Legal Definitions - restriction application

A restriction application is a specific type of patent application that arises when an initial patent filing is found by the patent office to contain claims covering two or more distinct and independent inventions. When this occurs, the patent examiner issues a "restriction requirement," compelling the applicant to choose one invention to pursue in the original application.

To continue seeking patent protection for the other inventions that were "restricted out" of the initial application, the applicant must file separate applications. These subsequent filings are known as divisional applications, and when they are filed specifically in response to a restriction requirement, they are often referred to as restriction applications.

Here are some examples to illustrate this concept:

• Example 1: A technology company invents a novel type of data encryption algorithm and, in the same initial patent application, also describes a unique hardware device designed to implement that algorithm. The patent examiner reviews the application and determines that the encryption algorithm and the hardware device are two separate and distinct inventions that could be used independently. The examiner issues a restriction requirement. The company decides to pursue the encryption algorithm in the original application and files a separate divisional application (a restriction application) specifically for the unique hardware device.

  Explanation: This illustrates a restriction application because the original filing contained two distinct inventions (algorithm and hardware). The patent office required the applicant to separate them, leading to a new application for one of the inventions.

• Example 2: An inventor develops a new type of athletic shoe sole that provides superior cushioning and, within the same patent application, also claims a unique method for manufacturing that specific sole. The patent office examiner concludes that while related, the shoe sole itself and the manufacturing method are distinct inventions. For instance, the sole could potentially be made by other methods, and the method might be adaptable to make other types of soles. The examiner issues a restriction requirement. The inventor chooses to proceed with the claims for the shoe sole in the initial application and files a divisional application (a restriction application) for the manufacturing method.

  Explanation: Here, the restriction application is filed for the manufacturing method because it was deemed a separate invention from the shoe sole itself, requiring a new application after the initial filing was restricted.

• Example 3: A research institution discovers a new genetic marker associated with a particular disease and, in the same patent application, also details a diagnostic test kit specifically designed to detect that marker. The patent examiner determines that the genetic marker itself and the diagnostic test kit are distinct inventions. The marker could be detected by other means, and the kit could potentially be adapted to detect other markers. Consequently, a restriction requirement is issued. The institution decides to continue pursuing the claims related to the genetic marker in the original application and files a divisional application (a restriction application) for the diagnostic test kit.

  Explanation: This scenario demonstrates a restriction application being filed for the diagnostic test kit, as it was separated from the genetic marker due to the patent office's determination that they constituted independent inventions within the initial application.