MPEP § 821 — Treatment of Claims Held To Be Drawn to Nonelected Inventions (Annotated Rules)
§821 Treatment of Claims Held To Be Drawn to Nonelected Inventions
This page consolidates and annotates all enforceable requirements under MPEP § 821, 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.
Treatment of Claims Held To Be Drawn to Nonelected Inventions
This section addresses Treatment of Claims Held To Be Drawn to Nonelected Inventions. Primary authority: 37 CFR 1.142(b), 37 CFR 1.143, and 37 CFR 1.144. Contains: 2 guidance statements, 2 permissions, and 2 other statements.
Key Rules
Restriction and Election
All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971). When an election results in the withdrawal of claims such that the assigned examiner believes the C* classification picture is incorrect, the examiner should submit a C* classification challenge prior to an action on the merits of the elected claims to ensure the C* classification picture on the application appropriately reflects the elected invention.
All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971). When an election results in the withdrawal of claims such that the assigned examiner believes the C* classification picture is incorrect, the examiner should submit a C* classification challenge prior to an action on the merits of the elected claims to ensure the C* classification picture on the application appropriately reflects the elected invention.
Petition for Improper Restriction
All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971). When an election results in the withdrawal of claims such that the assigned examiner believes the C* classification picture is incorrect, the examiner should submit a C* classification challenge prior to an action on the merits of the elected claims to ensure the C* classification picture on the application appropriately reflects the elected invention.
All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971). When an election results in the withdrawal of claims such that the assigned examiner believes the C* classification picture is incorrect, the examiner should submit a C* classification challenge prior to an action on the merits of the elected claims to ensure the C* classification picture on the application appropriately reflects the elected invention.
Withdrawn Claims
All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971). When an election results in the withdrawal of claims such that the assigned examiner believes the C* classification picture is incorrect, the examiner should submit a C* classification challenge prior to an action on the merits of the elected claims to ensure the C* classification picture on the application appropriately reflects the elected invention.
Election of Species
All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971). When an election results in the withdrawal of claims such that the assigned examiner believes the C* classification picture is incorrect, the examiner should submit a C* classification challenge prior to an action on the merits of the elected claims to ensure the C* classification picture on the application appropriately reflects the elected invention.
Patent Eligibility
Claims found to be drawn to nonelected inventions, including claims drawn to nonelected species or inventions that may be eligible for rejoinder, are treated as indicated in MPEP § 821.01 through § 821.04.
Citations
| Primary topic | Citation |
|---|---|
| Election of Species Petition for Improper Restriction Restriction and Election Withdrawn Claims | 37 CFR § 1.142(b) |
| Election of Species Petition for Improper Restriction Restriction and Election Withdrawn Claims | 37 CFR § 1.143 |
| Election of Species Petition for Improper Restriction Restriction and Election Withdrawn Claims | 37 CFR § 1.144 |
| Election of Species Patent Eligibility Petition for Improper Restriction Restriction and Election Withdrawn Claims | 37 CFR § 821.04 |
| Election of Species Patent Eligibility Petition for Improper Restriction Restriction and Election Withdrawn Claims | MPEP § 821.01 |
| Election of Species Petition for Improper Restriction Restriction and Election Withdrawn Claims | In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971) |
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 § 821 — Treatment of Claims Held To Be Drawn to Nonelected Inventions
Source: USPTO821 Treatment of Claims Held To Be Drawn to Nonelected Inventions [R-07.2022]
Claims found to be drawn to nonelected inventions, including claims drawn to nonelected species or inventions that may be eligible for rejoinder, are treated as indicated in MPEP § 821.01 through § 821.04.
All claims that the examiner finds are not directed to the elected invention are withdrawn from further consideration by the examiner in accordance with 37 CFR 1.142(b). See MPEP § 821.01 through § 821.04. The examiner should clearly set forth in the Office action the reasons why the claims withdrawn from consideration are not readable on the elected invention. Applicant may traverse the requirement pursuant to 37 CFR 1.143. If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement if the applicant made a timely traversal. See In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971). When an election results in the withdrawal of claims such that the assigned examiner believes the C* classification picture is incorrect, the examiner should submit a C* classification challenge prior to an action on the merits of the elected claims to ensure the C* classification picture on the application appropriately reflects the elected invention.