If a divisional application is not filed after a restriction requirement, what happens to the claims?

When a restriction requirement is issued by the USPTO, the applicant is essentially asked to choose between two or more claimed inventions to proceed with. If the applicant does not file a divisional application following that requirement, the claims that are directed to the non-elected invention cannot be included in any future patent applications due to the rule of recapture.

The rule of recapture means that an applicant cannot reclaim subject matter that was previously distinguished or sacrificed to overcome a restriction requirement in a pending application. This is designed to prevent an applicant from gaining an unfair advantage by filing successive applications that could effectively reclaim what was previously limited.

In contrast, if a divisional application is filed in response to the restriction requirement, that application can pursue the claims associated with the non-elected invention. However, if no divisional application is filed, the opportunity to claim those non-elected claims is lost, reinforcing the notion behind the rule of recapture.

Therefore, the claims are effectively barred from being included in other future applications, underscoring the importance of timely and appropriate responses to restriction requirements in the patent application process.