Is an election required when traversing a restriction requirement?
Yes, an election is required even when traversing a restriction requirement. According to MPEP 818.01(b): “As noted in the second sentence of 37 CFR 1.143, a provisional election must be made even if the requirement is traversed.” This means that when responding to a restriction requirement, an applicant must: Make an election of one invention…
Read MoreWhat constitutes an election by optional cancelation of claims?
An election by optional cancelation of claims occurs when an applicant, who initially claimed two or more independent or distinct inventions, amends the claims by canceling those related to one or more inventions, leaving only claims to a single invention. As stated in MPEP 818.02(c): “Where applicant claims two or more independent or distinct inventions…
Read MoreIs an election combined with an argument that the linking claim is allowable considered a traversal?
No, an election combined with an argument that the linking claim is allowable is not considered a traversal of the restriction requirement. The MPEP Section 818.01(d) explicitly states: “An election combined with an argument that the linking claim is allowable is not a traversal of the restriction requirement. The Office considers such a response to…
Read MoreWhat happens if an applicant fails to respond to a restriction requirement?
If an applicant fails to respond to a restriction requirement, the following consequences may occur: The application may be treated as abandoned. A notice of abandonment may be sent to the applicant. The applicant may need to file a petition to revive the application. According to MPEP 818.01(a), “If no election is made, and the…
Read MoreWhat constitutes a complete reply to a restriction requirement?
A complete reply to a restriction requirement must include two key elements: An election: The applicant must choose one of the inventions or species identified in the restriction requirement. A listing of all claims readable on the elected invention: The applicant must identify which claims encompass the chosen invention or species. MPEP 818.01(a) states: “As…
Read MoreWhen should a C* classification challenge be submitted for applications with restriction requirements?
For applications with restriction requirements, a C* classification challenge should be submitted after an election has been made. MPEP 909.01(d) states: “In those applications in which a restriction is considered proper by the examiner, an election must be made prior to the submission of C* challenge(s) so that the challenge may be decided based on…
Read MoreWhen is a patent application considered “amended”?
According to MPEP 203.03, a nonprovisional patent application is considered “amended” after it has been initially acted on by the examiner, and the applicant has filed a reply to the examiner’s action. The applicant’s reply may include: An election A traverse of the examiner’s action An amendment to the application
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