The Divisional Patent or Divisional Application
And What is a Restriction Requirement ?
Invariably someone will ask us - "What is a Divisional Patent?" Well - here is how that works. A divisional patent usually results from a restriction
requirement. A restriction requirement -sounds ominous - a phrase an attorney
would love. So what does it mean?
Under US patent law there is only one invention allowed per
patent. One patent - one invention. That does not mean you can not claim
multiple variations (embodiments) of that invention - but in the eyes of the
examiner there should be only one inventive concept.
In the eyes of an examiner, if there are multiple inventions, not
only is that a no-no, but it likely means that the examiner will have to
perform multiple searches, increasing his work load on this particular
So the examiner issues a restriction requirement.
So what does that mean?
What the restriction requirement says, after being interpreted
from legal talk into English, is essentially, you, the applicant, has 2 or more
inventive concepts in this application - tell us which one you want.
This is often, but not always, couched in terms of particular
claims. The examiner will say in effect "claims 1-6 are one invention, and
claims 7-17 are a second invention - which set do you want me to examine".
Occasionally an examiner might reference drawings. " The first invention
is represented in figures 1-2 and the other is figures 3-8". It is also
not unusual to get a restriction requirement that calls out 3 or more
You are now required to "elect" one of the inventions
and it's associated claims. The remaining claims are dropped (for now) - and
the examiner will proceed to examine the reduced claim set.
So what does this mean?
A divisional patent application is straightforward. You simply
submit the same specification and same drawings, but with a different set of
claims. Yes - you do have to pay another filing fee because this is a new
application. So you started our pursuing one patent and you could end up with
two or more. And each of these maintains the priority date of the original
It is possible to "traverse" this requirement and try to
argue that the examiner has made an error in concluding there is more than one
invention. Some applicants do not mind getting a restriction though. They tend to view the requirement as an
opportunity to get additional bites from the examiner's apple. In prosecuting
the first "invention" they will learn what the examiner views as
important prior art, and use that information in amending the remaining claims
before submitting the divisional. And filing the divisional is straightforward - the specification and the drawings do not change - only the claims.
It is true that a successful traverse could
save the applicant the divisional filing fee , but going through the argument with the examiner in traversing the restriction often has a fairly low probability of success and costs time and money itself. But there are some special cases where the applicant wants to traverse - we may talk about that later.
So anytime in the future that you pick up a patent and see that it is
a divisional patent of another patent you now know what that means. Chances are
this was an original application that was issued a restriction requirement by
the examiner. And when you place that divisional and the original application
side by side you will see that they are identical - except for the claims.
One other important note. A restriction requirement does not count
as a first office action. This is because the
examiner has not yet examined your claims for patentability. So you will still
get a non-final and final office action in the future.