"Restriction Requirements" Series, Part 1: Considering Restrictions When Developing A Claim Filing Strategy

Welcome to the blog's first post in a series about restriction requirements! This series will explore nuances in restriction requirement law and provide strategies for most effectively handling restriction requirements, both before and after they arise during prosecution of a U.S. patent. This first post focuses on strategies for developing an initial claim filing strategy that advantageously takes possible future restriction requirements into account.

Let's begin with a brief overview of U.S. restriction requirements. Per 35 U.S.C. § 121, a restriction requirement generally requires an applicant to elect for prosecution only one of two or more independent and distinct inventions presented in a single application. Patent rules 37 CFR §§ 1.141-1.146 are issued under 35 U.S.C. § 121 and also govern U.S. restriction practice. Per these legal requirements, a restriction requirement identifies two or more Groups/Genus, two or more Species, and/or two or more Sub-species