How does the USPTO handle “election by original presentation”?
The USPTO handles “election by original presentation” when an applicant adds claims to a new invention after receiving an Office action on the original claims. The examiner will treat the newly added claims as if they were part of a separate application. Specifically: The examiner will issue a restriction requirement using form paragraph 8.04. The…
Read MoreWhat options do I have if my new claims are withdrawn due to election by original presentation?
If your new claims are withdrawn due to election by original presentation, you have several options: Request reconsideration: You can argue that the new claims are not directed to a different invention and request that the examiner reconsider the withdrawal. File a divisional application: You can pursue the new claims in a separate divisional application.…
Read MoreWhat is an election by original presentation in patent applications?
Election by original presentation occurs when, after receiving an action on the merits for one invention, an applicant subsequently presents additional inventions for examination. In such cases, the examiner may consider the initially examined invention as the one elected by original presentation. The MPEP § 818 explains: “If, after receiving an action on the merits…
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