What is a Restriction Requirement?
Why examiners split applications, how to elect with or without traverse, and the divisional safe harbor that protects the non-elected claims.
Definition
A restriction requirement is an action by a USPTO examiner under 35 U.S.C. § 121 requiring the applicant to limit an application to a single claimed invention when the examiner finds that the claims cover two or more independent or distinct inventions. The applicant must elect one group to prosecute and may pursue the others in divisional applications.
Key Facts
- Statute: 35 U.S.C. § 121; practice in MPEP Chapter 800
- Response period: Usually 2 months, extendable to 6 months under the normal extension rules
- Types: Restriction between distinct inventions, and election of species when claims cover multiple disclosed species under a generic claim
- Non-elected claims: Withdrawn, not rejected; they can be pursued in a divisional
- Safe harbor: A divisional filed as a result of a restriction cannot be rejected for double patenting over the parent
- Rejoinder: If the elected generic or product claims are allowed, withdrawn claims that depend on them may be rejoined
Why Examiners Restrict
The USPTO charges one filing, search, and examination fee per application, and the examiner receives credit for examining one invention. When claims cover, for example, a compound and a method of making it, or two unrelated mechanical devices, the examiner can require the applicant to pick one. To restrict, the examiner must show that the inventions are independent or distinct and that examining both together would be a serious burden.
Responding: Election With or Without Traverse
The applicant must make an election even while arguing against the restriction.
- Election without traverse accepts the restriction. It is the most common response and preserves the right to file divisionals.
- Election with traverse makes the election provisionally and argues that the restriction is improper, for example because the inventions are not distinct or search burden is absent. If the examiner maintains it, the applicant may petition.
A telephone restriction is common: the examiner calls counsel, who elects orally, and the election is recorded in the first office action. Traversal remains possible in the written response.
The Divisional Decision
Non-elected claims do not disappear. They can be filed in a divisional application at any time while the parent is pending, and § 121 shields that divisional from obviousness-type double patenting over the parent, so no terminal disclaimer is needed. The safe harbor applies only if the divisional claims track the restriction: claims that mix groups or are filed as a continuation rather than a divisional lose it.
For portfolio teams the restriction requirement is an early signal that one disclosure is carrying several inventions. Docketing the divisional decision to the parent's allowance, rather than leaving it open-ended, keeps the option from quietly expiring when the parent issues.
Frequently Asked Questions
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How long do you have to respond to a restriction requirement?
A written restriction requirement normally sets a two-month shortened statutory period, extendable month by month up to the six-month statutory maximum. If the examiner makes the restriction by telephone and the applicant elects orally, the election is documented in the next office action.
What does election with traverse mean?
The applicant picks a group of claims to prosecute, as required, but states on the record that the restriction is improper and explains why. If the examiner maintains the restriction, the applicant can petition the Director. Without traverse, the right to petition is waived.
What happens to the non-elected claims?
They are withdrawn from consideration, not rejected. The applicant can pursue them in one or more divisional applications filed while the parent is pending, and may be able to rejoin some of them if the elected claims are allowed.
Is a divisional protected from double patenting?
Yes. Under 35 U.S.C. § 121, a divisional filed as a result of a restriction requirement cannot be rejected for double patenting over the parent, provided the divisional claims stay consistent with the groups the examiner defined.
Can you avoid a restriction requirement?
Sometimes. Drafting claims so that the method, apparatus, and product share the same special technical feature reduces the examiner's basis for restriction. Where restriction is likely, some applicants prefer it, since the divisional route yields separate patents with separate term adjustment and a double patenting safe harbor.
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