Responding to Restriction and Election Requirements in Patent Applications

By: Michael J Foycik Jr. 
December 19, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at, or call at 877-654-3336.

It is not at all uncommon to receive an Office Action in a pending U.S. Patent application which is a Restriction requirement or an Electrion requirement. These are two different things, though they may seem similar. Here are a few things to know.

A restriction requirement is normally for completely separate inventions, based strictly on what is claimed. For example, let's say an application is directed to a new mirror and a new hammer. Restriction? Maybe, but it depends on the claims. If there are separate independent claims which recited the mirror and the hammer separately, then a restriction requirement may be made.

In responding to a restriction requirement, it is necessary to elect one of the inventions for further examination. It is possible to contest such a requirement, but there is little likelihood of success. The non-elected invention(s) will likely not be examined, but can be claimed in a future patent application called a “divisional”. A new government filing fee will be due. Advantageously, this means that the applicant's rights have additional life, and sometimes this is useful. For example when competitors try to invent around the claims, the claims in the pending application can be changed.