As an inventor or business owner, you may have encountered a “restriction requirement” during the patent application process. While this can seem like a frustrating obstacle, it’s important to understand that with the right strategy, a restriction requirement can actually become a valuable opportunity to enhance your patent protection. Let’s explore what these requirements mean for you and how you can use them to your advantage.
What is a Restriction Requirement?
When you file a patent application that claims multiple inventions, the U.S. Patent and Trademark Office (USPTO) may issue a restriction requirement. The restriction requirement lists out each of the inventions contained in the claims of the patent application. This essentially asks you to choose one invention to pursue in your current patent application, while allowing you to file separate patent applications for each of the other inventions.
How Can This Benefit You?
1. Broader Overall Protection:
By dividing your patent application, you can often achieve wider protection for your technology. Each separate patent application can focus on a specific aspect, potentially resulting in broader claim coverage.
2. Extended Patent Rights:
Each separate patent application could have its own 20-year term from its earliest filing date. For divisional patent applications, this is likely the same date. Nonetheless, depending on the patent term adjustment awarded by the USPTO (i.e., extra patent term awarded due to USPTO delays), this means you might be able to extend the overall duration of protection for your invention family.
3. Flexibility in the Marketplace:
With multiple patent applications, you have more flexibility to adapt to market changes. You can prioritize certain aspects of your invention based on current business needs or competitor activities.
4. Cost-Effective Portfolio Building:
Divisional patent applications can provide a cost-effective way to build a patent portfolio around your core technology. Much like continuation patent applications, the additional divisional patent applications often have shorted patent prosecution timelines and less resistance with Examiners, which equates to reduced attorney’s fees.
5. No Obviousness Type Double Patenting
Examiners are not permitted to issue obviousness type double patenting rejections in divisional patent applications. Because of this, applicants do not need to file terminal disclaimers, which can affect your ability to monetize your patent folio by tying ownership together.
Strategies for Handling Restriction Requirements
1. Choose Wisely:
When responding to a restriction requirement, carefully consider which part of your invention to pursue first. Think about what’s most important for your business right now and in the near future.
2. Timing Matters:
Consider when to file your additional divisional patent applications. Sometimes it’s best to wait until your first patent application is close to being granted to better understand what protection you’ll receive.
3. Seek Expert Advice:
Navigating restriction requirements can be complex. It’s often beneficial to work closely with your patent attorney to develop a strategy that aligns with your business goals.
Conclusion
While a restriction requirement might initially seem like a setback, it can actually be a powerful tool for building a comprehensive patent portfolio. By understanding its implications and responding strategically, you can turn this patent office action into an opportunity for expanded and extended protection for your innovations.
Remember, the goal is to align your patent strategy with your business objectives. A well-executed approach to restriction requirements can result in a stronger, more diverse patent portfolio that provides robust protection for your valuable inventions and supports your long-term business success.
About the Author
Jack Abid practices in the area of patent prosecution and IP portfolio management. His patent prosecution experience includes electrical and electronic equipment, telecommunications equipment and cables, laser and optical devices, semiconductor devices, semiconductor processing, mechanical devices, medical devices including implants and telemedicine, and software.
