What options do applicants have under 37 CFR 1.129(b)(2) for transitional applications?

Under 37 CFR 1.129(b)(2), if an application contains claims to more than one independent and distinct invention, and no requirement for restriction or for filing divisional applications can be made or maintained, applicants have three options:

1. Elect the invention(s) to be searched and examined, if no election has been made prior to the notice, and pay the fee set forth in 37 CFR 1.17(s) for each additional independent and distinct invention.
2. Confirm an election made prior to the notice and pay the fee set forth in 37 CFR 1.17(s) for each additional independent and distinct invention.
3. File a petition under 37 CFR 1.129(b)(2) traversing the requirement without regard to whether the requirement has been made final. No petition fee is required.

The MPEP states, “37 CFR 1.129(b)(2) also provides that if the petition is filed in a timely manner, the original time period for electing and paying the fee set forth in 37 CFR 1.17(s) will be deferred and any decision on the petition affirming or modifying the requirement will set a new time period to elect the invention or inventions to be searched and examined and to pay the fee set forth in 37 CFR 1.17(s) for each independent and distinct invention claimed in the application in excess of one which applicant elects.“

To learn more:

• Transitional Applications
• 37 CFR 1.129(b)(2)
• Patent Examination
• Multiple Inventions