When should restriction not be required despite distinct inventions?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs 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. Restriction should not be required when there is an express admission that the claimed inventions would have been obvious over each other within the meaning of 35 U.S.C. 103. The MPEP 803 cites a specific case: “If there is an express admission that the claimed inventions would have been obvious over each other within the meaning of 35 U.S.C. 103, restriction should not be required. In re Lee, 199 USPQ 108 (Comm’r Pat. 1978).” This guideline prevents unnecessary restriction when the applicant has already acknowledged that the inventions are not patentably distinct. In such cases, examining all claims together would be more efficient and appropriate. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Proper Restriction Criteria for Distinct Inventions MPEP 803 Required Obviousness Admission Requires No Restriction MPEP 803 Required Requirement for Serious Search Burden MPEP 803 Required Claims Must Support Separate Patents and Be Independent or Distinct MPEP 803 Required Requirement for Showing Serious Search Burden MPEP 803 Permitted Requirement for Showing Non-Prior Art Issues for Separate Inventions MPEP 803 Permitted Requirement for Prima Facie Showing of Serious Search/Examination Burden MPEP 803 Permitted Criteria for Restricting Markush Claims MPEP 803 Restriction Practice for Genus-Species Claims MPEP 803 Merits Examination Required Without Serious Burden MPEP 803 Required Other Related FAQs 5 FAQs Collapse Are there exceptions to comprehensive patent examination? What is the difference between the 1996 and 2007 USPTO policies on nucleotide sequences? What are the implications of the 2007 USPTO policy change for pending applications with multiple nucleotide ...