MPEP § 817 — Outline of Letter for Restriction Requirement (Annotated Rules)
§817 Outline of Letter for Restriction Requirement
This page consolidates and annotates all enforceable requirements under MPEP § 817, 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.
Outline of Letter for Restriction Requirement
This section addresses Outline of Letter for Restriction Requirement. Contains: 2 guidance statements and 3 other statements.
Key Rules
AIA vs Pre-AIA Practice
5. If the commonly assigned application or patent is prior art under 35 U.S.C. 102(a)(2), a rejection may also be made using form paragraph 7.15.01.aia or 7.15.02.aia.
2. A rejection under 35 U.S.C. 102(a)(2) / 103 using form paragraph 7.21.aia, 7.21.01.aia or 7.21.02.aia also should be made, as appropriate.
3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.aia.
3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.aia.
6. Form paragraph 8.28.01.aia MUST follow this paragraph.
Restriction Requirement (MPEP 802-803)
Form paragraphs 8.08 – 8.11 should be used to group inventions.
The following outline should be used to set forth a requirement to restrict.
- (A) Statement of the requirement to restrict and that it is being made under 35 U.S.C. 121.
- (1) Identify each group by Roman numeral.
- (2) List claims in each group. Check accuracy of numbering of the claims; look for same claims in two groups; and look for omitted claims.
- (3) Give short description of total extent of the subject matter claimed in each group, pointing out critical claims of different scope and identifying whether the claims are directed to a combination, subcombination, process, apparatus, or product.
- (4) Classify each group.
The following outline should be used to set forth a requirement to restrict.
(A) Statement of the requirement to restrict and that it is being made under 35 U.S.C. 121.
…
(3) Give short description of total extent of the subject matter claimed in each group, pointing out critical claims of different scope and identifying whether the claims are directed to a combination, subcombination, process, apparatus, or product.
35 U.S.C. 112(a) – Written Description & Enablement
2. In bracket 1 insert the applicable reason(s) why there is a serious search and/or examination burden.
- -For a serious search burden list one or more of the following:
- –the inventions have acquired a separate status in the art in view of their different classification;
- –the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
- –the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
- -For a serious examination burden explain the reason, such as non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) are relevant to one invention that are not relevant to the other invention(s).
2. In bracket 1 insert the applicable reason(s) why there is a serious search and/or examination burden. -For a serious examination burden explain the reason, such as non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) are relevant to one invention that are not relevant to the other invention(s).
Effective Filing Date Under 102 (MPEP 2152.01)
1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but it has not been established that they were commonly owned or deemed to have been commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention. See 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c).
Form Paragraph Usage
1. Form paragraph 7.03.aia must be included in any Office action that contains this paragraph.
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.
Restriction to one of the following inventions is required under 35 U.S.C. 121 :
I. Claim [1] , drawn to [2] , classified in [3] .
II. Claim [4] , drawn to [5] , classified [6] .
In brackets 3 and 6, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter CPC main group xxx, subgroup yyy.
III. Claim [1] , drawn to [2] , classified in [3] .
In bracket 3, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter CPC main group xxx, subgroup yyy.
IV. Claim [1] , drawn to [2] , classified in [3] .
In bracket 3, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter main group xxx, subgroup yyy.
[1] . Claim [2] , drawn to [3] , classified in [4] .
The inventions are independent or distinct, each from the other because:
This form paragraph should be followed by one of form paragraphs 8.14 – 8.20.02 to show independence or distinctness.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
[1] .
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed ( 37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144 . If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Citations
| Primary topic | Citation |
|---|---|
| Effective Filing Date Under 102 (MPEP 2152.01) | 35 U.S.C. § 100(i) |
| 35 U.S.C. 112(a) – Written Description & Enablement | 35 U.S.C. § 101 |
| AIA vs Pre-AIA Practice | 35 U.S.C. § 102(a)(2) |
| Effective Filing Date Under 102 (MPEP 2152.01) | 35 U.S.C. § 102(b)(2)(C) |
| Effective Filing Date Under 102 (MPEP 2152.01) | 35 U.S.C. § 102(c) |
| 35 U.S.C. 112(a) – Written Description & Enablement | 35 U.S.C. § 112 |
| 35 U.S.C. 112(a) – Written Description & Enablement | 35 U.S.C. § 112(a) |
| Restriction Requirement (MPEP 802-803) | 35 U.S.C. § 121 |
| – | MPEP § 806.05(c) |
| – | MPEP § 809.02(a) |
| Form Paragraph Usage | Form Paragraph § 7.03 |
| AIA vs Pre-AIA Practice | Form Paragraph § 7.15.01 |
| AIA vs Pre-AIA Practice | Form Paragraph § 7.21 |
| – | Form Paragraph § 8.01 |
| – | Form Paragraph § 8.13 |
| – | Form Paragraph § 8.21 |
| – | Form Paragraph § 8.23.02 |
| AIA vs Pre-AIA Practice | Form Paragraph § 8.28 |
| AIA vs Pre-AIA Practice | Form Paragraph § 8.28.01 |
| – | Form Paragraph § 8.31 |
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 § 817 — Outline of Letter for Restriction Requirement
Source: USPTO817 Outline of Letter for Restriction Requirement [R-07.2022]
The following outline should be used to set forth a requirement to restrict.
OUTLINE OF RESTRICTION REQUIREMENT- (A) Statement of the requirement to restrict and that it is being
made under 35
U.S.C. 121.
- (1) Identify each group by Roman numeral.
- (2) List claims in each group. Check accuracy of numbering of the claims; look for same claims in two groups; and look for omitted claims.
- (3) Give short description of total extent of the subject matter claimed in each group, pointing out critical claims of different scope and identifying whether the claims are directed to a combination, subcombination, process, apparatus, or product.
- (4) Classify each group.
Form paragraphs 8.08–8.11 should be used to group inventions.
¶ 8.08 Restriction, Two Groupings
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claim [1], drawn to [2], classified in [3].
II. Claim [4], drawn to [5], classified [6].
Examiner Note:
In brackets 3 and 6, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter CPC main group xxx, subgroup yyy.
¶ 8.09 Restriction, 3rd Grouping
III. Claim [1], drawn to [2], classified in [3].
Examiner Note:
In bracket 3, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter CPC main group xxx, subgroup yyy.
¶ 8.10 Restriction, 4th Grouping
IV. Claim [1], drawn to [2], classified in [3].
Examiner Note:
In bracket 3, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter main group xxx, subgroup yyy.
¶ 8.11 Restriction, Additional Groupings
[1]. Claim [2], drawn to [3], classified in [4].
Examiner Note:
- 1. In bracket 1, insert the appropriate roman numeral, e.g., –V–, –VI–, etc.
- 2. In bracket 4, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification or. For example, if examined in CPC, enter CPC main group xxx, subgroup yyy.
If restriction is required between species, form paragraph 8.01 or 8.02 should be used to set forth the species from which applicant is required to elect and the reasons for holding the species to be independent or distinct. See MPEP § 809.02(a).
- (B) Take into account claims not grouped, indicating their
disposition.
- (1) Linking claims
- (i) Identify
- (ii) Statement of groups to which linking claims may be assigned for examination
- (2) Other ungrouped claims
- (3) Indicate disposition, e.g., improperly dependent, canceled, etc.
- (1) Linking claims
- (C) Allegation of independence or distinctness
- (1) Point out facts which show independence or distinctness
- (2) Treat the inventions as claimed, don’t merely state the
conclusion that inventions in fact are independent or distinct, e.g.,
- (i) Subcombination – Subcombination disclosed as usable
together
- Each usable alone or in other identified combination
- Demonstrate by examiner’s suggestion
- (ii) Combination – Subcombination
- Combination as claimed does not require subcombination AND subcombination usable alone or in other combination
- Demonstrate by examiner’s suggestion
- (iii) Process – Apparatus
- Process can be carried out by hand or by other apparatus
- Demonstrate by examiner’s suggestion OR Demonstrate apparatus can be used in other process (rare)
- (iv) Process of making and/or Apparatus for making –
Product made
- Claimed product can be made by other process (or apparatus)
- Demonstrate by examiner’s suggestion OR Demonstrate process of making (or apparatus for making) can produce other product (rare)
- (v) Process of making – Process of using
- Product used in claimed process
can be made by process materially different from that
claimed
- Demonstrate by examiner’s suggestion
- OR
- Product made by claimed process of
making can be used in a process materially different from that
claimed
- Demonstrate by examiner’s suggestion.
- Product used in claimed process
can be made by process materially different from that
claimed
- (i) Subcombination – Subcombination disclosed as usable
together
- (D) Provide reasons for insisting upon restriction
- (1) Separate status in the art
- (2) Different classification
- (3) Same classification but recognition of divergent subject matter
- (4) Divergent fields of search, or
- (5) Search required for one group not required for the other
- (E) Summary statement
- (1) Summarize (i) independence or distinctness and (ii) reasons for insisting upon restriction
- (2) Include paragraph advising as to reply required
- (3) Indicate effect of allowance of linking claims, if any present
- (4) Indicate effect of cancelation of evidence claims (see MPEP § 806.05(c))
- (5) Indicate effect of allowance of product claims if restriction was required between a product and a process of making and/or using the product.
Form paragraphs 8.14–8.20.02 may be used as appropriate to set forth the reasons for the holding of independence or distinctness. Form paragraph 8.13 may be used as a heading.
¶ 8.13 Distinctness (Heading)
The inventions are independent or distinct, each from the other because:
Examiner Note:
This form paragraph should be followed by one of form paragraphs 8.14–8.20.02 to show independence or distinctness.
Form paragraph 8.21 must be used at the conclusion of all restriction requirements other than those containing only election of species, with or without an action on the merits.
¶ 8.21 To Establish Burden AND Requirement for Election and Means for Traversal for all Restrictions, other than an Election of Species
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
[1].
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Examiner Note:
- 1. THIS FORM PARAGRAPH MUST BE ADDED TO ALL RESTRICTION REQUIREMENTS other than those containing only election of species, with or without an action on the merits, or an those containing only an election by original presentation requirement. This form paragraph only needs to be used once, after all restriction requirements are set out.
- 2. In bracket 1 insert the applicable reason(s) why there is
a serious search and/or examination burden.
- -For a serious search burden list one or more of the following:
- –the inventions have acquired a separate status in the art in view of their different classification;
- –the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
- –the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
- -For a serious examination burden explain the reason, such as non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) are relevant to one invention that are not relevant to the other invention(s).
¶ 8.27.aia Different Inventors, Common Assignee, Same Invention, Examined under First Inventor To File (FITF) Provisions of the AIA
Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. Under 35 U.S.C. 101, more than one patent may not be issued on the same invention.
The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). The applicant should amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention.
Examiner Note:
- 1. Form paragraph 7.03.aia must be included in any Office action that contains this paragraph.
- 2. In bracket 3, insert the U.S. patent number or the copending application number.
- 3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.aia.
- 4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32.
- 5. If the commonly assigned application or patent is prior art under 35 U.S.C. 102(a)(2), a rejection may also be made using form paragraph 7.15.01.aia or 7.15.02.aia.
¶ 8.28.aia Different Inventors, Common Assignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership Not Later Than the Effective Filing Date of the Claimed Invention, Examined Under First Inventor to File (FITF) Provisions of the AIA
Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].
Examiner Note:
- 1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but it has not been established that they were commonly owned or deemed to have been commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention. See 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c).
- 2. A rejection under 35 U.S.C. 102(a)(2)/103 using form paragraph 7.21.aia, 7.21.01.aia or 7.21.02.aia also should be made, as appropriate.
- 3. In bracket 3, insert the number of the patent or application that includes claims patentably indistinct from those in the present application.
- 4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37.
- 5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.
- 6. Form paragraph 8.28.01.aia MUST follow this paragraph.
Form paragraph 8.23.02 must be included in all restriction requirements for applications having joint inventors.
¶ 8.23.02 Joint Inventors, Correction of Inventorship
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Examiner Note:
This form paragraph must be included in all restriction requirements for applications having joint inventors.