MPEP § 821.02 — After Election Without Traverse (Annotated Rules)
§821.02 After Election Without Traverse
This page consolidates and annotates all enforceable requirements under MPEP § 821.02, 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.
After Election Without Traverse
This section addresses After Election Without Traverse. Contains: 3 guidance statements and 2 permissions.
Key Rules
Restriction Requirement (MPEP 802-803)
Where the initial requirement is not traversed (either expressly or by virtue of an incomplete reply), the examiner should take appropriate action on the elected claims including determining whether the restriction requirement should be withdrawn in whole or in part. See MPEP § 821.04. Form paragraphs 8.25.01 or 8.25.02 should be used by the examiner to acknowledge the election without traverse.
Where the initial requirement is not traversed (either expressly or by virtue of an incomplete reply), the examiner should take appropriate action on the elected claims including determining whether the restriction requirement should be withdrawn in whole or in part. See MPEP § 821.04. Form paragraphs 8.25.01 or 8.25.02 should be used by the examiner to acknowledge the election without traverse.
Patent Eligibility
Note that even if an election was made without traverse, claims directed to nonelected species and nonelected inventions that are eligible for rejoinder should be rejoined; if not rejoined, such claims that are eligible for rejoinder may only be canceled by examiner’s amendment when the cancelation is expressly authorized by applicant. If claims are directed to nonelected species and/or nonelected inventions that are not eligible for rejoinder, see form paragraph 8.07 and its associated guidance above for when claims may be canceled by an examiner’s amendment, and the application passed to issue.
Note that even if an election was made without traverse, claims directed to nonelected species and nonelected inventions that are eligible for rejoinder should be rejoined; if not rejoined, such claims that are eligible for rejoinder may only be canceled by examiner’s amendment when the cancelation is expressly authorized by applicant. If claims are directed to nonelected species and/or nonelected inventions that are not eligible for rejoinder, see form paragraph 8.07 and its associated guidance above for when claims may be canceled by an examiner’s amendment, and the application passed to issue.
Restriction and Election Practice (MPEP Chapter 800)
This form paragraph will show that applicant has not retained the right to petition from the requirement under 37 CFR 1.144.
Conditions for Rejoinder
When applicant has not retained the right to petition the restriction requirement and the application is otherwise ready for allowance, the claims to the nonelected invention, except for claims directed to nonelected species and nonelected inventions eligible for rejoinder, may be canceled by an examiner’s amendment, and the application passed to issue.
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected [2] , there being no allowable generic or linking claim. Election was made without traverse in the reply filed on [3] .
In bracket 2, insert –invention–, or –species–.
This application is in condition for allowance except for the presence of claim [1] directed to [2] nonelected without traverse. Accordingly, claim [3] been canceled.
In bracket 2, insert –an invention–, –inventions–, –a species–, or –species–.
Citations
| Primary topic | Citation |
|---|---|
| Restriction and Election Practice (MPEP Chapter 800) | 37 CFR § 1.144 |
| – | 37 CFR § 821.04 |
| – | MPEP § 821.01 |
| Restriction Requirement (MPEP 802-803) | MPEP § 821.04 |
| Patent Eligibility | Form Paragraph § 8.07 |
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 § 821.02 — After Election Without Traverse
Source: USPTO821.02 After Election Without Traverse [R-07.2022]
Where the initial requirement is not traversed (either expressly or by virtue of an incomplete reply), the examiner should take appropriate action on the elected claims including determining whether the restriction requirement should be withdrawn in whole or in part. See MPEP § 821.04. Form paragraphs 8.25.01 or 8.25.02 should be used by the examiner to acknowledge the election without traverse.
¶ 8.25.01 Election Without Traverse
Applicant’s election without traverse of [1] in the reply filed on [2] is acknowledged.
¶ 8.25.02 Election Without Traverse Based on Incomplete Reply
Applicant’s election of [1] in the reply filed on [2] is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims to the nonelected invention should be treated by using form paragraph 8.06.
¶ 8.06 Claims Stand Withdrawn Without Traverse
Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected [2], there being no allowable generic or linking claim. Election was made without traverse in the reply filed on [3].
Examiner Note:
In bracket 2, insert –invention–, or –species–.
This form paragraph will show that applicant has not retained the right to petition from the requirement under 37 CFR 1.144.
When applicant has not retained the right to petition the restriction requirement and the application is otherwise ready for allowance, the claims to the nonelected invention, except for claims directed to nonelected species and nonelected inventions eligible for rejoinder, may be canceled by an examiner’s amendment, and the application passed to issue.
The examiner should use form paragraph 8.07 in this situation.
See also MPEP § 821.01 and § 821.04et seq.
¶ 8.07 Ready for Allowance, Non-elected Claims Withdrawn Without Traverse
This application is in condition for allowance except for the presence of claim [1] directed to [2] nonelected without traverse. Accordingly, claim [3] been canceled.
Examiner Note:
In bracket 2, insert –an invention–, –inventions–, –a species–, or –species–.
Note that even if an election was made without traverse, claims directed to nonelected species and nonelected inventions that are eligible for rejoinder should be rejoined; if not rejoined, such claims that are eligible for rejoinder may only be canceled by examiner’s amendment when the cancelation is expressly authorized by applicant. If claims are directed to nonelected species and/or nonelected inventions that are not eligible for rejoinder, see form paragraph 8.07 and its associated guidance above for when claims may be canceled by an examiner’s amendment, and the application passed to issue.