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 InventionsDistinct 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 ApplicationsDivisional 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 PatentingDouble 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 SpeciesElected 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 InventionsIndependent 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.
RestrictionA 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:

801Introduction
802Basis for Restriction Practice in Statute and Rules
802.01 Meaning of “Independent” and “Distinct”
802.02 Definition of Restriction
803Restriction — 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
804Definition 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
805Effect of Improper Joinder in Patent
806Determination 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
807Patentability Report Practice Has No Effect on Restriction Practice
808Reasons for Insisting Upon Restriction
808.01 Reasons for Holding of Independence or Distinctness
808.01(a) Species
808.02 Establishing Burden
809Linking 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
811Time 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
812Who Should Make the Requirement
812.01 Telephone Restriction Practice
813[Reserved]
814Indicate Exactly How Application Is To Be Restricted
815Make Requirement Complete
816[Reserved]
817Outline of Letter for Restriction Requirement
818Election 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
819Office Generally Does Not Permit Shift
820[Reserved]
821Treatment 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
822Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee
823Unity of Invention Under the Patent Cooperation Treaty

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