What constitutes a complete reply to a restriction requirement?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
A complete reply to a restriction requirement must include two key elements:
- An election: The applicant must choose one of the inventions or species identified in the restriction requirement.
- A listing of all claims readable on the elected invention: The applicant must identify which claims encompass the chosen invention or species.
MPEP 818.01(a) states:
“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 that a requirement to restrict is in error.”
Additionally, if the applicant wishes to preserve the right to petition the restriction requirement, they must also include a traversal of the requirement. A traversal involves explaining why the restriction requirement is believed to be improper.