Today was restrictions. Do you have more than one invention in the application? Does examining those multiple inventions constitute an undue burden on the examiner?
So, of course, we have a bunch of decision trees to follow to figure out if something may be restricted or not, which are too numerous for me to go into now. The analysis is sufficiently daunting that I don’t think most of us will even attempt a restriction unless necessity compels us to.
I’ve been told by a few folks that I should break things down into plainer language so that people who are interested in the job, or interested in patents but have no training, can more easily grasp what I’m getting at. So I’ll take a first stab here:
When an examiner receives an application, there can be all sorts of things in the specification that aren’t claimed – that is, that applicant doesn’t want legal protection for. Applicant can write about tables, alarm clocks, and microchips in the specification and only actually ask for a monopoly on the alarm clock in the claims. Sometimes, however, applicant writes claims that have multiple inventions in them. So basically, with a single application, applicant is asking you to search for prior art and make a determination about patentability for two different things. They might not even be in the same art. For example, a new engine that uses a new lubricant. The examiner would really have to treat the lubricant and the engine as separate inventions to get the job done, depending on how they’re claimed.
So if that represents an “undue burden,” that is, the examiner is going to have to do much, much more work than usual as a result of this, he can see if the claims meet the requirements to do a restriction. The restriction asks applicant to turn these claims into separate applications, or to pick one invention and go with it. It can be a useful tool if used properly.