Restriction Requirements

Posted Saturday, October 25, 2014.

The patent application fees paid by applicants to the United States Patent and Trademark Office (USPTO) are among the best bargains around. USPTO rates are low in light of the fact that on average, a U.S. patent application receives 19 hours of attention from a patent examiner. For example, a small entity filing a utility patent application today at the USPTO would generally pay $800. The patent office receives, on average, $42/hr to assign the application to an examiner having education and subject matter expertise in the technology to which the application is related. (That figure does not account for patent office overhead at all, so the actual average rate is obviously lower.) It doesn’t matter whether the application is 9 pages long or 99 – in most cases the examiner is going to be allocated the same amount of time to work on it irrespective of its size.

Naturally, applications vary in size according to the complexity of the subject matter disclosed and claimed. Note that I did not write “according to the complexity of the invention.” Often, a product for which an applicant seeks intellectual property protection actually embodies multiple inventions. And in such a case, the applicant must file separate patent applications for each invention.

Consider a new jet airliner jam-packed with innovations and new features devised during a 5-10 year development cycle. The manufacturer isn’t going to submit a single patent application titled “Dreamliner” – instead, a separate patent for each of those innovations and new features will be sought via individual patent applications. Each newly-invented feature of the airplane would represent a single invention and require a separate application if IP protection of the feature is desired.

What happens if there is some overlap, and a single patent application actually discloses two inventions? We know from the above that the patent office isn’t receiving a lot of money for each invention examined. They don’t normally have the ability to squeeze examination of two inventions into the number of hours needed to examine one. (In fact, by regulation they can’t – see 37 CFR 1.141.) So, if the examiner, upon initially reviewing the application, detects patent claims directed to multiple inventions, a “restriction requirement” will be issued.

In a restriction requirement, the examiner lists the different inventions and instructs the applicant to choose only one for examination. The applicant makes an election, and the examiner continues the examination by considering only the claims directed to the elected invention.

To get the second invention examined, the applicant may have a second application prepared and filed, and pay a second set of application fees. The second application is a type of continuation application called a divisional application. The divisional application may or may not be assigned to the original examiner. If, for example, the non-elected invention relates to a different technology area than the elected invention, the divisional application would almost certainly be examined by a different examiner.

The principle is easy to understand – when you pay one application fee, you get one invention examined. If your application actually discloses and claims two or more separate inventions, then two or more patent applications are needed. The tricky part is determining how to distinguish two or more separate inventions. The rules written in the manual which patent examiners use to make this determination are 10 or 11 pages long.

It is possible to contest a restriction requirement if you don’t agree with how the patent examiner is arriving at the conclusion that the inventions are distinguishable. The patent office is required to allege in the restriction requirement that the examiner would bear a “serious burden” if restriction isn’t required. I had an instance once where a patent examiner issued a restriction requirement, insisting that two different claims each represented a different invention, and that a serious burden would result if the examiner had to examine both of the claims. In reviewing the actual claims, which had been written by someone else, I discovered that the difference in the two claims amounted to a single word. Sure, the words were in different order in the two claims, but each claim included the same list of words except that one of the two had an extra word, which was “existing.”

In my reply to the restriction requirement, I contested the notion that the addition of the word “existing” in the second claim would constitute a serious burden. The examiner agreed, withdrew the restriction requirement, and examined both of the claims.

Inventors bringing a new product to market should be aware that the new product might actually include multiple inventions. They should be prepared for the potential need to file multiple patent applications to fully protect the invention. (Steve Jobs once said that the iPhone, for example, has over 200 patents covering various aspects of the single device.) Where multiple inventions are claimed in a single application, the USPTO will likely issue a restriction requirement to keep the workload of the examiner assigned to the application to a reasonable level in light of the USPTO’s relatively low filing fees.

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