A restriction requirement is when the patent examiner tells you: "Your application claims more than one invention. Pick one to prosecute now. File divisional applications for the others."
This happens when claims cover multiple independent and distinct inventions. The USPTO wants to examine each invention separately—different prior art searches, different patentability analyses.
§ 121. Divisional applications
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120, it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application.
Translation: If the examiner requires restriction, you can file divisional applications for the non-elected inventions. They get the original filing date (§ 120 continuity). AND—critical—the examiner cannot use the elected invention as prior art against the non-elected inventions (or vice versa). This is the § 121 safe harbor.
Examiners have limited time and resources. If an application claims:
...the examiner will require you to elect one invention for prosecution. The others can be pursued in separate divisional applications.
📌 MPEP § 803
Covers the legal basis for restriction requirements. Examiners must show inventions are (1) independent and (2) distinct to require restriction.
To require restriction, the examiner must prove TWO things:
1. INDEPENDENT
Each invention could be made, used, or sold separately without the other. There's no necessary connection between them.
Example: A software algorithm (Invention A) and a hardware device (Invention B). You could practice the algorithm on any computer. The device could run different software. They're independent.
2. DISTINCT
The inventions are not obvious variants of each other. Different prior art searches would be needed. Different fields of search.
Example: A bicycle frame (mechanical engineering search) and a smartphone app for tracking bike rides (software search). Completely different art units, different examiners would typically handle them.
Both must be true. If inventions are related enough that examining one would also examine the other (same prior art, same search strategy), restriction is improper.
A. Product vs. Process
B. Apparatus vs. Method
C. Combination vs. Subcombination
D. Species (Election of Species)
When you receive a restriction requirement, you have two main options:
Option 1: ELECT (Accept Restriction)
Option 2: TRAVERSE (Challenge Restriction)
Strategic note: Most applicants simply elect and preserve their options. Traversing is rare unless you're certain the restriction is improper and want to avoid divisional filing fees.
📌 MPEP § 818.03
Election must be made without traverse to preserve petition rights later. If you elect "with traverse," you're accepting the restriction while disagreeing—this is permitted.
Here's why restriction requirements can be strategically advantageous:
If the examiner requires restriction, and you file divisional applications in response:
✅ The elected invention group CANNOT be used as prior art against the non-elected groups
✅ The non-elected groups CANNOT be used as prior art against the elected group
✅ This applies in the USPTO AND in court (litigation)
Why this matters: If your inventions are related enough that one might be prior art against the other (e.g., an earlier-developed process used to make a later-developed product), the safe harbor prevents that rejection. The examiner admitted they're independent and distinct by requiring restriction—so they can't later argue they're the same thing.
Strategic use case: Sometimes applicants request restriction even when the examiner hasn't issued one. Why? To invoke the safe harbor and prevent potential § 102/103 rejections between related inventions.
When you elect one invention and abandon the others in the parent application, you can file divisional applications for the non-elected inventions.
1. Timing
2. Disclosure
3. Benefit Claim
4. Fees
📌 35 U.S.C. § 120
Divisional applications must comply with § 120 continuity requirements to get the parent's filing date. Same inventors, same disclosure, proper priority claim.
Species restriction is a specific type of restriction where a generic claim covers multiple species (embodiments), and the examiner requires you to pick one for examination.
Claim 1 (Generic): A method of treating headaches comprising administering an effective amount of an alkali metal compound.
Species covered: Lithium compounds, sodium compounds, potassium compounds, rubidium compounds, cesium compounds...
Examiner's action: "Elect one species for examination."
Applicant's response: "I elect lithium compounds."
Examiner now searches only lithium compounds. If the generic claim is later allowed, it covers all species (including the non-elected ones). But if only the specific claim to lithium is allowed, you'd need divisionals for sodium, potassium, etc.
Strategic consideration: Elect the most commercially valuable species. That's the one you'll prosecute first and potentially get to market fastest.
If you believe the restriction requirement is improper, you have two options:
Option 1: TRAVERSE (Argue to Examiner)
Option 2: PETITION (Appeal to Director)
Best practice: Elect the invention you want to prosecute first, then petition if you want to challenge the restriction. This keeps things moving while preserving your rights.
📌 37 CFR 1.144
Petition to the Director for supervisory review of examiner actions. Used when examiner's restriction requirement appears to violate USPTO rules or case law.
In the story, Severen requests restriction—an unusual but strategically brilliant move. Here's why:
The Setup:
The Trap Isaac Faces:
If Isaac GRANTS restriction:
If Isaac DENIES restriction:
Result: Isaac is trapped. Either answer invalidates his § 101 rejection. Severen weaponized restriction requirements to force a legal checkmate.
This is advanced patent prosecution strategy—using procedural mechanisms (restriction) to create substantive legal leverage (defeating § 101 rejections).
1. Two-Part Test
2. Election
3. Safe Harbor (§ 121)
4. Divisional Applications
5. Traverse vs. Petition
6. Species Election
TITLE 35 — PATENTS
PART II — PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 11 — APPLICATION FOR PATENT
§ 120. Benefit of earlier filing date in the United States
An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385, which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.
§ 121. Divisional applications
If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120, it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.
[End of Chapter 9 — Patent Law]