Restriction Requirements

The patent office tends to issue restriction requirements whenever the pending claims within a given application address multiple subject matters. The restrictions follow naturally from the rule providing for a one-to-one correspondence between an invention and a patent. 35 USC § 101.

The USPTO is far stricter about restriction requirements than they used to be. For what it's worth, this occurrence appears to have resulted from the bonus system used at the patent office. Examiners currently get points for each patent application that the examiner "finally disposes". The more points, the larger the bonus. Since applications with lots of claims are harder to examine, it only makes sense that the patent examiners are quick to issue restriction requirements that quickly cut such applications down to size.

It is extremely difficult to successfully challenge a restriction requirement. The restriction is proper as between two claims if it is at all possible to practice the subject matter of either claim without practicing the subject matter of the other. The details of how the patent office goes about issuing restriction requirements, as well as some useful examples, are set forth in MPEP § 800 et seq.

There is only one proper response to a restriction requirement. The applicant must elect one of the Groups for prosecution, and the applicant must also state whether the election is being made with or without traverse. Election with traverse means that the applicant disagrees with the propriety of the restriction, and election without traverse means that the applicant agrees with the propriety of the restriction. The former must be supported by argument, and is just a waste of time. The examiner almost always prevails, so that all the patent attorney does by traversing a restriction requirement is waste the client's money. The applicant must also either cancel or withdraw the non-elected claims. Withdrawing usually makes sense. There can be difficulties in filing continuations to further prosecute the other groups if one had previously abandoned the non-elected claims. Note that failure to properly respond to the restriction requirement will result in the application going abandoned!

One useful strategy is to consider whether the claims that the examiner is trying to divide out could be rewritten in such a manner that they are no longer subject to restriction. This is done by rewriting the inventions of the various independent claims as different species of a single genus. If such a genus claim can be written, the patent attorney should add the genus claim as an independent claim, and make the previous species claims dependent on the genus claim.

I once assumed responsibility for a patent application that had been filed by one of the country's leading patent firms. The application was filed with more than sixty claims, many of which were independent. This was great potential business for the law firm, since it was obvious that the patent office would want the application divided into about sixty divisionals, and the applicant wanted to pursue foreign prosecution in about 20 countries. The cost of all that prosecution could well have run to six million dollars (60 x 20 x US$ 5000)! The client, of course, had no intention of prosecuting sixty different applications, and I was tasked with reducing the cost. I started out by reducing the total number of independent claims to one. Eventually the examiner insisted on splitting that one independent claim into five or six parts, but I still saved the client a lot of money.

The point is that there is almost always a way of combining different ideas under the rubric of a single independent genus claim. Even if a patent attorney cannot identify a common thread of much significance, he can still file an independent claim basically reciting, "A <<method or structure>> having <<list common elements of first and second inventions>> comprising either <<list elements specific to first invention>> or <<list elements specific to second invention>>". This would be followed by dependent claim 2 specifying that the <<method or structure>> is the first invention, followed by several dependencies on claim 2, and perhaps a claim 10 specifying that the <<method or structure>> is the second invention, and several additional claims dependent on claim 10.

Attorneys should note that the USPTO almost always issues restriction requirements for patents that include both method and apparatus claims. As annoying as this seems, such office actions are technically correct. If the method and apparatus claims are indeed of different scope (which they should be, or why file both of them), then it should be possible to practice the method without the apparatus, or visa-versa. One nice thing is that in such circumstances the office may issue the restriction requirement with the caveat that the method claim may turn out to be generic to the apparatus claim. In that instance the method claims should be prosecuted first, and the apparatus claims may then just come along for the ride.

Attorneys should also be cognizant of why they are filing both method and apparatus claims. Often it is just a bad habit, and a waste of the client's money. For example, consider the situation where claim 1 recites "A baby bottle having a flexible bottom having sufficient movement to induce a spurt of milk from the nipple" and claim 8 recites "A method of feeding a baby, comprising providing a baby bottle having a flexible bottom having sufficient movement to induce a spurt of milk from the nipple, and feeding the baby using the baby bottle, during the course of which the flexible bottom is pressed to induce the spurt of milk from the nipple". This is not only a waste of drafting effort, but can actually harm the applicant during litigation. The most likely outcome is that the office will issue a restriction requirement, and after wasting money fighting the restriction, the applicant will pursue only the apparatus or only the method claims to save money. During litigation years later, the alleged infringer may well point out that the applicant abandoned the claims that were not pursued, and argue that such abandonment effectively donated the abandoned subject matter to the public.

All of this supports our admonition that the patent attorney should give serious thought to filing U.S. patent applications with only a single independent claim. The suggestion is a bit different for PCT applications. In the PCT world the office issues disunity rejections rather than restriction requirements. Those are much easier to deal with, and usually only require payment of additional search fees (currently US$ 1000) for each of the various inventions.

One practice tip is to try to anticipate a restriction requirement. If a patent attorney knows that a restriction requirement is likely, it is advantageous to discuss an election with the client early on, so that he is ready to make a telephone election without any further delay when the examiner calls.

Years ago the U.S. patent office regularly rubber stamped national phase claims of a PCT application in which all claims were deemed allowable. That made sense because the examiner who examined the national phase application was often the same person who had previously examined the application at the PCT stage. The practice was also highly advantageous to the applicant in that even relatively unrelated claims would be examined together in the PCT phase, and then kept together again in the U.S. national phase. In other words, even claims that would ordinarily have been subjected to a restriction requirement in a U.S. application would not tend to trigger a restriction requirement if the U.S. application was a national phase of a PCT application in which all claims were deemed allowable. That still occurs in many groups and with many examiners, but is becoming less common. After all, a positive IPER finding is not binding, but only carries an advisory function. Examiners are allowed to issue a new rejection in a national phase application, even if the very same had deemed the very same claims to be allowable only a month earlier during the PCT phase.