MPEP § 806.05(i) — Product, Process of Making, and Process of Using (Annotated Rules)
This page consolidates and annotates all enforceable requirements under MPEP § 806.05(i), 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.
Product, Process of Making, and Process of Using
This section addresses Product, Process of Making, and Process of Using. Primary authority: 37 CFR 1.141.
Key Rules
Mandatory Requirements (1)
Form paragraph 8.20 (See MPEP § 806.05(h)) may be used in product, process of making and process of using situations where the product cannot be restricted from the process of making the product.
Conditional Requirements (2)
Where an application contains claims to a product, claims to a process specially adapted for (i.e., not patentably distinct from, as defined in MPEP § 806.05(f)) making the product, and claims to a process of using the product, applicant may be required to elect either (A) the product and process of making it; or (B) the process of using. If the examiner cannot make a showing of distinctness between the process of using and the product (MPEP § 806.05(h)), restriction cannot be required.
Where an application contains claims to a product, claims to a process specially adapted for (i.e., not patentably distinct from, as defined in MPEP § 806.05(f)) making the product, and claims to a process of using the product, applicant may be required to elect either (A) the product and process of making it; or (B) the process of using. If the examiner cannot make a showing of distinctness between the process of using and the product (MPEP § 806.05(h)), restriction cannot be required.
Definitions & Scope (1)
See MPEP § 821.04(b) for rejoinder practice pertaining to product and process inventions.
Citations
| Primary topic | Citation |
|---|---|
| – | MPEP § 806.05(f) |
| – | MPEP § 806.05(h) |
| – | MPEP § 821.04(b) |
| – | Form Paragraph § 8.20 |
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 § 806.05(i) — Product, Process of Making, and Process of Using
Source: USPTO806.05(i) Product, Process of Making, and Process of Using [R-08.2012]
37 CFR 1.141 Different inventions in one national application.
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- (b) Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.
Where an application contains claims to a product, claims to a process specially adapted for (i.e., not patentably distinct from, as defined in MPEP § 806.05(f)) making the product, and claims to a process of using the product, applicant may be required to elect either (A) the product and process of making it; or (B) the process of using. If the examiner cannot make a showing of distinctness between the process of using and the product (MPEP § 806.05(h)), restriction cannot be required.
Form paragraph 8.20 (See MPEP § 806.05(h)) may be used in product, process of making and process of using situations where the product cannot be restricted from the process of making the product.
See MPEP § 821.04(b) for rejoinder practice pertaining to product and process inventions.