How are product, process of making, and process of using inventions related in patent applications?

In patent applications, the relationship between product, process of making, and process of using inventions is complex and governed by specific rules for restriction requirements.

MPEP 806.05(i) cites 37 CFR 1.141(b): Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.

Key points:

• If the product and process of making are not distinct, the process of using may be examined together with them.
• If the process of making is distinct from the product, a three-way restriction may be made.
• Where an application contains claims to a product, claims to a process specially adapted for making the product, and claims to a process of using the product, the applicant may be required to elect either:
  1. The product and process of making it; or
  2. The process of using.

Examiners must carefully consider the relationships between these inventions when determining restriction requirements.

To learn more:

• product invention
• process of making
• process of using
• restriction requirement
• patent examination