37 CFR § 1.142 — Requirement for restriction. (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 37 CFR § 1.142, including 26 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.

Summary

The Requirement for restriction. addresses timing requirements for an information disclosure statement (IDS) to be filed after the application filing date but before receiving a first Office action on the merits.

What this section covers

Defines that this section addresses timing requirements for filing an IDS in relation to the application filing date and first Office action on the merits.
Identifies that an IDS can be filed later than three months after the application filing date but before receiving a first Office action on the merits.

Key obligations

An IDS must be filed within three months after the application filing date to meet this requirement.
An IDS filed later than three months but before the mailing date of a first Office action on the merits is also considered.
Filing an IDS after receiving a first Office action on the merits is not permitted.

Practice notes

Advise practitioners to ensure the IDS is filed before receiving a first Office action on the merits to avoid missing this requirement.
Warn practitioners against filing an IDS after receiving a first Office action on the merits, as it will not be considered.

Late Information Disclosure Statement Considered Before First Merits ActionMPEP 609.04(b)
First Action on Merits Requires Information Disclosure StatementMPEP 609.04(b)
Information Disclosure Statement Before First Action on MeritsMPEP 609.04(b)Required
Claims After Restriction/Election Must Follow MPEPMPEP 707.07(i)Recommended
Requirement for Election of InventionMPEP 802Permitted
Requirement for Unity of Invention in PCTMPEP 802Recommended
Restriction Requirement for Species Election and Restriction PracticeMPEP 803.03
Unpaid Fee Inventions Must Be WithdrawnMPEP 803.03Required
Withdrawn Invention Can File Divisional Under 121MPEP 803.03Permitted
Restriction Requirement Should Be Made EarlyMPEP 811Recommended
Requirement for Second Restriction When ProperMPEP 811.02Permitted

Process Claims Must Depend on Allowable Product ClaimMPEP 821.04(b)Required
Information Disclosure Statement Before First Action on MeritsMPEP 609.04(b)Required
Unpaid Fee Inventions Must Be WithdrawnMPEP 803.03Required
Applicant Must Make ElectionMPEP 818.01Required

Election of Product or Process Claims RequiredMPEP 821.04(b)Permitted
Rejoinder of Previously Nonelected Process InventionMPEP 821.04(b)
Applicants Cannot Change Election After Office ActionMPEP 819Permitted
Applicant Cannot Change Oral Election After Office ActionMPEP 819Prohibited
RCE Not Allowed for Distinct ClaimsMPEP 819Prohibited
Claims Must Be Treated According to MPEP § 821.03 When Not Matching Elected InventionMPEP 819Recommended
Claims Not Directed to Elected Invention WithdrawnMPEP 821
Examiner Must Explain Why Withdrawn Claims Are Not Directed to Elected InventionMPEP 821Recommended
Requirement for Traversing Non-Elected Claims WithdrawalMPEP 821Permitted
Timely Traversal for Review of Restriction RequirementMPEP 821Permitted
Requirement for Proper Restriction ElectionMPEP 821
C* Classification Challenge Required After Claim WithdrawalMPEP 821Recommended
Product Allowance Triggers Process Claim RejoiningMPEP 821.04(b)

MPEP Section	Rules
MPEP § 609.04(b)	Late Information Disclosure Statement Considered Before First Merits ActionMPEP 609.04(b) First Action on Merits Requires Information Disclosure StatementMPEP 609.04(b) Information Disclosure Statement Before First Action on MeritsMPEP 609.04(b)Required
MPEP § 707.07(i)	Claims After Restriction/Election Must Follow MPEPMPEP 707.07(i)Recommended
MPEP § 802	Requirement for Election of InventionMPEP 802Permitted Requirement for Unity of Invention in PCTMPEP 802Recommended
MPEP § 803.03	Restriction Requirement for Species Election and Restriction PracticeMPEP 803.03 Unpaid Fee Inventions Must Be WithdrawnMPEP 803.03Required Withdrawn Invention Can File Divisional Under 121MPEP 803.03Permitted
MPEP § 811	Restriction Requirement Should Be Made EarlyMPEP 811Recommended
MPEP § 811.02	Requirement for Second Restriction When ProperMPEP 811.02Permitted
MPEP § 818.01	Applicant Must Make ElectionMPEP 818.01Required
MPEP § 819	Applicants Cannot Change Election After Office ActionMPEP 819Permitted Applicant Cannot Change Oral Election After Office ActionMPEP 819Prohibited RCE Not Allowed for Distinct ClaimsMPEP 819Prohibited Claims Must Be Treated According to MPEP § 821.03 When Not Matching Elected InventionMPEP 819Recommended
MPEP § 821	Claims Not Directed to Elected Invention WithdrawnMPEP 821 Examiner Must Explain Why Withdrawn Claims Are Not Directed to Elected InventionMPEP 821Recommended Requirement for Traversing Non-Elected Claims WithdrawalMPEP 821Permitted Timely Traversal for Review of Restriction RequirementMPEP 821Permitted Requirement for Proper Restriction ElectionMPEP 821 C* Classification Challenge Required After Claim WithdrawalMPEP 821Recommended
MPEP § 821.04(b)	Election of Product or Process Claims RequiredMPEP 821.04(b)Permitted Rejoinder of Previously Nonelected Process InventionMPEP 821.04(b) Process Claims Must Depend on Allowable Product ClaimMPEP 821.04(b)Required Product Allowance Triggers Process Claim RejoiningMPEP 821.04(b)

Related Provisions

Based on MPEP Last Modified: 10/30/2024 08:50:22

37 CFR § 1.142 — Requirement for restriction. (MPEP Coverage Index) – BlueIron IP

37 CFR § 1.142 Requirement for restriction.

Summary

Official MPEP § 1.142 — Requirement for restriction.

1.142 Requirement for restriction.

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions