37 CFR 1.142(a), second sentence, indicates that a restriction requirement "will normally be made before any action upon the merits; however, it may be made at any time before final action." This means the examiner should make a proper requirement as early as possible in the prosecution, in the first action if possible, otherwise, as soon as the need for a proper requirement develops.
Before requiring restriction of claims previously examined on the merits, the examiner must consider whether there will be a serious search and/or examination burden if restriction is not required.
Since 37 CFR 1.142(a) provides that restriction is proper at any stage of prosecution up to final action, a second requirement may be made when it becomes proper, even though there was a prior requirement with which applicant complied. Ex parte Benke, 1904 C.D. 63, 108 OG 1588 (Comm’r Pat. 1904).
Where a requirement to restrict is made and thereafter withdrawn as improper, if restriction becomes proper at a later stage in the prosecution, restriction may again be required.
Even though inventions are grouped together in a requirement in a parent application, restriction or election among the inventions may be required in the divisional applications, if proper.
The examiner to which the application has been assigned will make the restriction requirement, unless the classification is not reasonably correct and complete. In this instance the examiner assigned the application will submit a C-Star (C*) classification challenge on the unrestricted application to have the C* classification picture corrected. If the C* challenge is proper, the application may be reassigned to another examiner whose portfolio matches the new classification picture. The newly assigned examiner would then make the restriction requirement, if appropriate.
If an examiner determines that a requirement for restriction should be made in an application, the examiner should formulate a draft of such restriction requirement including an indication of those claims considered to be linking and/or generic. Thereupon, the examiner should telephone the attorney or agent of record and request an oral election, with or without traverse. The examiner should arrange for a second telephone call within a reasonable time, generally within 3 working days, to provide time for the attorney or agent to consider the requirement. If the attorney or agent objects to making an oral election, or fails to respond, a restriction requirement will be mailed, and should contain reference to the unsuccessful telephone call. When an oral election is made, the examiner will then proceed to incorporate into the next Office action a formal restriction requirement including the date of the election, the attorney’s or agent’s name, and a complete record of the telephone interview, followed by a complete action on the elected invention as claimed, including linking and/or generic claims if present. However, no telephone communication need be made where the requirement for restriction is complex, the application is being prosecuted by the applicant pro se, or the examiner knows from past experience that an election will not be made by telephone.
Form paragraphs 8.23 or 8.23.01 should be used to make a telephone election of record.
During a telephone conversation with [1] on [2] a provisional election was made [3] traverse to prosecute the invention of [4], claim [5]. Affirmation of this election must be made by applicant in replying to this Office action. Claim [6] withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
1. In bracket 3, insert --with-- or --without--, whichever is applicable.
2. In bracket 4, insert either the elected group or species.
3. An action on the merits of the claims to the elected invention should follow.
A telephone call was made to [1] on [2] to request an oral election to the above restriction requirement, but did not result in an election being made.
1. In bracket 1, insert the name of the applicant or attorney or agent contacted.
2. In bracket 2, insert the date(s) of the telephone contact(s).
3. This form paragraph should be used in all instances where a telephone election was attempted and the applicant’s representative did not or would not make an election.
4. This form paragraph should not be used if no contact was made with applicant or applicant’s representative.
Registered attorneys or agents not of record in a patent application should not be contacted for restriction requirements. See MPEP § 408. If an Application Data Sheet lists one or more attorneys or agents under representative information, but a valid power of attorney has not been filed in the application, telephone restriction practice is not permitted, and form paragraph 8.23.03 should be used.
Telephone restriction practice is not permitted because it appears applicant has legal representation but a valid power of attorney has not been filed in the present application. Providing representative information in an Application Data Sheet (ADS) does not constitute a power of attorney. See 37 CFR 1.76(b)(4) and MPEP § 408. For information on appointing a power of attorney, see MPEP § 402.02 et seq.
This form paragraph should be used ONLY when a practitioner or customer number is identified in the ADS but no power of attorney is of record.
If, on examination, the examiner finds the claims to an invention elected without traverse to be allowable and no nonelected invention is eligible for rejoinder (see MPEP § 821.04), the restriction requirement should be attached to the Notice of Allowability form PTOL-37 and should include cancelation of the nonelected claims, and a statement that the prosecution is closed and that a notice of allowance will be sent in due course. Correction of formal matters in the above-noted situation which cannot be handled by a telephone call and thus requires action by the applicant should be handled under the Ex parte Quayle practice, using Office Action Summary form PTOL-326.
Should the elected invention as claimed be found allowable in the first action, and an oral traverse was noted, the examiner should include in the action a statement under MPEP § 821.01, making the restriction requirement final and giving applicant two months to either cancel the claims drawn to the nonelected invention or take other appropriate action. (37 CFR 1.144 ). Failure to take action will be treated as an authorization to cancel the nonelected claims by an examiner’s amendment and pass the application to issue. Prosecution of the application is otherwise closed.
In either situation (traverse or no traverse), caution should be exercised to determine if any of the allowable claims are linking and/or generic claims, or if any nonelected inventions are eligible for rejoinder (see MPEP § 821.04), before canceling claims drawn to the nonelected invention.
When a telephonic election results in the withdrawal of claims such that the assigned examiner believes that the C* classification picture is incorrect, the examiner should enter a C* classification challenge. In this instance, the examiner must document the complete restriction requirement using the internal "Telephonic Restriction and Election Summary" form indicating: the groups and species of invention(s) and, if necessary, the classification thereof; the claims corresponding to each group; the elected invention and/or species; the date of the election; the applicant or applicant representative making the election; and whether the election was with or without traverse. This form is not mailed and is used only to document the restriction requirement until such time as an action on the merits of the elected claims is mailed. After completion of the form the assigned examiner will submit a C* classification picture challenge indicating that the challenge was the result of an election.
If the C* classification challenge results in the application remaining with the examiner, the examiner will incorporate the written restriction and election into the next Office action. If the C* classification challenge results in the application being reassigned, the newly assigned examiner will document the substance of the internal "Telephonic Restriction and Election Summary" form in the next Office action as indicated above. If the newly assigned examiner disagrees with the original restriction requirement, differences should be settled by the existing chain of command, e.g., supervisory patent examiner or TC Director.
Telephone restriction practice is limited to use by examiners who have at least negotiation authority. Other examiners must have the prior approval of their supervisory patent examiner or their reviewing primary examiner. See MPEP § 707.01.
The examiner must provide a clear and detailed record of the restriction requirement to provide a clear demarcation between restricted inventions so that it can be determined whether inventions claimed in a divisional application are consonant with the restriction requirement and therefore subject to the prohibition against double patenting rejections under 35 U.S.C. 121. Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1381, 68 USPQ2d 1865, 1871 (Fed. Cir. 2003). See also MPEP § 804.01.
The mode of indicating how to require restriction between species is set forth in MPEP § 809.02(a).
The particular limitations in the claims and the reasons why such limitations are considered to support restriction of the claims to a particular disclosed species should be mentioned if necessary to make the requirement clear. Form paragraph 8.01 or 8.02 may be used to require an election of species.
It is necessary to read all of the claims to determine what the claims cover. When doing this, the claims directed to each separate invention should be noted along with a statement of the invention to which they are drawn.
In setting forth the restriction requirement, separate inventions should be identified by a grouping of the claims with a short description of the total extent of the invention claimed in each group, specifying the type or relationship of each group as by stating the group is drawn to a process, or to a subcombination, or to a product, etc., and should indicate the classification or separate status of each group, as for example, by class and subclass. See MPEP § 817 for additional guidance.
While every claim should be accounted for, the omission to group a claim, or placing a claim in the wrong group will not affect the propriety of a final requirement where the requirement is otherwise proper and the correct disposition of the omitted or erroneously grouped claim is clear.
The generic or other linking claims should not be associated with any one of the linked inventions since such claims must be examined with the elected linked invention. See MPEP § 809.
When making a restriction requirement, every effort should be made to have the requirement be complete. If some of the claimed inventions are classifiable in a technology that the examiner does not examine and the examiner has any doubt as to the proper restriction among the claimed inventions, the application should be referred to an examiner who regularly examines that technology, and such examiner should render the necessary assistance.
The following outline should be used to set forth a requirement to restrict.
Form paragraphs 8.08-8.11 should be used to group inventions.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claim [1], drawn to [2], classified in [3].
II. Claim [4], drawn to [5], classified [6].
In brackets 3 and 6, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter CPC main group xxx, subgroup yyy.
III. Claim [1], drawn to [2], classified in [3].
In bracket 3, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter CPC main group xxx, subgroup yyy.
IV. Claim [1], drawn to [2], classified in [3].
In bracket 3, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter main group xxx, subgroup yyy.
[1]. Claim [2], drawn to [3], classified in [4].
1. In bracket 1, insert the appropriate roman numeral, e.g., --V--, --VI--, etc.
2. In bracket 4, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification or. For example, if examined in CPC, enter CPC main group xxx, subgroup yyy.
If restriction is required between species, form paragraph 8.01 or 8.02 should be used to set forth the species from which applicant is required to elect and the reasons for holding the species to be independent or distinct. See MPEP § 809.02(a).
Form paragraphs 8.14-8.20.02 may be used as appropriate to set forth the reasons for the holding of independence or distinctness. Form paragraph 8.13 may be used as a heading.
Form paragraph 8.21 must be used at the conclusion of all restriction requirements other than those containing only election of species, with or without an action on the merits.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
[1].
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
1. THIS FORM PARAGRAPH MUST BE ADDED TO ALL RESTRICTION REQUIREMENTS other than those containing only election of species, with or without an action on the merits, or an those containing only an election by original presentation requirement. This form paragraph only needs to be used once, after all restriction requirements are set out.
2. In bracket 1 insert the applicable reason(s) why there is a serious search and/or examination burden.
-For a serious search burden list one or more of the following:
--the inventions have acquired a separate status in the art in view of their different classification;
--the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
-For a serious examination burden explain the reason, such as non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) are relevant to one invention that are not relevant to the other invention(s).
Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. Under 35 U.S.C. 101, more than one patent may not be issued on the same invention.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). The applicant should amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention.
1. Form paragraph 7.03.aia must be included in any Office action that contains this paragraph.
2. In bracket 3, insert the U.S. patent number or the copending application number.
3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.aia.
4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.
5. If the commonly assigned application or patent is prior art under 35 U.S.C. 102(a)(2), a rejection may also be made using form paragraph 7.15.01.aia or 7.15.02.aia.
Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].
1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but it has not been established that they were commonly owned or deemed to have been commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention. See 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c).
2. A rejection under 35 U.S.C. 102(a)(2) /103 using form paragraph 7.21.aia, 7.21.01.aia or 7.21.02.aia also should be made, as appropriate.
3. In bracket 3, insert the number of the patent or application that includes claims patentably indistinct from those in the present application.
4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37.
5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.
6. Form paragraph 8.28.01.aia MUST follow this paragraph.
Form paragraph 8.23.02 must be included in all restriction requirements for applications having joint inventors.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
This form paragraph must be included in all restriction requirements for applications having joint inventors.
Election is the designation by applicant of the one of two or more inventions or patentably distinct species, or of the group of patentably indistinct species, that will be prosecuted in the application. See MPEP § 803.02.
When two or more independent and distinct inventions are presented for examination, the examiner may make a restriction requirement if a serious search and/or examination burden exists. In the reply to the restriction requirement, applicant must elect one invention for examination. If applicant wishes to traverse the restriction requirement, the reply must also include a traversal with specific reasons why applicant believes the restriction requirement is in error. See 37 CFR 1.111 and MPEP § 818.01. Applicant must make their own election; the examiner will not make the election for the applicant.
Election becomes fixed when the claims in an application have received an action on their merits by the Office. If, after receiving an action on the merits of an invention, one or more properly divisible additional inventions are subsequently presented for examination, the examiner may deem the examined invention to be the invention elected by original presentation. See MPEP § 818.02(a).
If the applicant disagrees with the requirement for restriction, he may request reconsideration and withdrawal or modification of the requirement, giving the reasons therefor. (See § 1.111 ). In requesting reconsideration the applicant must indicate a provisional election of one invention for prosecution, which invention shall be the one elected in the event the requirement becomes final. The requirement for restriction will be reconsidered on such a request. If the requirement is repeated and made final, the examiner will at the same time act on the claims to the invention elected.
Election in reply to a requirement for restriction may be made either with or without an accompanying traverse of the requirement. A complete reply to a restriction requirement must include an election even if applicant traverses the requirement.
A traverse is a request for reconsideration of a requirement to restrict that must include a written statement of the reasons for traverse, distinctly and specifically pointing out the supposed errors upon which the applicant relies for concluding that the requirement is in error. The absence of any statement indicating whether the requirement to restrict is traversed or the failure to provide reasons for traverse will be treated as an election without traverse.
Where a rejection or objection is included with a restriction requirement, applicant, besides making a proper election, must also distinctly and specifically point out any supposed errors in the examiner’s rejection or objection, or amend and argue that as amended the objection or rejection is moot. See 37 CFR 1.111.
Applicant must make their own election; the examiner will not make the election for the applicant. See 37 CFR 1.142 and 37 CFR 1.143.
As indicated in the first sentence of 37 CFR 1.143, the traverse to a requirement for restriction must be complete as required by 37 CFR 1.111(b). Under this rule, the applicant is required to specifically point out the reason(s) on which he or she bases his or her conclusion(s) that a requirement to restrict is in error. A mere broad allegation that the requirement is in error does not comply with the requirement of 37 CFR 1.111. Thus the required provisional election (see MPEP § 818.01(b)) becomes an election without traverse if accompanied by an incomplete traversal of the requirement for restriction.
As noted in the second sentence of 37 CFR 1.143, a provisional election must be made even if the requirement is traversed.
All requirements for restriction, other than those containing only an election of species, should include form paragraph 8.21. For election of species, form paragraph 8.01 or 8.02 should be used. These form paragraphs include the above notice.
After a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested (see § 1.181 ).
To preserve the right to petition from the requirement for restriction, including an election of species requirement, all errors to be relied upon in the petition must be distinctly and specifically pointed out in a timely filed traverse by the applicant. The petition may be deferred until after final action on or allowance of the claims to the elected invention. In any event, the petition must not be filed later than the filing date of the notice of appeal. If applicant does not distinctly and specifically point out supposed errors in the restriction requirement, the election should be treated as an election without traverse and be so indicated to the applicant by use of form paragraph 8.25.02.
