US Patent Restriction

You just got a Restriction or an Election/Restriction office action and are wondering what it is and how to respond.

Basically, the patent office has examined your application and decided that it has more than one invention claimed and the USPTO wants you to pick which one you want examined in the current patent application. This is because in theory you are supposed to have only one invention in one patent application. 35 U.S.C. 121 states in part “If two or more independent and distinct inventions are claimed in one application, the Director [of the USPTO] may require the application to be restricted to one of the inventions.”

In all likelihood the examiner has split the claims up based on your independent claims and stated something like “The inventions are independent or distinct, each from the other because,” and then states the reason and the burden it places on the examiner like “the inventions have acquired a separate status in the art…”, and “the inventions require a different field of search…”, etc

Now if you’re going to file a response you MUST elect which group to have examined AND you MUST also specify the claims covered EVEN if you decide to argue with the examiner about the restriction. If you disagree with the examiner and present arguments then state that you are electing WITH TRAVERSE as this preserves certain rghts. It is possible (but rare in our experience) that the examiner will be persuaded and drop or modify the Election/Restriction.

Before you decide to argue the case, please consider that there may be reasons not to argue. The first is that if you say they are the same invention then if the examiner finds one claim unpatentable they can use it against you on the others because you admitted they were the same (a bad idea to admit anything to the USPTO). The second is from a business perspective the experts at the USPTO have told you there are multiple inventions and you might want to file a divisional application (as long as the parent is co-pending) for another patent.

There is a third way to respond and that involves amending the claims in one group so that the restricted independent claims are now dependent on an independent claim from another group. That is, they depend on only a single independent claim. This largely makes moot the restriction requirements; however, the examiner may then issue an election of species rejection.

Further complications are the ability to rejoin claims based on the type of claim (apparatus, process) if a claim is allowed.