MPEP § 819 — Office Generally Does Not Permit Shift (Annotated Rules)
§819 Office Generally Does Not Permit Shift
This page consolidates and annotates all enforceable requirements under MPEP § 819, 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.
Office Generally Does Not Permit Shift
This section addresses Office Generally Does Not Permit Shift. Primary authority: 37 CFR 1.142(b). Contains: 2 prohibitions, 1 guidance statement, and 1 permission.
Key Rules
RCE Filing Requirements
The general policy of the Office is that applicants are not permitted to shift to claim another invention after an election is made and an Office action on the merits is made on the elected invention. Specifically, the applicant may not disaffirm or change their election, as a matter of right, after making an oral election and receiving an Office action based upon that oral election in a pending application. See 37 CFR 1.142(b). In addition, the applicant cannot, as a matter of right, file a request for continued examination (RCE) on claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right). See MPEP § 706.07(h), subsection VI.(B). When claims are presented which the examiner finds are drawn to an invention other than the one elected, he or she should treat the claims as outlined in MPEP § 821.03.
The general policy of the Office is that applicants are not permitted to shift to claim another invention after an election is made and an Office action on the merits is made on the elected invention. Specifically, the applicant may not disaffirm or change their election, as a matter of right, after making an oral election and receiving an Office action based upon that oral election in a pending application. See 37 CFR 1.142(b). In addition, the applicant cannot, as a matter of right, file a request for continued examination (RCE) on claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right). See MPEP § 706.07(h), subsection VI.(B). When claims are presented which the examiner finds are drawn to an invention other than the one elected, he or she should treat the claims as outlined in MPEP § 821.03.
CIP Filing Requirements
A restriction requirement (and election thereto) made in a parent application does not carry over to a continuation, CIP, or divisional application. See Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004) (An original restriction requirement in an earlier filed application does not carry over to claims of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent application.). In design applications, but not international design applications, where a continued prosecution application (CPA) filed under 37 CFR 1.53(d) is a continuation of its parent application and not a divisional, an express election made in the prior (parent) application in reply to a restriction requirement does carry over to the CPA unless otherwise indicated by applicant.
A restriction requirement (and election thereto) made in a parent application does not carry over to a continuation, CIP, or divisional application. See Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004) (An original restriction requirement in an earlier filed application does not carry over to claims of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent application.). In design applications, but not international design applications, where a continued prosecution application (CPA) filed under 37 CFR 1.53(d) is a continuation of its parent application and not a divisional, an express election made in the prior (parent) application in reply to a restriction requirement does carry over to the CPA unless otherwise indicated by applicant.
Election Requirement (MPEP 808, 818)
The general policy of the Office is that applicants are not permitted to shift to claim another invention after an election is made and an Office action on the merits is made on the elected invention. Specifically, the applicant may not disaffirm or change their election, as a matter of right, after making an oral election and receiving an Office action based upon that oral election in a pending application. See 37 CFR 1.142(b). In addition, the applicant cannot, as a matter of right, file a request for continued examination (RCE) on claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right). See MPEP § 706.07(h), subsection VI.(B). When claims are presented which the examiner finds are drawn to an invention other than the one elected, he or she should treat the claims as outlined in MPEP § 821.03.
Provisional Election (MPEP 812.02)
The general policy of the Office is that applicants are not permitted to shift to claim another invention after an election is made and an Office action on the merits is made on the elected invention. Specifically, the applicant may not disaffirm or change their election, as a matter of right, after making an oral election and receiving an Office action based upon that oral election in a pending application. See 37 CFR 1.142(b). In addition, the applicant cannot, as a matter of right, file a request for continued examination (RCE) on claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right). See MPEP § 706.07(h), subsection VI.(B). When claims are presented which the examiner finds are drawn to an invention other than the one elected, he or she should treat the claims as outlined in MPEP § 821.03.
CIP New Matter
A restriction requirement (and election thereto) made in a parent application does not carry over to a continuation, CIP, or divisional application. See Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004) (An original restriction requirement in an earlier filed application does not carry over to claims of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent application.). In design applications, but not international design applications, where a continued prosecution application (CPA) filed under 37 CFR 1.53(d) is a continuation of its parent application and not a divisional, an express election made in the prior (parent) application in reply to a restriction requirement does carry over to the CPA unless otherwise indicated by applicant.
Citations
| Primary topic | Citation |
|---|---|
| Election Requirement (MPEP 808, 818) Provisional Election (MPEP 812.02) RCE Filing Requirements | 37 CFR § 1.142(b) |
| CIP Filing Requirements CIP New Matter | 37 CFR § 1.53(d) |
| Election Requirement (MPEP 808, 818) Provisional Election (MPEP 812.02) RCE Filing Requirements | MPEP § 706.07(h) |
| Election Requirement (MPEP 808, 818) Provisional Election (MPEP 812.02) RCE Filing Requirements | MPEP § 821.03 |
| CIP Filing Requirements CIP New Matter | See Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004) |
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 § 819 — Office Generally Does Not Permit Shift
Source: USPTO819 Office Generally Does Not Permit Shift [R-07.2022]
The general policy of the Office is that applicants are not permitted to shift to claim another invention after an election is made and an Office action on the merits is made on the elected invention. Specifically, the applicant may not disaffirm or change their election, as a matter of right, after making an oral election and receiving an Office action based upon that oral election in a pending application. See 37 CFR 1.142(b). In addition, the applicant cannot, as a matter of right, file a request for continued examination (RCE) on claims that are independent and distinct from the claims previously claimed and examined (i.e., applicant cannot switch inventions by way of an RCE as a matter of right). See MPEP § 706.07(h), subsection VI.(B). When claims are presented which the examiner finds are drawn to an invention other than the one elected, he or she should treat the claims as outlined in MPEP § 821.03.
A restriction requirement (and election thereto) made in a parent application does not carry over to a continuation, CIP, or divisional application. See Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004) (An original restriction requirement in an earlier filed application does not carry over to claims of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent application.). In design applications, but not international design applications, where a continued prosecution application (CPA) filed under 37 CFR 1.53(d) is a continuation of its parent application and not a divisional, an express election made in the prior (parent) application in reply to a restriction requirement does carry over to the CPA unless otherwise indicated by applicant.
While applicant, as a matter of right, may not shift from claiming one invention to claiming another, the examiner is not precluded from permitting a shift. The examiner is most likely to do so where the shift results in no additional burden, and particularly where the shift reduces work by simplifying the issues.