Maiorana, P.C.

Patent Law - Established 1998

What Is A Restriction Requirement?


A restriction requirement is a type of Office Action (discussed here).

For a basic restriction, the U.S. Patent Office tries to break up apparatus and method claims. A restriction requirement between two or more apparatus claims is also possible. The Patent Examiner defines two or more groups of claims. Sometimes a species. This is not out of the ordinary. The justification that the Patent Office uses is that an apparatus claim is a separate invention from a method claim. The separate status would require searching in a separate class, and ultimately more work for the Patent Examiner. The justification may or may not be true. A response is still required to avoid abandonment.

As part of the response, we can either accept the Patent Office’s restriction requirement or argue against the requirement. Even if we argue, we are still required to make an election between the groups of claims. Our balance is to make some sort of argument, but still not completely agree with the Patent Office’s position. Our fees for responding to a restriction requirement are outlined in our fee schedule.

We generally only need an OK to respond from a client. Then a general idea of whether you want us to move quickly or push closer to the deadline. A restriction normally has a 60 day time period for response. Extensions may be obtained for up to 4 months. The timing on when to respond is a balance between when you receive legal bills versus how long it take to ultimately get a patent to issue.

After we respond to the restriction requirement, the Patent Office follows-up under normal procedures, discussed here. So we would get either a Non-Final Office Action, or a Notice of Allowance. The non-elected claims would normally be filed in a follow-up divisional application. A divisional application is a form of continuation patent application, discussed here. Unfortunately, Patent Office filing fees, as well as additional legal fees, would be involved when filing a divisional application. A divisional application is not a requirement, but is normally a good idea to cover the different aspects of the invention. If all goes well, you will end up with two issued U.S. patents.

  • Chris Maiorana
  • June 2018
Topics: Affordable patent attorney - Michigan
Related: Office Actions, Overall Patent Process, Continuation Patent Application.

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