What options does an applicant have when faced with a Form Paragraph 8.29 rejection?

When an applicant receives a rejection using Form Paragraph 8.29, they have two main options:

1. Cancel patentably indistinct claims: The applicant can choose to cancel the patentably indistinct claims from all but one application. This eliminates redundancy and streamlines the examination process.
2. Maintain a clear line of demarcation: The applicant can choose to keep the claims in multiple applications but must clearly distinguish between the applications and their respective claims.

According to MPEP 822, the form paragraph states: “Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications.”

The applicant should choose the option that best suits their patent strategy and the nature of their inventions. If the claims are truly indistinct, cancellation may be the most efficient choice. However, if the applicant believes there are meaningful differences between the claims, they should clearly articulate these differences to maintain the separate applications.

To learn more:

• Form Paragraph 8.29
• patent rejection
• applicant options
• patentably indistinct claims