Is my patent application being rejected?

If a patent examiner thinks that the pending claims in a patent application are directed to more than one invention, the examiner may issue a Restriction Requirement asking the applicant to pick a certain group of claims to prosecute in the pending application. A Restriction Requirement does not necessarily mean anything is wrong with your application or that the claims are being rejected. It simply means the examiner does not want to review all the claims that were originally submitted.

Restricting the number of claims allows the examiner to search a potentially smaller scope of prior art.

How to respond to a Restriction Requirement

Responding to a Restriction Requirement becomes a matter of prioritizing the claim sets you wish to pursue now in the present application. This decision will likely involve a discussion with your patent attorney to understand the groupings of claims and how they relate to current priorities in your business.

What happens after responding to a Restriction Requirement?

After receiving a response to the Restriction Requirement, the examiner will search the prior art with respect to the elected claims only. In the majority of cases, the examiner will likely issue a first substantive Office Action in the coming months containing claim rejections based on the prior art. The examiner may also allow certain claims. You will have an opportunity to respond to this substantive Office Action with claim amendments and arguments.

What happens to non-elected claims?

Non-elected claims will be withdrawn from consideration in the pending application. It is possible you may have elected an independent claim but not certain dependent claims in a claim set. If there are withdrawn claims that depend from an elected independent claim, it possible that the dependent claims may be reinstated if the independent claim is ultimately allowed. This is due to the general axiom that dependent claims are allowable if they depend upon an allowable independent claim.

In any event, the applicant has the right to pursue the non-elected claims in a divisional application.

Filing a divisional application

To pursue the non-elected claims, the applicant may file a divisional/continuation application at anytime while the parent application is still pending (i.e., not abandoned or granted). This “child” divisional application will maintain the earlier filing date of the “parent” application (aka priority date). So, any prior art that may be cited against the divisional claims must pre-date the priority date of the parent application.

While filing the divisional may be deferred, it may make sense to file a divisional sooner due to the extensive amount of time (i.e., years as opposed to months) it takes to get a first Office Action.

Planning ahead

A Restriction Requirement may ultimately result in the grant of multiple patents even though you began with a single application. If you filed a rather extensive specification disclosing and claiming several different embodiments (e.g., versions), then it is likely that you will receive a Restriction Requirement which may lead to a family of patents stemming from the original filing.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com
Vic Lin

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