How to deal with restriction requirements in patent applications

February 5, 2015
Kenneth Horton
InsideCounsel

One of the most frustrating documents to receive from a patent examiner handling your patent application is a restriction requirement, including an election of species requirement. This requirement allows the patent examiner to categorize the patent application as containing multiple inventions and then restrict examination to just a “single” invention. If you are not successful in overcoming this requirement, and the statistics are not in your favor, you are forced to file additional applications for the “other” inventions in the patent application, effectively raising the cost of protecting your invention.

Outlined below are some suggestions for preventing and overcoming restriction requirements.

Pre-restriction

The most common restriction requirement is for the examiner to force you to choose between claims protecting a product and claims protecting a method. In anticipation of such a requirement, prepare the method and product claims so they contain as many similar limitations as possible when drafting the patent application. This technique will reduce the ability for the examiner to say that the method as claimed can be used to make a different product or that the product as claimed can be made by a different method, a threshold that the patent examiner must meet to restrict method and product claims.

Also, to anticipate an election of species requirement, draft one claim as broad as possible so that it can be considered a “generic” claim and also include a “linking” claim in the application. Both of these types of claims provide an argument to group multiple species together for examination, rather than being limited to a single species.

Replying to restriction requirements

When receiving a restriction requirement, take a hard look at the requirement itself and the underlying examiner’s reasoning. Some of the common mistakes made by examiners include:

  • Applying PCT (patent cooperation treaty) rules for restriction requirements to U.S. applications
  • Not accounting for the presence of generic or linking claims
  • Forcing an election among species that are not mutually exclusive to each other
  • Imposing a restriction requirement rather than an election of species requirement (or vice versa)
  • Not providing sufficient reasoning to support the argument that the method as claimed can be used to make a different product or that the product as claimed can be made by a different method

All of these mistakes can be attacked to defeat the restriction requirement. And remember, there is nothing precluding you from amending the claims to defeat the restriction requirement, i.e., adding a generic claim or a linking claim, as well as amending the generic claim to include all of the species. About 90 percent of the time, one of these mistakes exist and can be used as a basis for overcoming the restricting requirement.

But don’t hold your breath too long if you succeed. The patent examiner will likely just maintain the restriction requirement and just change her reasoning and correct the mistake.

Post-restriction

Win or lose, there are certain actions that can be taken to lessen the impact of a restriction requirement. For an election of species requirement, make sure that the generic claim is an independent claim with both the elected specie and the non-elected specie(s) contained within the dependent claims. When the elected specie (i.e., one dependent claim) has been allowed, the examiner will be forced to also examine the non-elected species (i.e., the other dependent claim).

Also remember to take advantage of rejoinder practice. With rejoinders, you can “rejoin” claims for examination after a restriction requirement has forced you to choose between product and method claims. The key is to elect the product claims first. Once you have obtained allowance of the product claims, the process claims may be rejoined provided that the process claims depend from — or include — all the limitations of the allowable product claims. The best method for keeping rejoinder a viable option is to not cancel the method claims; rather, continue to amend the method claims throughout prosecution to mirror the amendments made to the product claims.

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