MPEP § 806.01 — Compare Claimed Subject Matter (Annotated Rules)

This page consolidates and annotates all enforceable requirements under MPEP § 806.01, 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.

Compare Claimed Subject Matter

This section addresses Compare Claimed Subject Matter. Primary authority: 37 CFR 808.01(a).

Key Rules

Exceptions & Carve-Outs (1)

MPEP GuidanceRequiredAlways
[mpep-806-01-dd79d24033a4575e99dbece2]
Claims Must Be Compared for Distinctness
Note:
When evaluating double patenting and restriction, claims must be compared to determine if they are distinct. A provisional election of a species may be required if generic claims encompass multiple species making the search unduly extensive.

In passing upon questions of double patenting and restriction, it is the claimed subject matter that is considered and such claimed subject matter must be compared in order to determine the question of distinctness or independence. However, a provisional election of a single species may be required where only generic claims are presented and the generic claims recite or encompass such a multiplicity of species that an unduly extensive and burdensome search is necessary. See MPEP § 803.02 and § 808.01(a).

Citations

Primary topicCitation
37 CFR § 808.01(a)
MPEP § 803.02

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.

BlueIron Last Updated: 2025-12-31