Understanding Restriction Requirements in Patent Prosecution: Why They Arise, How to Respond, and Strategic Considerations

In patent prosecution, clients may encounter a “restriction requirement “issued by the United States Patent and Trademark Office (“USPTO”). A restriction requirement is a procedural mechanism used by examiners when they determine that a single patent application claims multiple independent or distinct inventions. Rather than examining all claimed inventions in one application, the examiner requires the applicant to elect one invention for examination. The rationale behind restriction practice is rooted in administrative efficiency—namely, to avoid the burden of examining multiple inventions within the same application and to maintain manageable examination workloads. Also, the USPTO wants fees for each invention.

From a legal standpoint, the authority to issue a restriction requirement arises under 35 U.S.C. § 121, which permits the USPTO to require division of an application when it claims more than one independent and distinct invention. This statutory provision is also linked to the concept of unity of invention, a principle aimed at ensuring that each patent is directed to a single inventive concept.

  • Options for Responding to a Restriction Requirement

Once a restriction requirement is issued, the applicant is required to make an election, typically without traverse or with traverse. Electing without traverse means the applicant accepts the examiner’s restriction without argument. This allows prosecution to proceed on the elected invention without delay. Electing with traverse, on the other hand, involves making the election while also challenging the propriety of the restriction. A traverse must be accompanied by a reasoned argument that the inventions are not, in fact, distinct under the USPTO’s standards. If the examiner maintains the restriction, the applicant may then preserve the right to petition the decision or appeal at a later stage.

It is important to note that failure to traverse a restriction requirement when appropriate may result in waiver of the right to challenge it later. Therefore, clients should consult with counsel to determine whether a traverse is strategically advisable based on the relationships between the claims and the potential value of pursuing multiple inventions.

  • Continuations, Divisionals, and Strategic Considerations

Once a restriction is made and an election occurs, non-elected claims are withdrawn from examination. However, these claims are not abandoned. Instead, they may be pursued in subsequent applications—either divisionals or continuations, depending on the client’s goals. A divisional application is specifically filed to claim subject matter that was divided out of the original application in response to a restriction requirement. Because 35 U.S.C. § 121 protects divisionals from double patenting rejections when filed properly, filing a divisional can be a powerful tool to secure rights in the non-elected invention.

In contrast, a continuation application typically repeats the same disclosure but may present different claim sets, allowing the applicant to pursue variations or broadened scope. While continuations are not necessarily tied to restriction practice, they can be coordinated with divisionals as part of a broader patent strategy.

Clients should carefully consider timing, cost, and commercial relevance when deciding whether to file a divisional or continuation. For instance, if the non-elected claims relate to a commercially valuable feature or product line, preserving rights through a divisional may be essential. On the other hand, if the market relevance is limited or uncertain, deferring or foregoing additional filings may be more cost-effective.

  • The Role of Rejoinder in Restriction Practice

An often-overlooked aspect of responding to restriction requirements is the concept of rejoinder. Rejoinder refers to the process by which certain withdrawn claims, particularly those directed to non-elected species or inventions that are deemed dependent on or closely related to the elected claims, may be reintroduced into the application once the elected claims are found allowable. The USPTO may permit rejoinder without requiring a separate divisional application, thereby saving time and expense. This is most commonly available in cases involving linked inventions or method claims that are commensurate in scope with an allowed apparatus claim.

From a practical standpoint, applicants should proactively monitor for opportunities to request rejoinder once allowance is in sight. Not all withdrawn claims are eligible, and the timing and content of the claims must align with USPTO guidelines. Counsel should ensure that the claim set remains in condition for rejoinder and should consider including appropriate dependent claims early in prosecution to maximize flexibility.

  • Final Thoughts: Navigating Restriction Practice with a Strategic Lens

Restriction requirements are more than just a procedural hurdle; they are a signal that the application contains multiple inventive directions. While this may initially seem like a setback, it often presents an opportunity to create a family of related patents—each focused on distinct, protectable innovations. Clients should engage in a strategic dialogue with counsel to evaluate the best path forward, balancing enforcement potential, product coverage, competitive landscape, and portfolio costs. A well-handled restriction can form the basis of a robust and enforceable patent strategy, provided the response is carefully tailored to long-term business objectives. Proper attention to rejoinder possibilities further enhances the efficiency of this approach by potentially securing broader claim coverage without the need for additional filings.

Click HERE to learn more about Derek Fahey, Esq., the author of this article.

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