How to Respond to a Restriction Requirement. Episode 54

Office Actions and Restriction Requirements

In previous episodes, I talked about amending parts of your application, usually in response to an office action. I also covered different types of rejections, such as novelty and obviousness rejections. These are called first office actions on the merits, meaning they are the first written rejections from an examiner stating that your invention is not patentable. However, often the first communication you receive from the Patent Office, aside from the filing receipt, is not about whether your invention is patentable. Instead, it might be a notice that your patent application contains more than one invention.

Why Would Your Patent Application Contain More Than One Invention?

It’s actually quite common for a patent application to cover multiple inventions. Let’s say you developed a new cure for baldness—an ointment with a brand-new chemical. You might write claims covering the new chemical itself. But you could also write claims related to the method of applying the ointment, such as how long it must remain on the scalp and for how many days. Furthermore, if the chemical can only be produced through specific chemical processes, you might write claims covering those processes as well.

Conducting patent searches can be time-consuming and complex. To prevent undue burden on patent examiners, the Patent Office requires applicants to pick one invention to be examined first. If an examiner determines that your application contains multiple inventions, they will issue a restriction requirement, asking you to choose which invention should be examined first.

How to Respond to a Restriction Requirement

The simplest approach is to comply with the examiner's request without arguing. You can argue that your different claims are part of the same invention and do not impose an undue burden on the examiner. However, even if you contest the restriction requirement, you still must pick one invention for examination.

Example of a Restriction Requirement

Here’s an extreme example of multiple inventions in a single application. If you want to follow along, search for U.S. Patent No. 12028349, titled Jewish-Law-Compliant Insect Checker and Sabbath Toothbrush.

The first claim states:

"The use of a light-emitting device for checking food for insects, wherein the light board is powered by rechargeable batteries within the device."

Claim 6 states:

"A toothbrush for use on the Jewish Sabbath comprising a handle and bristles coupled to the handle, the bristles being spaced so that water contacting the bristles is not caught between them."

What does a light device have to do with a toothbrush? Absolutely nothing. When an examiner sees this, they will issue a restriction requirement, requiring the applicant to choose between claims 1-5 (the light device) or claim 6 (the toothbrush).

Understanding the Religious Context

You might wonder why Jewish dietary laws necessitate a light device and a special Sabbath toothbrush. According to Jewish dietary laws, consuming insects is forbidden, so vegetables must be carefully examined to ensure they are bug-free. The light device helps with this inspection.

As for the Sabbath toothbrush, Jewish law prohibits squeezing liquids out of objects on the Sabbath. Since a regular toothbrush may cause water to be expelled when used, a specialized toothbrush is designed to avoid this issue.

If you’re interested in religious-themed inventions, I wrote a book called Kosher Patents, available on Amazon. I also wrote a book about Christian-related patents called What Would Jesus Patent?

Back to Restriction Requirements

If an applicant does not respond to a restriction requirement, the examiner would have to conduct separate

searches for light devices and toothbrush devices, even though the applicant only paid a single filing fee. The Patent Office does not want applicants to pay a single fee and receive patents for multiple inventions. Therefore, you must choose which invention you want examined first.

For example, if the inventor had abandoned the toothbrush idea and was focusing on the light box, they would respond as follows:

"The examiner required restriction of the invention to either the light box of claims 1-5 or the toothbrush of claim 6. Applicant selects the light box of claims 1-5 without traverse."

Understanding "Without Traverse"

"Without traverse" means you are not arguing against the restriction requirement. If you respond "with traverse," you are saying you will choose one set of claims but believe the restriction is unnecessary. Generally, fighting restriction requirements is not worth the effort. The standard strategy is to select the claims most commercially viable.

Designating Claims After a Restriction Requirement

Once you decide which claims you want the examiner to review, you must label them appropriately. For the selected claims (e.g., claims 1-5), you add "(original)" in parentheses after the claim number. For the withdrawn claim (claim 6), you mark it as "(withdrawn)" rather than "canceled." You keep all the words intact—no strikethroughs or deletions.

If claims 1-5 are allowed, you may request that the withdrawn claims also be examined. However, if they are truly distinct, this request will likely be denied. The examiner will cancel those claims, and the issued patent will contain only claims 1-5.

Filing a Divisional Application

This is where divisional applications come into play. A divisional application is a new application filed for the withdrawn claims. It effectively splits the original application into separate inventions. You must file a divisional application before your first patent issues. Once your patent issues, you typically cannot file a divisional application.

Why File an Application Knowing It Might Be Divided?

One reason is cost. If you have multiple inventions but are unsure which one to pursue, you can file a single application and pay a single filing, examination, and search fee (about $800 for a small entity). Then, when the examiner reviews the application, you can decide which invention to pursue. If you later file a divisional application, you pay the extra $800 then, rather than upfront.

Another reason is that it is not always clear whether different embodiments constitute separate inventions. For example, if you invented a motorcycle that comes in two-wheel and three-wheel versions, there are ways to draft claims covering both in a single set. However, whether an examiner will see them as one invention or two is uncertain.

Final Thoughts

Don’t worry if you receive a restriction requirement. Simply choose the claims most relevant to your product and withdraw the others. If you still want protection for the withdrawn claims, file a divisional application before your first patent issues.

There are nuances in restriction practice, including when to contest a restriction requirement and strategies to avoid them. However, this episode provides a broad overview of how to respond by not contesting the restriction and proceeding with the examination.

In the next episode, I will discuss a related requirement from the Patent Office called an election of species requirement, which is similar to a restriction requirement.

I’m Adam Diament, and until next time—keep on inventing!