MPEP § 803 — Restriction — When Proper (Annotated Rules)
§803 Restriction — When Proper
This page consolidates and annotates all enforceable requirements under MPEP § 803, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Restriction — When Proper
This section addresses Restriction — When Proper. Primary authority: 35 U.S.C. 103, 35 U.S.C. 101, and 35 U.S.C. 112. Contains: 5 requirements, 2 permissions, and 2 other statements.
Key Rules
Working and Prophetic Examples (MPEP 2164.02)
For purposes of the initial requirement, a serious search burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02. Similarly, a serious examination burden, for example, may be prima facie shown by appropriate explanation of non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) relevant to one invention that are not relevant to the other invention. A prima facie showing of serious search and/or examination burden may be rebutted by appropriate showings or evidence by the applicant. Insofar as the criteria for restriction practice relating to Markush claims is concerned, the criteria is set forth in MPEP § 803.02. Insofar as the criteria for restriction or election practice relating to claims to genus-species, see MPEP § 806.04 – § 806.04(i) and § 808.01(a).
For purposes of the initial requirement, a serious search burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02. Similarly, a serious examination burden, for example, may be prima facie shown by appropriate explanation of non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) relevant to one invention that are not relevant to the other invention. A prima facie showing of serious search and/or examination burden may be rebutted by appropriate showings or evidence by the applicant. Insofar as the criteria for restriction practice relating to Markush claims is concerned, the criteria is set forth in MPEP § 803.02. Insofar as the criteria for restriction or election practice relating to claims to genus-species, see MPEP § 806.04 – § 806.04(i) and § 808.01(a).
For purposes of the initial requirement, a serious search burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02. Similarly, a serious examination burden, for example, may be prima facie shown by appropriate explanation of non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) relevant to one invention that are not relevant to the other invention. A prima facie showing of serious search and/or examination burden may be rebutted by appropriate showings or evidence by the applicant. Insofar as the criteria for restriction practice relating to Markush claims is concerned, the criteria is set forth in MPEP § 803.02. Insofar as the criteria for restriction or election practice relating to claims to genus-species, see MPEP § 806.04 – § 806.04(i) and § 808.01(a).
For purposes of the initial requirement, a serious search burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02. Similarly, a serious examination burden, for example, may be prima facie shown by appropriate explanation of non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) relevant to one invention that are not relevant to the other invention. A prima facie showing of serious search and/or examination burden may be rebutted by appropriate showings or evidence by the applicant. Insofar as the criteria for restriction practice relating to Markush claims is concerned, the criteria is set forth in MPEP § 803.02. Insofar as the criteria for restriction or election practice relating to claims to genus-species, see MPEP § 806.04 – § 806.04(i) and § 808.01(a).
Restriction and Election Practice (MPEP Chapter 800)
There are two criteria for a proper requirement for restriction between patentably distinct inventions:
- (A) The inventions must be independent (see MPEP § 802.01, § 806.06, § 808.01) or distinct as claimed (see MPEP § 806.05 – § 806.05(j)); and
- (B) There would be a serious search and/or examination burden on the examiner if restriction is not required (see MPEP § 803.02, § 808, and § 808.02).
There are two criteria for a proper requirement for restriction between patentably distinct inventions:
…
(B) There would be a serious search and/or examination burden on the examiner if restriction is not required (see MPEP § 803.02, § 808, and § 808.02).
Restriction Requirement (MPEP 802-803)
Examiners must provide reasons and/or examples to support conclusions, but need not cite documents to support the restriction requirement in most cases.
Where plural inventions are capable of being viewed as related in two ways, both applicable criteria for distinctness must be demonstrated to support a restriction requirement.
35 U.S.C. 103 – Obviousness
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).
Assignee as Applicant Signature
For purposes of the initial requirement, a serious search burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02. Similarly, a serious examination burden, for example, may be prima facie shown by appropriate explanation of non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) relevant to one invention that are not relevant to the other invention. A prima facie showing of serious search and/or examination burden may be rebutted by appropriate showings or evidence by the applicant. Insofar as the criteria for restriction practice relating to Markush claims is concerned, the criteria is set forth in MPEP § 803.02. Insofar as the criteria for restriction or election practice relating to claims to genus-species, see MPEP § 806.04 – § 806.04(i) and § 808.01(a).
Statutory Authority for Examination
Citations
| Primary topic | Citation |
|---|---|
| Assignee as Applicant Signature Working and Prophetic Examples (MPEP 2164.02) | 35 U.S.C. § 101 |
| 35 U.S.C. 103 – Obviousness | 35 U.S.C. § 103 |
| Assignee as Applicant Signature Working and Prophetic Examples (MPEP 2164.02) | 35 U.S.C. § 112 |
| Assignee as Applicant Signature Working and Prophetic Examples (MPEP 2164.02) | 35 U.S.C. § 112(a) |
| Restriction and Election Practice (MPEP Chapter 800) | 35 U.S.C. § 808 |
| Assignee as Applicant Signature Working and Prophetic Examples (MPEP 2164.02) | 37 CFR § 806.04(i) |
| Restriction and Election Practice (MPEP Chapter 800) | 37 CFR § 806.05(j) |
| Restriction and Election Practice (MPEP Chapter 800) | 37 CFR § 806.06 |
| Restriction and Election Practice (MPEP Chapter 800) | 37 CFR § 808.01 |
| Assignee as Applicant Signature Working and Prophetic Examples (MPEP 2164.02) | 37 CFR § 808.01(a) |
| Restriction and Election Practice (MPEP Chapter 800) | 37 CFR § 808.02 |
| Restriction and Election Practice (MPEP Chapter 800) | MPEP § 802.01 |
| Assignee as Applicant Signature Restriction and Election Practice (MPEP Chapter 800) Working and Prophetic Examples (MPEP 2164.02) | MPEP § 803.02 |
| Assignee as Applicant Signature Working and Prophetic Examples (MPEP 2164.02) | MPEP § 806.04 |
| Restriction and Election Practice (MPEP Chapter 800) | MPEP § 806.05 |
| Assignee as Applicant Signature Working and Prophetic Examples (MPEP 2164.02) | MPEP § 808.02 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 803 — Restriction — When Proper
Source: USPTO803 Restriction — When Proper [R-07.2022]
Under the statute, the claims of an application may properly be required to be restricted to one of two or more claimed inventions only if they are able to support separate patents and they are either independent (MPEP § 802.01, § 806.06, and § 808.01) or distinct (MPEP § 806.05 – § 806.05(j)).
If the search and examination of all the claims in an application can be made without serious burden, the examiner must examine them on the merits, even though they include claims to independent or distinct inventions.
I. CRITERIA FOR RESTRICTION BETWEEN PATENTABLY DISTINCT INVENTIONSThere are two criteria for a proper requirement for restriction between patentably distinct inventions:
- (A) The inventions must be independent (see MPEP § 802.01, § 806.06, § 808.01) or distinct as claimed (see MPEP § 806.05 – § 806.05(j)); and
- (B) There would be a serious search and/or examination burden on the examiner if restriction is not required (see MPEP § 803.02, § 808, and § 808.02).
Examiners must provide reasons and/or examples to support conclusions, but need not cite documents to support the restriction requirement in most cases.
Where plural inventions are capable of being viewed as related in two ways, both applicable criteria for distinctness must be demonstrated to support a restriction requirement.
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).
For purposes of the initial requirement, a serious search burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02. Similarly, a serious examination burden, for example, may be prima facie shown by appropriate explanation of non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) relevant to one invention that are not relevant to the other invention. A prima facie showing of serious search and/or examination burden may be rebutted by appropriate showings or evidence by the applicant. Insofar as the criteria for restriction practice relating to Markush claims is concerned, the criteria is set forth in MPEP § 803.02. Insofar as the criteria for restriction or election practice relating to claims to genus-species, see MPEP § 806.04 – § 806.04(i) and § 808.01(a).