One of the most puzzling things that can happen to Applicants is receiving a Restriction Requirement (that’s the US term; other jurisdictions have similar communications under different names). So—what does it mean?

A Restriction Requirement (RR) is not the same as a regular Office Action (OA). An OA typically asserts that the claims of your patent application are unpatentable (or points out other defects) and hopefully provides guidance on how to respond.

By contrast, an RR says that more than one “invention” is present within the claims (keeping in mind that “invention” has a specific legal meaning that differs from everyday usage). Often, the point of an RR is to lighten the Examiner’s workload by narrowing the number of concepts they need to search.

(RRs are sometimes paired with an “Election Requirement.” This close cousin deserves its own future blog post.)

So what happens when you get an RR? It requires you to remove certain claims (or parts of claims) from the current claim set. Those claims aren’t lost—they can later be filed in a Divisional application as long as the parent application is still pending. If you’re ready to accept the RR, instruct your patent representative to amend the claims accordingly.

If you’d prefer to push back, you can argue against the RR—but be cautious. Poorly worded arguments might hurt your position later, so it’s best to talk through strategy with your patent representative before taking that path.

(the following link from WIPO contains more information about RR’s: www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_bkk_16/wipo_ip_bkk_16_t7.pdf)

Happy restricting!