distinct inventions are claimed in a single patent application. Since patents in the United States are intended to protect a single invention, the United States Patent and Trademark Office (USPTO) may issue a restriction requirement that forces the patent applicant to select just one of the inventions. The USPTO will proceed with whichever invention the applicant chooses for their current patent application. The additional inventions that were not selected may be included in separate divisional patent applications. The divisional patent applications must contain subject matter from the initial application, which is often referred to as the “parent application.”
Once you have finished filling out a patent application, it is then submitted to the USPTO for review. A licensed patent examiner will go over the application and determine whether it will be granted with patent protection. The patent may be rejected for a number of reasons.
In the USPTO’s Manual of Patent Examining Procedure (MPEP), it is stated that “unity of invention” is required in a patent application. Simply put, this means that each patent application must focus on one invention or "a group of inventions so linked as to form a single general inventive concept.” If the examiner determines that the application covers more than one invention, he or she will issue a Restriction Requirement in the form of an Office Action.
After spending plenty of money and effort on filing a patent application, receiving a restriction requirement office action can be disappointing. However, if you know how to respond to these orders correctly, you will save yourself a lot of time and frustration.
First of all, it is important to keep in mind that patent examiners are only human and they can make mistakes when it comes to reviewing a patent application. You may find that the examiner is inappropriately imposing a restriction requirement, or is not providing sufficient reasoning to support the argument that the application covers more than one invention.
Moreover, it is important to keep in mind that receiving a restriction requirement does not mean your inventions are unpatentable. It may simply mean that you will need to file additional divisional patent applications. It should be noted, however, that divisional patent applications need to include subject matter that was initially disclosed in the patent application. In other words, divisional patent applications cannot introduce new information about the invention.
Although receiving a restriction requirement may be upsetting ,it does not mean your patent application journey is over. It is highly advised to work with a skilled intellectual property attorney that will help you both overcome restriction requirements and prevent them from happening in the first place.
