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MPEP 800
Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
Brief Summary:
A restriction may occur when a single application claims two or more independent and distinct inventions within it. The PTO requires applicants to “restrict” their application to only one invention.
In instances where more than one invention is found in a single application, the applicant may incorporate the extra subject matter into one or more divisional applications which will receive the same filing date as the original application.
Chapter 800 outlines the requirements for a restriction including independence (when the subjects in question are not connected in design, operation or effect) distinctness (when there is a relationship between the subjects in question, but they are capable of separate manufacture and are patentable over one another), and many obscure details concerning the topics of restriction and double patenting.
Key Terms:
| Distinct Inventions | Distinct inventions refer to separate and independent inventions disclosed within a single patent application, which may require the applicant to divide the application into multiple applications, each covering a single invention. |
| Divisional Applications | Divisional applications are separate patent applications that stem from an original application, filed to cover distinct inventions disclosed in the initial application, allowing each invention to be examined and patented independently. |
| Double Patenting | Double patenting refers to the prohibition against obtaining two patents for the same invention or for obvious variations of the same invention, to prevent unjustified extension of patent rights. |
| Elected Species | Elected species refers to a specific embodiment or version of an invention chosen by the applicant for examination when a patent application includes multiple variations or species of the invention. |
| Independent Inventions | Independent inventions are distinct inventions that are not related to each other in terms of their technical features or inventive concepts, often requiring separate patent applications for each invention. |
| Restriction | A restriction is a requirement by the patent office for an applicant to limit a patent application to a single invention when multiple inventions are claimed, necessitating the filing of separate applications for each distinct invention. |
37 CFR (Code of Federal Regulations):
| 37 CFR 1.78 – Claiming benefit of earlier filing date and cross-references to other applications. |
| 37 CFR 1.78 outlines the procedures for claiming the benefit of an earlier filing date for a patent application and provides guidelines for making cross-references to other related applications. |
| 37 CFR 1.142 – Requirement for restriction. |
| 37 CFR 1.142 allows the United States Patent and Trademark Office to require an applicant to restrict their patent application to a single invention if multiple inventions are claimed, necessitating separate applications for each distinct invention. |
35 USC (United States Code):
| 35 USC 121 – Divisional Applications. |
| 35 USC 121 permits the filing of divisional applications when a patent application is required to be divided due to a restriction requirement, ensuring each divisional application is treated as having the same filing date as the original application. |
| 35 USC 102 – Conditions for patentability; novelty. |
| 35 USC 102 establishes that an invention must be novel to be patentable, meaning it cannot have been previously known, used, or described in prior art before the patent application was filed. |
Quick Statistics:
Number of Pages: 107 pgs
Sections: 801 – 823
List of Sections:
| 801 | Introduction | |
| 802 | Basis for Restriction Practice in Statute and Rules | |
| • 802.01 Meaning of “Independent” and “Distinct” • 802.02 Definition of Restriction | ||
| 803 | Restriction — When Proper | |
| • 803.01 Review by Examiner with at Least Partial Signatory Authority • 803.02 Election of Species Requirements – Markush Claims • 803.03 Transitional Applications | ||
| • 803.03(a) Transitional Application — Linking Claim Allowable • 803.03(b) Transitional Application — Generic Claim Allowable | ||
| • 803.04 Nucleotide Sequences • 803.05 Reissue Application Practice | ||
| 804 | Definition of Double Patenting | |
| • 804.01 Prohibition of Nonstatutory Double Patenting Rejections Under 35 U.S.C. 121 • 804.02 Avoiding a Double Patenting Rejection • 804.03 Commonly Owned Inventions of Different Inventive Entities; Non-Commonly Owned Inventions Subject to a Joint Research Agreement • 804.04 Submission to Technology Center Director • 804.05 Impact of Patent Term Extension under 35 U.S.C. 156 on Nonstatutory Double Patenting | ||
| 805 | Effect of Improper Joinder in Patent | |
| 806 | Determination of Distinctness or Independence of Claimed Inventions | |
| • 806.01 Compare Claimed Subject Matter • 806.02 [Reserved] • 806.03 Single Embodiment, Claims Defining Same Essential Features • 806.04 Genus and/or Species Inventions | ||
| • 806.04(a) [Reserved] • 806.04(b) Species May Be Independent or Related Inventions • 806.04(c) [Reserved] • 806.04(d) Definition of a Generic Claim • 806.04(e) Claims Limited to Species • 806.04(f) Restriction Between Mutually Exclusive Species • 806.04(g) [Reserved] • 806.04(h) Species Must Be Patentably Distinct From Each Other • 806.04(i) Generic Claims Presented In a Separate Application After Issuance of Species Claims | ||
| • 806.05 Related Inventions | ||
| • 806.05(a) Combination and Subcombination • 806.05(b) [Reserved] • 806.05(c) Criteria of Distinctness Between Combination and Subcombination • 806.05(d) Subcombinations Usable Together • 806.05(e) Process and Apparatus for Its Practice • 806.05(f) Process of Making and Product Made • 806.05(g) Apparatus and Product Made • 806.05(h) Product and Process of Using • 806.05(i) Product, Process of Making, and Process of Using • 806.05(j) Related Products; Related Processes | ||
| • 806.06 Independent Inventions | ||
| 807 | Patentability Report Practice Has No Effect on Restriction Practice | |
| 808 | Reasons for Insisting Upon Restriction | |
| • 808.01 Reasons for Holding of Independence or Distinctness | ||
| • 808.01(a) Species | ||
| • 808.02 Establishing Burden | ||
| 809 | Linking Claims | |
| • 809.01 [Reserved] • 809.02 Election of Species Required | ||
| • 809.02(a) Election of Species Required | ||
| • 809.03 Restriction Between Linked Inventions810-Action on the Merits | ||
| 811 | Time for Making Requirement | |
| • 811.01 [Reserved] • 811.02 New Requirement After Compliance With Preceding Requirement • 811.03 Repeating After Withdrawal Proper • 811.04 Proper Even Though Grouped Together in Parent Application | ||
| 812 | Who Should Make the Requirement | |
| • 812.01 Telephone Restriction Practice | ||
| 813 | [Reserved] | |
| 814 | Indicate Exactly How Application Is To Be Restricted | |
| 815 | Make Requirement Complete | |
| 816 | [Reserved] | |
| 817 | Outline of Letter for Restriction Requirement | |
| 818 | Election and Reply | |
| • 818.01 Election in Reply to a Restriction Requirement: Express | ||
| • 818.01(a) Reply Must be Complete • 818.01(b) Election is Required, Even When Requirement Is Traversed • 818.01(c) Traverse is Required To Preserve Right of Petition • 818.01(d) Traverse of Restriction Requirement With Linking Claims | ||
| • 818.02 Election Other Than Express | ||
| • 818.02(a) Election By Originally Presented Claims • 818.02(b) Generic Claims Only — No Election of Species; Linking Claims Only – No Election of Invention • 818.02(c) Election By Optional Cancelation of Claims • 818.02(d) Election By Cancelation of Claims, Lacking Express Election Statement | ||
| 819 | Office Generally Does Not Permit Shift | |
| 820 | [Reserved] | |
| 821 | Treatment of Claims Held To Be Drawn to Nonelected Inventions | |
| • 821.01 After Election With Traverse • 821.02 After Election Without Traverse • 821.03 Claims for Different Invention Added After an Office Action • 821.04 Rejoinder | ||
| • 821.04(a) Rejoinder Between Product Inventions; Rejoinder Between Process Inventions • 821.04(b) Rejoinder of Process Requiring an Allowable Product | ||
| 822 | Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee | |
| 823 | Unity of Invention Under the Patent Cooperation Treaty |