There is an objection we often receive from the US Patent Office (USPTO) that is related to, but distinct from, the Unity of Invention objection. I have previously written about Unity of Invention, but in short, it is a requirement that only one invention be represented in a patent. Unity of Invention stems from the Patent Cooperation Treaty and so is (more or less) an international common standard. However, the US takes the concept further than most jurisdictions, leading to a species restriction objection.
With the caveat that I am not a US attorney and that there is likely much more nuance to this than I am aware of, a restriction requirement that requests a species restriction is not contending that there are multiple true inventions in the claims, as a lack of unity objection would, but that there are multiple possible embodiments represented by the claimed patent specification. The Examiner would have read the claims and deemed that there are multiple species (embodiments present), that the different species are not capable of use together, and/or are not obvious variants of one another.
To illustrate, a patent application may be for a surgical clamp. The independent claim recites a clamp for surgery, with two opposing clamping surfaces, a tightening mechanism, and a handle. One dependent claim then describes that the clamping surfaces are flat, while another describes that the clamping surfaces are curved. So, there is one invention but two embodiments or two species within the invention. On finding this, the US Examiner is likely to initiate a restriction requirement to elect just one of those species for examination and search.
A species restriction objection may be confusing for someone with experience in the Australian patent system, where it is usual to file the same application with claims directed toward multiple embodiments, or with both apparatus and method claims. However, it is these situations that are likely to attract a restriction requirement when the application is filed into the US.
The justification for this sort of restriction is typically that it would present an undue burden upon the Examiner to properly search the prior art record for each and every embodiment presented in the claims. The Examiner should be able to justify this burden. Part of the justification criteria is that the identified species need to not be obvious in light of each other. That is, if each species were considered separately and found that the first was obvious in light of the second, then no restriction action should issue because they are not distinct enough.
At the conclusion of the Examination process, if the independent claim that any species descends from is found to be allowable, then any species that were not searched or examined are able to be included and allowed based on dependency on the independent claim.
To reply to the restriction action, the applicant must nominate which species the Examiner should examine, as well as the claims that represent this species. The Applicant can also attempt to traverse the restriction requirement by arguing that the Examiner has not correctly interpreted the claims, and that there is in fact only one invention present. This comes with a warning, which is that if the Examiner accepts the traverse, but subsequently finds an examined species to not be patentable, then this can affect the patentability of the other identified species.
Another option is to take the restricted claims and spin them out into divisional (patent) applications. The restriction action is a unique opportunity to do so, because the same legal clause (35 U.S.C 121) that enforces these types of restrictions allows that divisional applications spun off as a result of a restriction action cannot be held against their parent application during examination, and vice versa. This appears to be a complex area of US law that is outside the scope of our present discussion, but as Australians entering into the US system it is worth being aware of.
Australian applicants filing into the US should be aware that this sort of objection is a possibility, even a likely one. But even though there is no equivalent action in Australia, we at MBIP are very familiar with these and are well-positioned to act appropriately. If you need advice related to restriction requirement actions, US examination, or other steps when filing patents into the US, you can contact MBIP’s patents team via our contact form, email, or phone.
