A patent application may contain claims to more
than one invention. If an application contains claims
to more than one invention, the United States Patent
and Trademark Office (USPTO) may impose a restriction
requirement. The applicant must then elect which
one of the inventions should remain within the current
application. However, if you choose not to pursue
claims to one of the invention, you may file a continuation
application, called a divisional, directed toward
the nonelected invention(s).
The Independent and Distinct Standard
The Commissioner of Patents and Trademarks may require
the restriction if two or more independent and distinct
inventions are claimed in one application. However,
current USPTO policy will not allow restriction,
when the application includes multiple inventions,
unless the claims directed towards the different
inventions are separately patentable in light of
the prior art and in light of each other. This means
that neither is obvious in the light of the other.
Definitions
"Independent" is defined by the USPTO
as meaning not dependent or that there is no disclosed
relationship between the two or more subjects disclosed.
”Distinct” is defined by the USPTO as meaning
related or dependent, but capable of separate manufacture,
use, or sale as claimed and patentable over each
other.
Restriction is appropriate where two joined inventions
are either independent or distinct.
Distinct Inventions
The USPTO may require restriction where two or more
inventions are related or dependent but nevertheless
”distinct.” Inventions are distinct if they are
both capable of separate manufacture, use, or sale
as claimed and patentable over each other. Assuming
two joined inventions are distinct in this sense,
then restriction will be required if, but only if,
one or more of the following ”reasons” are present:
• separate classification
• separate status in the art
• a different field of search
Procedure for Division and Election
An examiner enters a restriction requirement when
he or she determines that the application includes
claims to independent and distinct inventions. The
applicant must then indicate a provisional election
and may traverse the requirement by requesting reconsideration.
In the next action, the examiner may make the requirement
final and will take action on the elected claims
and any linking or generic claims.
Election of Restricted Invention
A restriction requirement calls upon the applicant
to elect that invention to which his or her claims
are to be restricted. Election is thus the designation
of the particular one of two or more disclosed inventions
that will be prosecuted in the application.
Traverse and Reconsideration
If the applicant wishes to contest the restriction
requirement, he or she must traverse the requirement
and request reconsideration as well as stating a
provisional election. The applicant must give reasons
why the requirement is in error. After traverse,
the examiner reconsiders the requirement and may
repeat and make it final. In making the requirement
final, the examiner also acts on the merits of the
elected invention.
Petition and Review
If the examiner makes a traversed requirement final,
the applicant may petition the Commissioner to review
the requirement. The applicant may file the petition
after the restriction requirement is made final
and must file it not later than an appeal on the
merits of final rejection. A restriction requirement
is subject to judicial review through mandamus and
the Administrative Procedure Act.
Withdrawal of Claims for Nonelected Inventions or
Species
After a restriction requirement becomes final, the
examiner will withdraw from further consideration
all claims for nonelected inventions or species.
If claims to elected inventions are allowed, the
claims to nonelected inventions must be cancelled.
The applicant may traverse the examiner’s holding
that a given claim is not for elected subject matter.
Such a holding is an appealable rejection. The applicant
may file a divisional application claiming the nonelected
inventions or species.