Posted on Feb 20, 2020

Law Office of Gerald R. Prettyman

Patent Claim Restriction
So, you filed a patent application, and the Patent Office sent a form that states “Claim(s) A - D are subject to restriction and/or election requirement”, along with a letter that contains the following paragraph almost verbatim, and longer text that looks like the picture:
1. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims A - B drawn to a ------ classified in YYY
II. Claims C - D, drawn to a +++++++ classified in ZZZ.
So (1), you ask – what is this? In short – a patent may protect only one invention, the Patent Office thinks your claims describe more than one invention, and you are required to ‘elect’ one invention, and ‘restrict’ the claims to that invention. Note: you can argue that the examiner is wrong, (see: “The election of an invention may be made with … traverse …), but you will lose time on your patent (20 years from the filing date) and spend money on an appeal with very little to gain.
So (2), what do you do now?
Fortunately, a response is not difficult, BUT, make sure you answer all FOUR parts. (The paragraph in bold has only two parts, but there are actually four requirements):
For more details, see Patent Restriction Practice at https://www.gotabrightidea.com/post/restriction
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