MPEP § 2304.01(d) — Sorting Claims (Annotated Rules)
§2304.01(d) Sorting Claims
This page consolidates and annotates all enforceable requirements under MPEP § 2304.01(d), 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.
Sorting Claims
This section addresses Sorting Claims. Primary authority: 35 U.S.C. 132(a), 35 U.S.C. 121, and 35 U.S.C. 112(a). Contains: 1 prohibition, 3 guidance statements, 3 permissions, and 1 other statement.
Key Rules
PTA C Delay – Interference/Secrecy
An applicant may be entitled to a day-for-day patent term adjustment for any time spent in an interference. If an applicant has several related applications with interfering claims intermixed with claims that do not interfere, the examiner should consider whether the interfering claims should be consolidated in a single application or whether an application should be restricted to claims that do not interfere. This way examination can proceed for any claims that do not interfere without the delay that will result from the interference.
An applicant may be entitled to a day-for-day patent term adjustment for any time spent in an interference. If an applicant has several related applications with interfering claims intermixed with claims that do not interfere, the examiner should consider whether the interfering claims should be consolidated in a single application or whether an application should be restricted to claims that do not interfere. This way examination can proceed for any claims that do not interfere without the delay that will result from the interference.
An applicant may be entitled to a day-for-day patent term adjustment for any time spent in an interference. If an applicant has several related applications with interfering claims intermixed with claims that do not interfere, the examiner should consider whether the interfering claims should be consolidated in a single application or whether an application should be restricted to claims that do not interfere. This way examination can proceed for any claims that do not interfere without the delay that will result from the interference.
Domestic Benefit Claims (35 U.S.C. 120/121)
Interfering claims of applications with either the same assignee or the same inventive entity are “patentably indistinct claims” within the meaning of 37 CFR 1.78(f). The examiner may require consolidation of such claims into a single application that provides support for the patentably indistinct claims. See 35 U.S.C. 132(a).
Interfering claims of applications with either the same assignee or the same inventive entity are “patentably indistinct claims” within the meaning of 37 CFR 1.78(f). The examiner may require consolidation of such claims into a single application that provides support for the patentably indistinct claims. See 35 U.S.C. 132(a).
35 U.S.C. 112 – Disclosure Requirements
Sorting of claims may not be appropriate in all cases. For instance, a claim should not be consolidated into an application that does not provide support under 35 U.S.C. 112(a) for the claim.
Sorting of claims may not be appropriate in all cases. For instance, a claim should not be consolidated into an application that does not provide support under 35 U.S.C. 112(a) for the claim.
Safe Harbor for Divisional
Similarly, the examiner should require an applicant to restrict an application to the interfering claims in accordance with pre-AIA 35 U.S.C. 121, in which case the applicant may file a divisional application for the claims that do not interfere.
Citations
| Primary topic | Citation |
|---|---|
| 35 U.S.C. 112 – Disclosure Requirements | 35 U.S.C. § 112(a) |
| Safe Harbor for Divisional | 35 U.S.C. § 121 |
| Domestic Benefit Claims (35 U.S.C. 120/121) | 35 U.S.C. § 132(a) |
| Domestic Benefit Claims (35 U.S.C. 120/121) | 37 CFR § 1.78(f) |
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 § 2304.01(d) — Sorting Claims
Source: USPTO2304.01(d) Sorting Claims [R-08.2017]
An applicant may be entitled to a day-for-day patent term adjustment for any time spent in an interference. If an applicant has several related applications with interfering claims intermixed with claims that do not interfere, the examiner should consider whether the interfering claims should be consolidated in a single application or whether an application should be restricted to claims that do not interfere. This way examination can proceed for any claims that do not interfere without the delay that will result from the interference.
Interfering claims of applications with either the same assignee or the same inventive entity are “patentably indistinct claims” within the meaning of 37 CFR 1.78(f). The examiner may require consolidation of such claims into a single application that provides support for the patentably indistinct claims. See 35 U.S.C. 132(a).
Similarly, the examiner should require an applicant to restrict an application to the interfering claims in accordance with pre-AIA 35 U.S.C. 121, in which case the applicant may file a divisional application for the claims that do not interfere.
Sorting of claims may not be appropriate in all cases. For instance, a claim should not be consolidated into an application that does not provide support under 35 U.S.C. 112(a) for the claim.