Legal Definitions - restriction requirement

A restriction requirement is a procedural action taken by a patent examiner during the review of a patent application. It occurs when the examiner determines that a single patent application describes and claims two or more distinct and independent inventions. To ensure that each patent grant covers only one invention and to facilitate a focused examination process, the examiner requires the applicant to choose one of these inventions to pursue in the current application. The applicant then has the option to file separate "divisional" applications for the other inventions if they wish to patent them.

Here are some examples to illustrate how a restriction requirement might apply:

• Example 1 (Mechanical and Electronic Invention): An inventor files a patent application for a new type of smart bicycle helmet. Within the application, they describe and claim not only the unique aerodynamic design of the helmet shell but also a completely novel integrated lighting system that responds to ambient light conditions and a new communication module for rider-to-rider interaction. The patent examiner reviews the application and issues a restriction requirement, stating that the helmet's physical design, the smart lighting system, and the communication module are distinct inventions. The examiner requires the inventor to choose one of these to be examined in the current application, suggesting the others could be pursued in separate divisional applications.

  Explanation: This illustrates a restriction requirement because the examiner identified multiple independent inventions (the helmet's physical structure, its lighting system, and its communication module) within a single application and demanded the applicant restrict the current application to just one.

• Example 2 (Chemical and Method Invention): A biotechnology company submits a patent application for a new protein compound designed to enhance plant growth. In the same application, they also include claims for a unique method of genetically engineering plants to produce this compound internally, as well as claims for a novel soil additive formulation that stabilizes the compound's activity when applied externally. The patent office issues a restriction requirement, asserting that the protein compound itself, the genetic engineering method, and the soil additive formulation are separate and distinct inventions. The company must select one invention to proceed with in the current application, with the option to file new applications for the others.

  Explanation: Here, the restriction requirement applies because the application encompasses three distinct areas of invention (a specific compound, a method of creating it, and a formulation for its use) that the examiner deems independent, necessitating a choice for the current application.

• Example 3 (Software and Business Method Invention): An entrepreneur applies for a patent covering a new online educational platform. The application describes a novel interactive learning module for teaching complex mathematical concepts, a unique algorithm for personalizing student learning paths based on performance data, and a new subscription model that uses blockchain technology for secure payment and content access. The patent examiner determines that these three aspects—the interactive learning module, the personalization algorithm, and the blockchain-based subscription model—are distinct inventions. A restriction requirement is issued, compelling the applicant to select one of these inventions for examination in the current application, with the possibility of filing divisional applications for the others.

  Explanation: This example demonstrates a restriction requirement where different functional components of a software system (a specific learning tool, a data-driven algorithm, and a novel payment/access method) are considered separate inventions by the examiner, requiring the applicant to focus the current application on just one.