Patent Restriction Requirements: Another Way for the USPTO to Make Money?

You are a first time inventor.

You file your first U.S. non provisional Patent Application.

You anxiously wait for a first office action back from the US Patent and Trademark Office to see if you can get a US utility patent.

However, instead of a rejection or allowance of your claims, you get back a “Restriction Requirement”.

The “Restriction Requirement” indicates, generally speaking, that you have more than one invention in your application, and asks you to elect one invention to proceed on in the current patent application.

You can proceed on the non elected invention(s) in one or more separate divisional patent applications, but this requires you to pay further USPTO fees.

The US Patent and Trademark Office will tell you that restriction requirements make perfect sense.

You can’t expect the USPTO to examine an invention for a toothbrush and a separate invention for a lawnmower in the same application?

That would be too burdensome and unfair to the USPTO examiner.

However, as a registered patent attorney, who has been practicing patent law for about twenty-five years (Walter J. Tencza, Jr., Esq, PATENTNOW.COM®), I know that restriction requirements often don’t work that way.

Instead, as an example, you may get a restriction requirement identifying a first invention as a toothbrush with two bristles and a second invention as a toothbrush with five bristles.

And here is the kicker.  If you argue that your inventions are “obvious variants” of one another, you have just shot yourself in the foot.

If the USPTO finds prior art showing the toothbrush with two bristles, you may have admitted that a toothbrush with five bristles is an “obvious variant”, and therefore both inventions should be rejected.

Therefore, practically speaking, restriction requirements, even arguably incorrect ones, may be acquiesced in, and the result is less work for the USPTO examiner and more money for the USPTO through divisional application fees, and potentially more issue fees and more maintenance fees.

It is important to respond to a “Restriction Requirement” in a proper manner, and  depending on the case, there may be appropriate strategies for overcoming a restriction requirement.

If you receive a “Restriction Requirement” you should contact a registered U.S. patent attorney, such as Walter J. Tencza Jr., Esq., 732-549-3007, PATENTNOW.COM®.

Copyright 2016 Law Office of Walter Tencza, Jr., All Rights Reserved.

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