MPEP § 806.04(h) — Species Must Be Patentably Distinct From Each Other (Annotated Rules)
§806.04(h) Species Must Be Patentably Distinct From Each Other
This page consolidates and annotates all enforceable requirements under MPEP § 806.04(h), 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.
Species Must Be Patentably Distinct From Each Other
This section addresses Species Must Be Patentably Distinct From Each Other. Primary authority: 35 U.S.C. 121, 37 CFR 1.141, and 37 CFR 804.02. Contains: 1 prohibition and 1 permission.
Key Rules
Distinct Inventions (MPEP 802.01)
Where generic claims are allowable, applicant may claim in the same application additional species as provided by 37 CFR 1.141. See MPEP § 806.04. Where an applicant files a divisional application claiming a species previously claimed but nonelected in the parent case pursuant to and consonant with a requirement to restrict, a double patenting rejection of the species claim(s) would be prohibited under 35 U.S.C. 121. See MPEP § 821.04(a) for rejoinder of species claims when a generic claim is allowable.
Safe Harbor for Divisional
Where generic claims are allowable, applicant may claim in the same application additional species as provided by 37 CFR 1.141. See MPEP § 806.04. Where an applicant files a divisional application claiming a species previously claimed but nonelected in the parent case pursuant to and consonant with a requirement to restrict, a double patenting rejection of the species claim(s) would be prohibited under 35 U.S.C. 121. See MPEP § 821.04(a) for rejoinder of species claims when a generic claim is allowable.
Citations
| Primary topic | Citation |
|---|---|
| Distinct Inventions (MPEP 802.01) Safe Harbor for Divisional | 35 U.S.C. § 121 |
| Distinct Inventions (MPEP 802.01) Safe Harbor for Divisional | 37 CFR § 1.141 |
| – | 37 CFR § 804.02 |
| – | MPEP § 804.01 |
| Distinct Inventions (MPEP 802.01) Safe Harbor for Divisional | MPEP § 806.04 |
| Distinct Inventions (MPEP 802.01) Safe Harbor for Divisional | MPEP § 821.04(a) |
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 § 806.04(h) — Species Must Be Patentably Distinct From Each Other
Source: USPTO806.04(h) Species Must Be Patentably Distinct From Each Other [R-07.2022]
In making a requirement for restriction in an application claiming plural species, the examiner should group together species considered clearly unpatentable over each other.
Where generic claims are allowable, applicant may claim in the same application additional species as provided by 37 CFR 1.141. See MPEP § 806.04. Where an applicant files a divisional application claiming a species previously claimed but nonelected in the parent case pursuant to and consonant with a requirement to restrict, a double patenting rejection of the species claim(s) would be prohibited under 35 U.S.C. 121. See MPEP § 821.04(a) for rejoinder of species claims when a generic claim is allowable.
Where, however, claims to a different species, or a species disclosed but not claimed in a parent case as filed and first acted upon by the examiner, are voluntarily presented in a different application having at least one common (joint) inventor or a common assignee (i.e., no requirement for election pertaining to said species was made by the Office) there should be close investigation to determine whether a double patenting rejection would be appropriate. See MPEP § 804.01 and § 804.02.