Is restriction permitted in reexamination proceedings?
No, restriction is not permitted in reexamination proceedings. The MPEP clearly states: “With regard to reexamination proceedings, restriction is not permitted.” This means that during a reexamination of a patent, the examiner cannot require the patent owner to divide the claims into separate applications or to elect a specific group of claims for examination. All…
Read MoreCan original patent claims be restricted in a reissue application?
No, original patent claims cannot be restricted in a reissue application. The MPEP 1450 clearly states: “As stated in 37 CFR 1.176(b), the examiner is not permitted to require restriction among original claims of the patent (i.e., among claims that were in the patent before filing the reissue application).” This rule applies even if the…
Read MoreWhen should restriction not be required despite distinct inventions?
Restriction should not be required when there is an express admission that the claimed inventions would have been obvious over each other within the meaning of 35 U.S.C. 103. The MPEP 803 cites a specific case: “If there is an express admission that the claimed inventions would have been obvious over each other within the…
Read MoreWhat does “restriction becomes proper at a later stage” mean in patent prosecution?
In the context of patent prosecution, the phrase “restriction becomes proper at a later stage” refers to a situation where circumstances change during the examination process, making a previously improper restriction requirement now appropriate. This concept is addressed in MPEP 811.03, which states: “Where a requirement to restrict is made and thereafter withdrawn as improper,…
Read MoreHow does restriction affect double patenting in patent applications?
The relationship between restriction and double patenting is clearly defined in the Manual of Patent Examining Procedure (MPEP). According to MPEP § 806: “Where restriction is required by the Office double patenting cannot be held…” This statement indicates that when the USPTO requires a restriction in a patent application, it effectively precludes a double patenting…
Read MoreWhat options does an applicant have when receiving Form PCT/IPEA/405?
When an applicant receives Form PCT/IPEA/405, they have two main options: Restrict the claims to comply with the unity of invention requirement Pay additional examination fees to have all inventions examined According to MPEP 1875.01: “The ‘Invitation to restrict or pay additional fees,’ Form PCT/IPEA/405, is used to invite the applicant, at his/her option, to…
Read MoreWhat are the requirements for restricting between two or more related product or process inventions?
To support a requirement for restriction between two or more related product inventions, or between two or more related process inventions, two key elements are necessary: Two-way distinctness Reasons for insisting on restriction MPEP § 806.05(j) states: “To support a requirement for restriction between two or more related product inventions, or between two or more…
Read MoreWhat are the requirements for translations submitted by patent applicants?
When patent applicants submit translations of non-English documents, there are specific requirements and considerations. According to MPEP 901.05(d): “If an English-language translation of a non-English language document is submitted by applicant, the examiner may rely on the translation submitted by applicant when examining the application unless there is reasonable doubt as to the accuracy of…
Read MoreCan an applicant request examination of additional species after an initial election?
Yes, an applicant can request examination of additional species after an initial election under certain circumstances. The MPEP 809.02 provides guidance on this topic: “If applicant presents species claims to more than one patentably distinct species of the invention after an Office action on only generic claims, with no restriction requirement, the Office may require…
Read MoreHow does an examiner request withdrawal of an application from issue for new rejections?
When an examiner discovers new grounds for rejection after an application has been allowed, they must follow a specific procedure to request withdrawal from issue. According to MPEP 1308.01: “When a new rejection is discovered, which obviously is applicable to one or more of the allowed claims in an application in issue, a memorandum is…
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