Restriction Requirement Practice
Prepared by
Woodard Emhardt
1
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
2
Independent
• 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
3
Distinct
A)Inventions are related, if they are disclosed as
connected in design; operation; or effect
B)Inventions are distinct, if as claimed, they are
not connected in:
• design;
• operation; and
• effect and
C) At least one of the inventions is patentable over
the other
4
Restrictions
•
2 Types:
1) Separate – independent/distinct invention
or
2) Too many species to be examined with
regard to single genus claim
5
General Criteria for Restriction
• The inventions are independent and
distinct
and
• Searching and examining more than 1
invention would place a serious burden on
the examiner
6
Specific Criteria For Restrictions I
• “Claimed inventions are in different
statutory categories”; and
• One-way patentability test
• e.g. combinations and sub-combinations
7
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
8
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
9
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
10
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
11
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
12
Why Traverse?
1) May succeed, in which case you reduce
filing fees and delay associated with filing
divisionals
2) Preserve right to petition
3) Client expectations
13
Traversing
• 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
14
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
15
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
16
Traversing
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.
17
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
18
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.”
19
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.”
20
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
21
Consonance
• In order to secure the benefit of 35 U.S.C.
§121, claims in a divisional application
must be consonant with the restriction
requirement
22
Consonance
• 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)
23
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
24
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)
25
Linking Claims and Restrictions
A)
B)
C)
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
26
Traversing Linking Claims
A)
B)
C)
Species elected and only linking claim is
traversed
No linking claim is allowed
No basis for petition to withdraw
restriction between elected and nonelected species
Note: When traversing provide basis for
similarities between elected and non-elected
claims based on criteria other than just the
linking claim
27
Rejoinder
• Examining non-elected claims or
species after elected claims or
species have been found in
condition for allowance
28
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
29
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
30
Rejoinder after Elected Claims Allowed
•
When any of the following are allowable:
A) Generic claim;
B) Linking claim;
C) Sub-combination claim
any previously withdrawn claims including
all of the limitations of these allowable
claims are eligible for rejoinder
31
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
32
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
33
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
34
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
35
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
36
When Restriction is Improper I
• If claims define the same essential
characteristics of a single disclosed embodiment
of an invention
• If claims are different definitions of the same
disclosed subject matter (different embodiments
of invention)
• If claims vary only in breadth, or scope of
definition
37
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
38
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
39
Species - Restrictionable
• There is no relationship between species
• There is a patentable difference between
species
Result
• 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
40
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
41
Examples of Restrictions 1
•
Combination and sub-combination
A) Combination does not require the
particulars of the sub-combination
B) Sub-combination has separate utility either
alone or in a materially different
combination
•
•
2-way test, and
Burden on Examiner
42
Examples of Restrictions 2
2 or More Related Processes
A)
B)
C)
•
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
43
Examples of Restrictions 3
2 or More Related Processes
A)
B)
C)
•
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
44
Examples of Restrictions 4
Process & Apparatus
A) Process as claimed can be practiced by
hand or by 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
45
Examples of Restrictions 5
Process 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 need not be documented
46
Examples of Restrictions 6
Generic Claims
•
Definition
1) Each species claim must require all of the
limitations of the generic claims
2) The generic claim should require no material
element that is not required by the allowable
species claims
47